DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Reply Under 37 CFR 1.111
The submission of the reply filed on 07/31/2026 to the non-final Office action of 06/08/2026 is acknowledged. The Office action on the currently pending claims 1-7 follows.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Yamane (JP 2016152349) (of record, cited in the IDS, including Original Document and Translation) or, in the alternative, under 35 U.S.C. 103 as obvious over Yamane in view of Fujimura (US 20190297720).
Regarding claim 1, Yamane discloses (Fig.9):
A conductor cooling structure comprising: an electric/electronic component (31); a conductor member (100); a cooling plate (51) formed into a band plate shape (Fig.9: 51 is in a band plate shape) made of a conductive metal (See [0034] of Translation) and being a flat plate-shaped member (Fig.9: 51 is a flat plate-shaped member) configured to cool the conductor member (100) with the electric/electronic component (31) being fixed to a front surface (upper surface of 51) of the cooling plate (51) in such a state that the conductor member (100) is placed on the front surface (upper surface of 51) of the cooling plate (51) (See Fig.9 and [0064] of Translation: 51 will dissipate heat transferred from 100), the conductor member (100) configured to be energized with a first end side of the conductor member (100) being connected to a component terminal of the electric/electronic component (31) (See Fig.9 and [0064] of Translation: 100 is coupled to 31, therefore the portion of 100 connected to a terminal, which will define the “component terminal”, of 31 will define a “first end side” of 100), and a second end side the conductor member (100), opposite to the first end side, being configured to be connected to an electrical connection target of the electric/electronic component (31) (Fig.9: the opposite end of 100, which will define a “second end side” will be connected to a load that will define an “electrical connection target” of 31), a conductor groove (53) being formed on the front surface (upper surface of 51) of the cooling plate (51), the conductor groove (53) extending along a longitudinal direction (See Figure Below: 53 extends along the longitudinal direction of 100 in order to form the groove that holds the portion of 100) of the conductor member (100) so that an entire portion (Fig.9: the entire portion of 100 that is within 53 will define an “entire portion” of 100) of the conductor member (100) placed on the front surface (upper surface of 51) of the cooling plate (51) overlaps (Fig.9: the entire portion of 100 that is within 53 defines the “entire portion” of 100 overlaps 53 in order to fit into 53) the conductor groove (53) and the conductor groove (53) accommodating at least a portion of the conductor member (100) in a thickness direction (See Figure Below) of the conductor member (100) (See Fig.9 and Figure Below: 53 extends along the shape of 100 in the longitudinal direction and accommodates at least a portion of the entire portion of 100 in the thickness direction of 100); and a heat transfer member (60 and 70) covering an area larger (Fig.9: 60 with 70 covers an area that is larger than the area occupied by 53) than at least the conductor groove (53) on the front surface (upper surface of 51) of the cooling plate (51) so as to be sandwiched between a groove inner surface (See Figure Below) of the conductor groove (53) and the conductor member (100), the heat transfer member (60 and 70) being made of an insulating material (See [0038] and [0055] of Translation) that transfers heat of the conductor member (100) to the cooling plate (51) (See Fig.9, [0038], [0055], and [0064] of Translation: 100 can transfer heat to 51 via 60 and 70).
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Alternatively, Fujimura teaches (Figs.1-2):
The conductor member (20) configured to be energized with one end side (end of 21 that has 21a) of the conductor member (20) being connected to a component terminal (12) of the electric/electronic component (11), and the other end side (Fig.1: end of 23 with 23a) of the conductor member (20) being connected to an electrical connection target ([0052]: the “external terminal” will define the “electrical connection target”) of the electric/electronic component (11).
It would have been obvious to one of ordinary skill in the pertinent arts before the effective filing date of the claimed invention to utilize the above teaching of Fujimura to modify the device of Yamane such that the conductor member is energized with one end side being connected to a component terminal of the predetermined electric/electronic component and another end side being connected to an electrical connection target of the predetermined electric/electronic component, as claimed, in order to provide a simple means of electrically powering the predetermined electric/electronic component while also still achieving an efficient means of transferring heat from the predetermined electric/electronic component to the cooling plate.
