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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (Claims 1-18) in the reply filed on 7/22/2026 is acknowledged.
Applicant's election with traverse of Species A (Figures 3A-3B) in the reply filed on 7/22/2026 is acknowledged. The traversal is on the ground(s) that the claims are generic, and thus no species are disclosed. This is not found persuasive. The applicants’ argument that there are no species appears to be based on describing the features of a genus claim. In election of species, it is possible for an independent claim to read on multiple embodiments (i.e. a genus claim). However, the details of the dependent claims or future claim amendments can vary in scope based on the specific species recited. Thus, the presence of an independent claim that reads on multiple embodiments does not negate the fact that the dependent claims could further specify different features of the different species. When the recited species are mutually exclusive, as detailed previously, the claims are properly restricted (See MPEP 806.04 for a further detailed explanation of how an election of species requirement works and to better understand the relationship between genus claims and species). Therefore, the applicants’ argument is not persuasive.
The applicant then argues on page 7 of the reply that species A-C are not patently distinct species. The figures of species A-C have been copied below for easy comparison, wherein the figures clearly illustrates very different structural configurations that are clearly distinct from one another. Therefore, the applicants’ argument is not persuasive.
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The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
The status of the claims as filed in the submission dated 7/22/2026 are as follows:
Claims 1-20 are pending;
Claims 19-20 are withdrawn from consideration;
Claims 1-18 are being examined.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore:
“Gap” between the first and second plate (Claims 1 and 11). Figures 3A-3B illustrates two plates contacting each other, but it fails to show how the device operates to induce a gap, and how said gap is formed between the structural components. Further, figures 3A-3B fails to show how the actuator operates to move the plate to form the gap. Thus, the claimed features of the gap are not properly illustrated.
“Second actuator” (Claims 3 and 13). Figure 3A only has a single actuator labeled. Due to the poor image quality, it is unclear if the illustrated actuator is singular or plural.
“the actuator is configured to overcome a preload force of the preload springs in the first configuration” (Claims 5 and 15).
“the actuator is configured to overcome a preload force of the preload springs in the second configuration” (Claims 6 and 16).
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because:
Figure 3A has “310” pointing to two different elements;
Figures 3A-4C, 5B, 5C contain poor image quality and fuzzy lines, rendering the images difficult to decipher and comprehend. The applicant should submit proper line drawings of the invention (See 37 CFR 1.84(l) which states: “(l) Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning”);
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Currently, no claim limitations invoke 112(f).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-6 and 14-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 4 and 14 recite “a set of fasteners that couple the first plate to the first plate”. It is unclear how a fastener can couple the same plate to itself. Thus, the claim is indefinite. For examination purposes, the limitation has been interpreted as couple the first plate to the second plate.
The remaining claims are rejected as being dependent upon an indefinite claim.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 4-6, 10-12, 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Myers (US3463224).
Re Claim 1. Myers teaches a thermal switch assembly (Figure 3), comprising:
a first plate (84) configured to be mechanically coupled to a first instance of hardware (Figure 3; Column 3 lines 7-20. The plate is capable of being mechanically coupled to hardware, and thus reads on the limitation);
a second plate (86) configured to be mechanically coupled to a second instance of hardware (Figure 3; Column 3 lines 7-20. The plate is capable of being mechanically coupled to hardware, and thus reads on the limitation); and
an actuator (88) mechanically coupled to at least one of the first plate and the second plate (Figure 3; Column 3 lines 7-20), wherein:
in a first configuration, a gap is formed (when 88 is contracted) between the first plate and the second plate (Figure 3; Column 3 lines 7-20); and
in a second configuration (as seen in Figure 3), at least a part of the first plate contacts at least a part of the second plate, thereby permitting heat transfer between the first plate and the second plate (Figure 3; Column 3 lines 7-20).
Re Claim 11. Myers teaches a system (Figure 3), comprising:
a thermal manager (fluid within 88) (Figure 3; Column 3 lines 7-20);
a thermal switch assembly (Figure 3), the thermal switch assembly comprising (Figure 3; Column 3 lines 7-20):
a first plate (84) configured to be mechanically coupled to a first instance of hardware (Figure 3; Column 3 lines 7-20. The plate is capable of being mechanically coupled to hardware, and thus reads on the limitation);
a second plate (86) configured to be mechanically coupled to a second instance of hardware (Figure 3; Column 3 lines 7-20. The plate is capable of being mechanically coupled to hardware, and thus reads on the limitation); and
an actuator (88) controlled by the thermal manager, the actuator mechanically coupled to at least one of the first plate and the second plate (Figure 3; Column 3 lines 7-20), wherein:
in a first configuration, a gap is formed (when 88 is contracted) between the first plate and the second plate (Figure 3; Column 3 lines 7-20); and
in a second configuration (as seen in Figure 3), at least a part of the first plate contacts at least a part of the second plate, thereby permitting heat transfer between the first plate and the second plate (Figure 3; Column 3 lines 7-20).
