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 with traverse of Species XI, Fig. 10A, Subspecies B, Fig. 10A, claims 1-7, 9-15, and 17-21 in the reply filed on 09/09/2026 is acknowledged. The gist of the traversal is on the ground(s) that, allegedly, “Species I, V, VI, VII, IX, and X appear to be versions of Species XI.”
This is not found persuasive because the main requirement for the restriction of species is presented in MPEP § 806.04(h) (“Species Must Be Patentably Distinct From Each Other”) which states, inter alia: “In making a requirement for restriction in an application claiming plural species, the examiner should group together species considered clearly unpatentable over each other”. Further, MPEP § 808.01(a) states: “A requirement for restriction is permissible if there is a patentable difference (emphasis added) between the species as claimed and there would be a serious burden on the examiner if restriction is not required.”. The outstanding restriction is precisely in line with the requirements of MPEP § 806.04(h) and of MPEP § 808.01(a). The restricted Species / Subspecies, each having a unique patentably distinct feature(s), as presented in the body of the restriction, and therefore, are clearly patentable over each other.
Furthermore, it was clearly stated in the outstanding Restriction / Election requirement that “Should Applicant traverse on the ground that the species / subspecies, or groupings of patentably indistinct species / subspecies from which election is required, are not patentably distinct, Applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case”. However, Applicant has failed to do so. Accordingly, the restricted Species / Subspecies remain to be not obvious variants of each other based on the current record.
Furthermore, Examiner has clearly and explicitly explained why Species / Subspecies have patentably distinct features, which render the Species / Subspecies patentable over each other (see preceding discussion). Therefore, the search for said different and patentably distinct features pertained to different Species / Subspecies would involve different fields of search, employing different search queries, and therefore, would present serious additional burden on the Examiner (see MPEP § 808.02 (C)).
For all of the above stated reasons the requirement is still deemed proper and is therefore made FINAL.
The Office action on elected claims 1-7, 9-15, and 17-21 follows.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 9, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 17, respectively, of the U.S. Patent No. 12, 137, 540 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 8, and 17 of the reference patent anticipate claims 1, 9, and 17, respectively, of the instant application, except the aforementioned claims of the parent patent do not explicitly recite the top and bottom chambers. However, they do so implicitly, since they recite that “the cooling element being between the top plate and the bottom plate”. On of the ordinary skill in related arts before the effective filing date of the claimed invention would have been able to deduce from said claims of the reference patent that said cooling elements divides the inner volume of the cooling system into two chambers-one between the top plate and the cooling element (i.e. the “top chamber) and another one between the bottom plate and the cooling element (i.e., the “bottom chamber”). It’s well settled that “[i]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences (emphasis added) which one skilled in the art would reasonably be expected to draw therefrom.” See In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. (MPEP 2112). The disclosure of the structure (or material or acts) may be implicit or inherent in the specification if it would have been clear to those skilled in the art what structure (or material or acts) corresponds to the means (or step)-plus-function claim limitation. See Atmel Corp. v. Information Storage Devices, Inc., at 1380, 53 USPQ2d at 1229 (Fed. Cir. 1999); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997).
Examiner’s Note: the double patenting rejection will not be held in abeyance, since a filing a terminal disclaimer is necessary in order for a reply to the instant Office action to be considered responsive. See MPEP 804(I)(B)(1).
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, 6, 17, and 20, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0178253 to Chang et al. (hereafter “Chang”).
Regarding claims 1 and 17, Chang discloses (Figs. 1-4) a fluid flow system, comprising: a top chamber (B) having at least one vent (102b); a bottom chamber (A) having at least one orifice (102a); a support structure (12) coupled to the top chamber or the bottom chamber; and an actuator element (14, 16) having a central region (142, 16) and a perimeter (ends of (144)), the actuator element being supported by the support structure at the central region, at least a portion of the perimeter (144) being unpinned (Fig. 4), the actuator element being between the top chamber (B) and the bottom chamber (A), the actuator element undergoing vibrational motion when actuated to draw a fluid into the at least one vent and drive the fluid through the at least one orifice; wherein the actuator element, top chamber, and bottom chamber are configured such that the vibrational motion of the actuator element drives the fluid from the top chamber to the bottom chamber (Fig. 3, pp. [0021]-[0023]).
Regarding claims 6 and 20, Chang discloses a piezoelectric element ((16), par. [0017]) for driving the actuator element (14), the piezoelectric element residing on the actuator element or another portion of the fluid flow system (Fig. 4).
Examiner’s Note: regarding the method claims 17 and 20, the structure of the device of Chang is the same as the device structure recited in said method claims 17 and 20, wherein said claims 17 and 20 essentially repeat the structure recited in the apparatus claims 1 and 6, and inasmuch as claims 17 and 20 impart any additional structure (i.e. beyond the structure of the device of Chang), and absent any evidence to the contrary, the device of Chang is capable of acting in the same manner as recited in the claims, and therefore, is inherently capable of performing all claimed functions and method steps. The method steps recited in claims 17 and 20 are inherently/obviously necessitated by the device structure of the device of Chang.
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.
Claims 2-5, 7, 9-15, 18-19, and 21, are rejected under 35 U.S.C. 103 as being unpatentable over Chang taken alone.