Regarding claim 2, Yamane further discloses:
Wherein a width (Fig.9: the direction of 53 going into and out of the page will define the width of 53) of the conductor groove (53), in a direction intersecting (Fig.9 and See Figure of Claim 1: the direction going into and out of the page that defines the “width” of 53 will define a direction that intersects with the longitudinal direction of 100) the longitudinal direction (See Figure of Claim 1) the conductor member (100), is wider than a width (Fig.9: the direction of 100 going into and out of the page will define the width of 100) the conductor member (100), in the direction, by an amount of a thickness of the heat transfer member (60 and 70) (Fig.9: the width of 53 is wider than that of the portion of 100 in 53 in the direction that intersects the longitudinal direction of 1000 by at least the thickness of 70 in order to fit that portion of 100 in 53 within 53).
Furthermore, modifying the width of the conductor groove and the width of the conductor member such that they have a desired width, including as claimed (i.e., have the width of the conductor groove be wider than the width of the conductor member in a direction that intersects the longitudinal direction of the conductor member by at least by an amount of a thickness of the heat transfer member), would have been an obvious modification that one of ordinary skill in the pertinent arts before the effective filing date of the claimed invention would do in order to provide an efficient design that can allow a user to easily fit the conductor member within the conductor groove (i.e., by having the conductor groove be wider than the conductor member, it becomes easy to align and fit the conductor member within the conductor groove in a seamless fashion), since a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Finally, all claimed elements were known in the prior art and one skilled in the art could have combined/modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR International Co. v. Teleflex Inc., 550 U.S._, 82 USPQ2d 1385 (2007).
Regarding claim 3, Yamane further discloses:
Wherein the heat transfer member (60 and 70) is arranged to cover an entire surface of the front surface (upper surface of 51) of the cooling plate (51) (Fig.9: 60 with 70 covers the entire upper surface of 51).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yamane (JP 2016152349) (of record, cited in the IDS, including Original Document and Translation) (alone, or as modified by Fujimura (US 20190297720)) in view of Fujimura (WO 2021153373) (referred to as Fujimura’373) and in further view of Kirker (US 20020162039).
Regarding claim 4, Yamane further discloses:
The heat transfer member (60 and 70) being sandwiched between (See Figure of Claim 1 and Fig.9) the groove inner surface (See Figure of Claim 1) and the conductor member (100).
However, Yamane (alone, or as modified by Fujimura) does not teach:
Wherein a component fixing stud is provided vertically on the front surface of the cooling plate, the electric/electronic component having the component terminal connected to the conductor member is fixed to the component fixing stud so as to press the conductor member against the conductor groove with the heat transfer member being sandwiched between the groove inner surface and the conductor member, and the heat transfer member is provided with a stud through hole through which the component fixing stud penetrates.
Fujimura’373 however teaches (Figs.1, 3, and 7):
Wherein a component fixing stud (50) is provided vertically (See Fig.3) on the front surface (upper surface of 24) of the cooling plate (24), the electric/electronic component (16) having the component terminal (30a and/or b) connected to the conductor member (32 and 34) is fixed to the component fixing stud (50) so as to press the conductor member (32 and 34) against the conductor groove (70) (Figs.1, 3, and 7: in the connected state, 102 will connect 16 to 50, and thus press, at least indirectly, press 32/34 against 70 in order to retain 16 to 26 and 24), and the heat transfer member (26) is provided with a stud through hole (72).
It would have been obvious to one of ordinary skill in the pertinent arts before the effective filing date of the claimed invention of Fujimura’373 to modify the device of Yamane (alone, or as modified by Fujimura) such that the front surface of the cooling plate has a component fixing stud that is fixed to the component terminal of the predetermined electric/electronic component that is connected to the conductor member so that the conductor member is pressed against the conductor groove with the heat transfer member being sandwiched between the groove inner surface and the conductor member, and such that the heat transfer member has a stud through hole, as claimed, in order to further improve the connection between the predetermined electric/electronic component and the cooling plate due to there being a greater number of components being utilized to hold the predetermined electric/electronic component to the cooling plate.