Re Claims 2 & 12. Myers teaches the actuator includes one of a piezoelectric actuator, a linear actuator, a lead/ball screw actuator, a mechanical cam actuator, or a chain and sprocket assembly (88 is a linear actuator. Figure 3).
Re Claim 4 & 14. Myers teaches the thermal switch assembly further comprises a set of fasteners (rods at 96) that couple the first plate to the first plate, wherein each fastener has an associated preload spring (96 or 92) (Figure 3; Column 3 lines 7-20).
Re Claim 5 & 15. Myers teaches the actuator is configured to overcome a preload force of the preload springs in the first configuration (Figure 3; Column 3 lines 7-20).
Re Claim 6 & 16. Myers teaches the actuator is configured to overcome a preload force of the preload springs in the second configuration (Figure 3; Column 3 lines 7-20).
Re Claim 10. Myers teaches the actuator is insulated (via walls 82) from at least one of the first plate or the second plate (Figure 3; Column 3 lines 7-20).
Claim Rejections - 35 USC § 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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Myers (US3463224).
Re Claims 3 & 13. Myers teaches the actuator is a first actuator (88 in Figure 3) but fails to specifically teach the thermal switch assembly further comprises a second actuator.
However, Myers illustrates in a different embodiment that the thermal switch can have a plurality of actuators (22 in Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add additional actuators, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. See MPEP 2144.04 (VI, B).
Claims 7 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Myers (US3463224) in view of Marland (US6276144B1).
Re Claim 7 & 17. Myers fails to specifically teach a surface of the part of the first plate and a surface of the second plate each include a coating to reduce emissivity between the first plate and the second plate.
However, Marland teaches a thermal switch with two contact faces (316 and 334), wherein a surface of the part of the first plate (316) and a surface of the second plate (334) each include a coating (gold or silver plating, wherein a plating is a coating) to reduce emissivity between the first plate and the second plate (Figure 4; Column 7 lines 10-20). Marland teaches the benefit of the coating is to increase conductance through the thermal switch.
Therefore, in view of Marland's teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add a coating to the surfaces of Myers to increase the thermal conductance through the thermal switch when in the on state (Marland Column 7 lines 10-20). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to select an appropriate coating material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as matter of obvious design choice. See MPEP 2144.07.
Claims 8, 9, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Myers (US3463224) in view of Im (US2018/0209750A1).
Re Claim 8 & 18. Myers teaches a thermal manager (fluid within 88) but fails to specifically teach the thermal manager is electrically coupled to the actuator, comprising: a processor; and a memory storing instructions that, when executed by the processor, cause the thermal manager to perform a set of operations, comprising: evaluating an environment condition to determine a configuration for the thermal switch assembly; and based on the determined configuration for the thermal switch assembly, controlling the actuator, thereby causing the actuator to be in either the first configuration or the second configuration.
However, Im teaches it is known to have the thermal manager (200) be electrically coupled to the actuator (190a), comprising: a processor (270); and a memory (271) storing instructions that, when executed by the processor, cause the thermal manager to perform a set of operations, comprising: evaluating an environment condition (i.e. temperature T1 or T2) to determine a configuration for the thermal switch assembly; and based on the determined configuration for the thermal switch assembly, controlling the actuator, thereby causing the actuator to be in either the first configuration or the second configuration (Figures 4-6; Paragraphs 56-71). When Im is combined with Myers, the resulting combination would be the bellows actuator (88) of Myers would be replaced with the actively controlled actuator of Im to provide active control of the thermal switch.
Therefore, in view of Im's teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to replace the passive bellow actuator of Myers with an active actuator of Im that comprises an electrically coupled thermal manager in order to provide active switching of the device, thereby improving the operation of the thermal switch. The active switching will allow for more precise temperature control of the thermal switch, thereby making such a change beneficial to the thermal switch assembly.
Re Claim 9. Myers as modified by Im teach wherein determining the configuration for the thermal switch assembly comprises evaluating at least one of: a temperature of the thermal switch assembly; a temperature (T1 of Im) corresponding to the first instance of hardware; or a temperature (T2 of Im) corresponding to the second instance of hardware (Myers Figure 3, Column 3 lines 7-20; Im Figures 4-6; Paragraphs 56-71).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892 for other relevant prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAVIS RUBY whose telephone number is (571)270-5760. The examiner can normally be reached M-F: 9AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying Atkisson can be reached at 571-270-7740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRAVIS RUBY/Primary Examiner, Art Unit 3763
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