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 .
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 following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“heat transfer unit” in claim 1.
“shape deformation unit” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 8, 17-20 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.
Claim 8 recites the limitation "wherein an area occupied by the plurality of holes is formed to occupy 5 to 50% of a total area of the shape deformation unit, an area occupied by the plurality of grooves is formed to occupy 5 to 90% of the total area of the shape deformation unit". This limitation is unclear and confusing because there is no transition between the limitations (i.e. “and”, “or”, etc) thus making it unclear if the claim requires both or a single limitation. For examination purposes the examiner will interpret the claim as “or” in concordance with the other claims.
Claim 17 recites the limitation "the other structure". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3, 6, 13-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gong et al. (US 20230053018), hereinafter referred to as Gong.
Re claim 1, Gong teaches a heat transfer member comprising a carbon-based sheet (e.g. 11; ¶ 12, “the heat dissipation layer is made of graphene”) having an x-y plane,
wherein the carbon-based sheet comprises:
a heat transfer unit (A1) comprising a first part (see Fig 2, upper A1) and a second part (see Fig 2, lower A1), wherein the first part and the second part are spaced apart from each other in an x-axis direction (see Fig 2 when rotated 90 degrees); and
a shape deformation unit (A2), wherein the shape deformation unit is positioned between the first part and the second part and bent by an external force applied, wherein the first part and the second part have different heights (see Fig 4).
Re claim 2, Gong teaches the heat transfer member according to claim 1, wherein the heat transfer member has the first part and the second part attached to correspond to a first surface (surface of upper 10) and a second surface (surface of lower 10), wherein the first surface and the second surface are spaced apart from each other (see e.g. Fig 2), respectively, wherein at least one of the heights is different (see Fig 4), and heat is transferred from the first surface to the second surface.
Re claim 3, Gong teaches the heat transfer member according to claim 1, wherein the carbon-based sheet comprises at least one of a natural graphite sheet, an artificial graphite sheet, and a graphene sheet (e.g. ¶ 58, “A material of the heat dissipation layer 11 is graphene”).
Re claim 6, Gong teaches the heat transfer member according to claim 1, wherein the shape deformation unit is provided with at least one of a plurality of holes (111) to impart bending properties to the carbon-based sheet.
Re claim 13, Gong teaches the heat transfer member according to claim 6, wherein at least one of the plurality of holes are formed in a pattern, wherein the pattern is symmetrical with respect to any one reference line parallel to a y-axis direction within the shape deformation unit (see Fig 2 when rotated 90 degrees).
Re claim 14, Gong teaches the heat transfer member according to claim 13, wherein the pattern is formed, wherein a gap between adjacent holes or grooves increases from the reference line toward a boundary line between the shape deformation unit and each of the first part and the second part (see Fig 2 when rotated 90 degrees).
Re claim 15, Gong teaches the heat transfer member according to claim 1, further comprising a cover member (e.g. 14) provided with a flexible film covering an exposed surface of the carbon-based sheet (see ¶ 59, “The protection layer 14 is located on a side of the heat dissipation layer 11 away from the supporting layer 10”).
Re claim 16, Gong teaches the heat transfer member according to claim 1, further comprising a cohesive member (e.g. 13) for attachment to an adherend surface on any one surface of each of the first part and the second part (see ¶ 59, “The adhesive layer 13 is located between the supporting layer 10 and the heat dissipation layer 11”).
Re claim 17, Gong teaches the heat transfer member according to claim 1, further teaches
a heat transfer assembly (11) transferring heat from one of a first structure (see Fig 2, upper A1) and a second structure (see Fig 2, lower A1) spaced apart from each other to the other structure, comprising:
the first structure having a first surface;
the second structure having a second surface having at least one of a height different from the first surface (see Fig 4); and
the heat transfer member according to claim 1 disposed, wherein a region corresponding to the first part is in contact with at least part of the first surface of the first structure on any one surface in a thickness direction and a region corresponding to the second part is in contact with at least all of the second surface of the second structure on the one surface or an opposite surface of the one surface (see Fig 1-5),
Re claim 18, Gong teaches the heat transfer assembly according to claim 17, wherein the first structure and the second structure are each any one of a display panel (see ¶ 64, “a display device”).
Re claim 19, Gong teaches an electronic device comprising the heat transfer assembly according to claim 17 (see ¶ 64, “a display device”).
Re claim 20, Gong teaches the heat transfer assembly according to claim 17, wherein the heat transfer member has the first part and the second part attached to correspond to the first surface and the second surface, wherein the first surface and the second surface are spaced apart from each other, respectively, wherein at least one of the surface directions and the heights is different, and the heat is transferred from the first surface to the second surface (see e.g. Fig 1-5).
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.
Claim(s) 4-5, 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gong.
Re claim 4, Gong teaches the heat transfer member according to claim 1. Gong does not teach the limitation of wherein the carbon-based sheet has a thickness of 10 to 500 μm. However, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the thickness of the carbon-based sheet to 10 to 500 μm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Re claim 5, Gong teaches the heat transfer member according to claim 1. Gong does not teach the limitation of wherein the shape deformation unit has a length of at least 20 μm, wherein the length is based on the x-axis direction. However, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the shape deformation unit to have a length of at least 20 μm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Re claim 7, Gong teaches the heat transfer member according to claim 1. Gong does not teach the limitation of wherein a gap between adjacent holes based on the x-axis direction is 100 to 2,000 μm. However, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to make a gap between adjacent holes based on the x-axis direction is 100 to 2,000 μm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Re claim 8, Gong teaches the heat transfer member according to claim 1. Gong does not teach the limitation of wherein an area occupied by the plurality of holes is formed to occupy 5 to 50% of a total area of the shape deformation unit. However, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the plurality of holes to occupy 5 to 50% of a total area of the shape deformation unit, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Allowable Subject Matter
Claims 9-12 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. (see PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NELSON NIEVES whose telephone number is (571)270-0392. The examiner can normally be reached Monday to Friday 9am to 5pm.
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/NELSON J NIEVES/Primary Examiner, Art Unit 3763 9/5/2026
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