However, the above combination still fails to teach:
The heat transfer member is provided with a stud through hole through which the component fixing stud penetrates.
Kirker however teaches (Fig.1):
A stud through hole (148) through which the component fixing stud (114) penetrates (See Fig.1, [0019], and [0024]: 114 will penetrate through 114).
It would have been obvious to one of ordinary skill in the pertinent arts before the effective filing date of the claimed invention to utilize the above teaching of Kirker to further modify the device of modified Yamane such that the heat transfer member has a stud through hole that the component fixing stud penetrates in order to provide a simpler means of securing the predetermined electric/electronic component to the cooling plate (i.e., now that the component fixing stud penetrates through the heat transfer member, a more direct connection between the predetermined electric/electronic component and the cooling plate can be established).
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Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yamane (JP 2016152349) (of record, cited in the IDS, including Original Document and Translation) (alone, or as modified by Fujimura (US 20190297720)) in view of Fujimura (US 20220217865) (referred to as Fujimura’865).
Regarding claim 5, Yamane further discloses:
Wherein the heat transfer member (60 and 70) comes into close contact with both a groove bottom surface (See Figure of Claim 1) of the groove inner surface (See Figure of Claim 1) and a groove opposing surface (Fig.9: bottom surface of 101), facing the groove bottom surface, which is one of front and back surfaces of the conductor member (100) (Fig.9: similar to figure 2 of Applicant’s figures, the bottom surface of 100 faces the groove bottom surface and defines the groove opposing surface, and is thus one of the front and back surfaces of 100), and also with both groove side surfaces (See Figure of Claim 1) of the groove inner surface and side edge surfaces (Fig.9 and See Figure of Claim 1: the side faces of 101 of 100 that face the “Groove Side Surfaces”), extending in the thickness direction (See Figure of Claim 1), of the conductor member (100).
However, Yamane does not teach (alone, or as modified by Fujimura):
Wherein the heat transfer member is a flexible sheet material that, when the conductor member is pressed against the conductor groove, is crushed in a member thickness direction of the heat transfer member and comes into close contact with both a groove bottom surface of the groove inner surface and a groove opposing surface, facing the groove bottom surface, of front and back surfaces of the conductor member, and also with both groove side surfaces of the groove inner surface and side edge surfaces, extending in the thickness direction, of the conductor member. (emphasis added)
Fujimura’865 however teaches (Fig.1):
Wherein the heat transfer member (40) is a flexible sheet material ([0037] and [0047]-[0049]: 40 is a flexible sheet) that, when the conductor member (30) is pressed against the conductor groove (51A), is crushed in a member thickness direction ([0049]: “in the top-bottom direction, which is the thickness direction thereof”) of the heat transfer member (40).
It would have been obvious to one of ordinary skill in the pertinent arts before the effective filing date of the claimed invention to utilize the above teaching of Fujimura’865 to modify the device of Yamane (alone, or as modified by Fujimura) such that the heat transfer member is a flexible sheet material that is crushed when the conductor member is pressed against the conductor groove in a member thickness direction of the heat transfer member so that the heat transfer member comes into close contact with both the groove bottom surface of the groove inner surface and the groove opposing surface, facing the groove bottom surface, of front and back surfaces of the conductor member, and also with both groove side surfaces of the groove inner surface and side edge surfaces, extending in the thickness direction, of the conductor member, as claimed, in order to further simplify the device (i.e., as opposed to using two separate components to form the heat transfer member, a single sheet can be utilized to replace to the layers and thus reducing the total number of components and steps required to assemble the device).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yamane (JP 2016152349) (of record, cited in the IDS, including Original Document and Translation) (alone, or as modified by Fujimura (US 20190297720)) as applied to claim 1 above, and further in view of Sumida (US 20180027646).