Regarding claim 9, Chang discloses (Figs. 1-4) a fluid flow system, comprising: a top chamber (B) having at least one vent (102b, 202); a bottom chamber (A) having at least one orifice (102a, 182); a support structure (12) coupled to the top chamber or the bottom chamber; and an actuator element (14, 16) having a central region (142, 16) and a perimeter (ends of (144)), the actuator element being supported by the support structure at the central region, at least a portion of the perimeter (144) being unpinned (Fig. 4), the actuator element being between the top chamber (B) and the bottom chamber (A), the actuator element undergoing vibrational motion when actuated to draw a fluid into the at least one vent and drive the fluid through the at least one orifice; wherein the actuator element, top chamber, and bottom chamber are configured such that the vibrational motion of the actuator element drives the fluid from the top chamber to the bottom chamber (Fig. 3, pp. [0021]-[0023]), but does not disclose a plurality of the fluid flow cells.
It would be obvious to a person of the ordinary skill in the relevant arts before the effective filing date of the claimed invention to have provided a plurality fluid cells of Chang, in order to achieve desired flow rate of the fluid, optimal cooling capacity, and any other desired mechanical and/or thermal chrematistics of the apparatus while not exceeding targeted production costs thereof, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claims 2-4, 10-12, and 18, Chang does not teach the specific ranges for the fluid speed and frequency of the vibrational motion.
Optimizing ranges for the shape, and frequency is within the capabilities of one having ordinary skill in the art. Accordingly, it would be obvious to a person of the ordinary skill in the relevant arts before the effective filing date of the claimed invention to have implemented the aforementioned claimed ranges in Chang, in order to achieve desired flow rate of the fluid, optimal cooling efficiency, and any other desired mechanical and/or thermal chrematistics of the apparatus while not exceeding targeted production costs thereof, 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. See In re Aller, 105 USPQ 233. Also, 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 before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Regarding claims 5, 13, and 19, Chang discloses that the at least the portion of the fluid flow system includes the top chamber (B), (Fig. 3, pp. [0021]-[0023]).
Regarding claims 7 and 15, Chang discloses that the actuator element (14, 16) includes a first cantilevered portion (144) on a first side of the central region (142) and a second cantilevered portion (144) on a second side of the central region (142) opposite to the first side, and wherein the vibrational motion includes the first cantilevered portion and the second cantilevered portion vibrating (Figs. 2, 3, and 4; par. [0017]: “the vibrating part 16 can include one or more piezoelectric sheet which can wiggle under a load of voltage so as to drive the movable cover portions 144, which are connected to the piezoelectric sheet, to wiggle”).
Chang does not disclose that said vibrating is out-of-phase.
It would be obvious to a person of the ordinary skill in the relevant arts before the effective filing date of the claimed invention to have selected an optimal vibration frequencies in Chang, including the ones that would result in the out of phase vibration, in order to achieve desired flow rate of the fluid, optimal cooling efficiency, and any other desired mechanical and/or thermal chrematistics of the apparatus (e.g., reduced vibrations, etc.) while not exceeding targeted production costs thereof, 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. See In re Aller, 105 USPQ 233. Also, 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 before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007). Also, it has been held that discovering an optimum value of a result (the result is e.g., out of phase vibration, desired cooling efficiency, magnitude of vibration, etc.) effective variable (frequency) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 14, Chang discloses a piezoelectric element ((16), par. [0017]) for driving the actuator element (14), the piezoelectric element residing on the actuator element or another portion of the fluid flow system (Fig. 4).
Regarding claim 21, Chang discloses that the vibrational motion of the actuator element (14, 16) drives the fluid from the top chamber (B) to the bottom chamber (A) at a first flow rate (Fig. 3) and backflow through the at least one orifice (102a, 182) being at a second flow rate (Fig. 4), but does not specifically disclose that the first flow rate being at least twice the second flow rate.
It would be obvious to a person of the ordinary skill in the relevant arts before the effective filing date of the claimed invention to have implemented the claimed range of the flow rates in Chang, including as claimed, in order to predictably achieve desired cooling efficiency, and any other desired mechanical and/or thermal chrematistics of the apparatus while not exceeding targeted production costs thereof, 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. See In re Aller, 105 USPQ 233.
Examiner’s Note: regarding the method claim 19, the structure of the device of Chang is the same as the device structure recited in said method claim 19, wherein said claim 19 essentially repeats the structure recited in the apparatus claims 5 and 13, and inasmuch as claim 19 imparts any additional structure (i.e. beyond the structure of the device of Chang), and absent any evidence to the contrary, the device of Chang is capable of acting in the same manner as recited in the claim, and therefore, is inherently capable of performing all claimed functions and method steps. The method steps recited in claim 19 are inherently/obviously necessitated by the device structure of the device of Chang.
Conclusion
The remaining references made of record and not relied upon are considered pertinent to the Applicant's disclosure, because of the teachings of various oscillating and reciprocating fans and pumps and cooling arrangements employing them. Further, the following references of record could have been also used for statutory rejection of the at least independent claims:
US 2012/0301333 to Smirnov (see Figs. 9A, 9B, and 14); US 6, 232, 680 to Bae et al. (see Fig. 1)., US 8520383, US 20090085438, US 7321184, and US 2005/0225213 teach oscillating and reciprocating fans and pumps employing piezo actuators.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anatoly Vortman whose telephone number is (571)272-2047. The examiner can normally be reached Monday-Thursday, between 10 am and 8:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash N. Gandhi can be reached on 571-272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anatoly Vortman/
Primary Examiner
Art Unit 2841