Regarding claim 6, Yamane (alone, or as modified by Fujimura) does not teach:
Wherein the first end side of the conductor member is at least partially accommodated in the conductor groove.
Sumida, however, teaches (Figs.1-5):
Wherein the first end side (Fig.1: end of 27C that is in contact with 21A will define the “first end side”) of the conductor member (27C) is at least partially accommodated (Fig.1: 27C is accommodated in the groove 29A of 25 and thus the first end side of 27C is also at last partially accommodated in 29A) in the conductor groove (29A).
It would have been obvious to one of ordinary skill in the pertinent arts before the effective filing date of the claimed invention to utilize the above teaching of Sumida to modify the device of Yamane (alone, or as modified by Fujimura) such that the first end side of the conductor is at least partially accommodated in the conductor groove, as claimed, in order to provide an overall lower profile (i.e., now that the first end side of the conductor member is provided at least partially in the conductor groove, the electric/electronic component will also sit within the conductor groove, and thus reducing the overall height of the device and thus providing a more compact device) that can also provide a shorter distance between the electric/electronic component and the cooling plate and thus improve the overall cooling efficiency.
Furthermore, modifying the size of the conductor groove such that it has a desired size, including as claimed (i.e., extending the groove such that the first end of the conductor member is at least partially accommodated in the conductor groove), would have been an obvious modification that one of ordinary skill in the pertinent arts before the effective filing date of the claimed invention would do in order to achieve the improved design and efficient heat dissipation capabilities as outlined above, since a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Finally, all claimed elements were known in the prior art and one skilled in the art could have combined/modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR International Co. v. Teleflex Inc., 550 U.S._, 82 USPQ2d 1385 (2007).
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the allowability resides in the overall structure and functionality of the device as recited in the combined subject matter of claims 1 and 6-7, and at least in part, because claim 7 recites the limitations: “wherein the first end side of the conductor member is at least partially accommodated in a first end of the conductor groove, and a second end of the conductor groove, opposite to the first end, is exposed through a side surface of the cooling plate”.
The aforementioned limitations, in combination with all remaining limitations of respective claim 7, are believed to render the combined subject matter of claims 1 and 6-7, and all claims depending therefrom allowable over the prior art of record, taken either alone or in combination.
As outlined in the attached Examiner-Initiated Interview Summary, while the limitations of claim 7 are known in isolation, there would be no reason for one of ordinary skill in the pertinent arts to modify the device of Yamane, which is still believed to be the closest prior art reference, to arrive at the claimed device as respectively recited in claim 7. In other words, absent impermissible hindsight, there is no clear motivation to modify Yamane to arrive at the claimed device as respectively recited in claim 7, and thus rendering claim 7 to be allowable over the prior art references. Therefore, none of the prior art references, taken alone or in combination, are believed to render the claimed invention unpatentable as claimed in claim 7.
While there are prior art references provided in the Global Dossier that are relevant to the instant application, the Office notes that none of the prior art references, taken alone or in combination, provide a prior art reference that provides a sufficient reason as to why one of ordinary skill in the pertinent arts before the effective filing date of the claimed invention would want to modify Yamane to arrive at the claimed device as respectively recited in claim 7, and thus having the same deficiency as outlined above. In other words, similar to the deficiency outlined above, absent impermissible hindsight, there appears to be no clear reason/motivation as to why one would want to modify the device of Yamane to arrive at the claimed device as respectively recited in claim 7. Therefore, for all of the reasons outlined above, claim 7 is also believed to be allowable over the prior art references cited in the Global Dossier.
Finally, the Office has not identified any double patenting issues. For all of the reasons outlined above, claim 7 is believed to be in condition for allowance.
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Response to Arguments
Applicant’s arguments of 07/31/2026 have been fully considered but have been found unpersuasive. Regarding independent claim 1, Applicant contests that the claim is now believed to be in condition for allowance because neither Yamane nor Fujimura teaches and/or suggests “that the alleged conductor groove (53) ‘extend[s] along a longitudinal direction of the conductor member’” as claimed in independent claim 1 since “the alleged conductor groove (53) is a ‘cylindrical depression’…” as disclosed in paragraph [0035] of Yamane.
The Office has fully considered the above argument but respectfully disagrees and notes that Applicant has provided no explanation as to why a cylindrical depression would not have a longitudinal direction. The Office asserts that just because the conductor groove is cylindrical does not mean that the conductor groove does not extend along the longitudinal direction of the conductor member. As shown in figure 9 of Yamane and as shown in the annotated figure provided in the rejection of claim 1 above, the conductor groove (53) of Yamane has a dimension that has to extend in the longitudinal direction of the conductor member (100) of Yamane in order for the conductor groove (53) of Yamane to accommodate the portion of the conductor member (100) within the conductor groove. If the conductor groove (53) of Yamane did not extend along the longitudinal direction of the conductor member (100) of Yamane as alleged by Applicant, then the conductor groove of Yamane would not be able to be formed with the conductor of Yamane as shown in figure 9 of Yamane. In other words, Applicant’s argument would yield to a device that teaches away from the disclosure of Yamane since Yamane clearly teaches a conductor groove that is formed to receive at least a portion of the conductor member of Yamane, and thus requiring the conductor groove to extend along, at least, in the same direction as the conductor member, including the longitudinal direction of the conductor member, in order for the conductor member of Yamane to be received in the conductor groove of Yamane. For all of the reasons outlined above, Applicant’s argument that Yamane fails to disclose “the conductor groove extending along a longitudinal direction of the conductor member” is believed to be in error.
Applicant further contests that independent claim 1 is believed to be in condition for allowance since “nothing has been found in Yamane to disclose or suggest that the alleged conductor groove (53) ‘extend[s] along a longitudinal direction of the conductor member so that an entire portion of the conductor member placed on the front surface of the cooling plate overlaps the conductor groove’ as claimed”.
The Office has fully considered the above argument but respectfully disagrees and notes that the amended claim language is still overly broad. Referring to the amended claim language, the Office notes that the claim does not provide any limitations that exactly defines the dimensions of “an entire portion of the conductor”, and thus not providing a difference in scope between “a portion of the conductor member” and “an entire portion of the conductor member” as recited in independent claim 1 (i.e., the claim is not written in a way in which a portion of the conductor member cannot define the claimed entire portion of the conductor member). Referring now to figure 9 of Yamane, there is nothing in amended independent claim 1 that would prohibit/exclude one from calling the entire portion of the conductor member (100) that is placed in the conductor groove (53) as the claimed “entire portion of the conductor member” which is still placed on the top/front surface of the cooling plate (51) and still overlaps with the conductor groove (53) in order to fit within the conductor groove (53). In other words, the fact that Applicant uses the limitation “entire portion” does not distinguish itself from just using a portion of the conductor member since the claim does not provide any limitations that would distinguish “an entire portion” from just a portion (i.e., as currently provided, there is no distinguishing difference in terms of broadest reasonable interpretation between “entire portion” and “portion”). Furthermore, at least a portion of the entire portion of the conductor member (100) of Yamane has to fit within the conductor groove (53) since the entire portion of the conductor member (100) is indicated as the entire portion of the conductor member (100) that is provided in the conductor groove (53) (i.e., since the entire portion of the conductor member in the conductor groove is cited as the claimed entire portion of the conductor member, that would have to mean that at least a portion of that entire portion is within the conductor groove as well). For all of the reasons provided above, Applicant’s argument that Yamane fails to disclose the aforementioned limitations of independent claim 1 is believed to be in error.
Finally, Applicant contests that the rejection made to claim 5 is improper because Fujimura’865 fails to teach and/or suggest a heat transfer member that covers “an area larger than at least the conductor groove on the front surface of the cooling pate” as claimed independent claim 1.
The Office has fully considered the above argument but respectfully disagrees and notes that Applicant’s argument is a piecemealed argument that is directed to the references individually, whereas the rejection was based on the combination of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Referring to the rejection of claim 5, Fujimura’865 was only utilized to show that it is known in the art before the effective filing date of the claimed invention to utilize flexible heat transfer members since Yamane already discloses a heat transfer member that covers an area larger than at least the conductor groove on the front surface of the cooling plate, as mapped in the rejection for independent claim 1 above. In other words, Fujimura’865 was only utilized to teach the specific structural details of the heat transfer member since Yamane already discloses the general arrangement of the heat transfer member in relation to the conductor groove and cooling plate. In other words, Applicant’s argument is not directed at the rejection made in the non-final Office action of 06/08/2026 and thus rendering Applicant’s argument moot. For all of the reasons outlined above, Applicant’s arguments made to independent claim 1 are believed to be in error, and the rejection over Yamane and/or Yamane in view of Fujimura is maintained.
Applicant further contests that the rejection made to claim 5 is improper because “the alleged ‘heat transfer member’ of Yamane is two separate components of a heat transfer sheet 60 and a heater transfer paste 70” and that neither Yamane nor Fujimura provides a teaching and/ or suggestion “to replace both the heat transfer sheet 60 and the heat transfer paste 70 with a single alleged flexible sheet material (40) of Fujimura’865”.
The Office has fully considered the above argument but respectfully disagrees. The Office reminds Applicant that “The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). See also In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000) (setting forth test for implicit teachings); In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (discussion of reliance on legal precedent); In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (references do not have to explicitly suggest combining teachings); Ex parte Clapp, 227 USPQ 972 (Bd. Pat. App. & Inter. 1985) (examiner must present convincing line of reasoning supporting rejection); and Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993) (reliance on logic and sound scientific reasoning)”. “The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) ("Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.")”. See MPEP 2144 I and II.
In the instant case, Fujimura’865 explicitly teaches that the heat transfer sheet (40) is a layer that has both adhesive and thermal transfer capabilities ([0047]-[0049]). Therefore, the single sheet of Fujimura’865 can achieve the same function as the heat transfer sheet 60 and a heater transfer paste 70 of Yamane using only a single component as opposed to using two components. Therefore, one of ordinary skill in the pertinent arts before the effective filing date of the claimed invention could clearly use the teaching of Fujimura’865 to modify Yamane so that it substitutes the two-layered heat transfer member of Yamane with just a single layer (i.e., the heat transfer sheet taught by Fujimura) that can achieve the same exact function as the two-layered heat transfer member of Yamane using just a single component. In other words, the heat transfer sheet taught by Fujimurs’865 has the same exact function and capabilities as the two-layered heat transfer member of Yamane, and thus providing a motivation for one of ordinary skill in the pertinent arts before the effective filing date of the claimed invention to make the substitution since it would decrease the number of overall components needed to assemble the device, and thus making it that much simpler to assemble the device. Furthermore, there is nothing in either Yamane or Fujimura’865 that would render the combination inoperable for its intended purpose and/or teach away from the teachings of either Yamane or Fujimura’865 and thus rendering it a proper combination. See MPEP 2143. For all of the reasons outlined above, Applicant’s argument is believed to be in error, and thus the rejection made to claim 5 is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20260237585: teaches busbars that fit into busbar grooves.
US 20240292513: teaches busbars that are coupled to an electric/electronic component and fit within cutouts so that the busbars can transfer heat from the electric/electronic component to a cooling plate.
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US 20230247788: teaches an electric/electronic component and busbar that fits within a groove for heat dissipation.
DE 102013216830: teaches a busbar that fits into a groove of a heatsink so that an end of the busbar is exposed to the outside.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN S SUL whose telephone number is (571)270-1243. The examiner can normally be reached M-F 8-5 EST.
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/STEPHEN S SUL/Primary Examiner, Art Unit 2841
