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 .
Email Communication
Applicant is encouraged to authorize the Examiner to communicate via email by filing form PTO/SB/439 either via USPS, Central Fax, or EFS-Web. See MPEP 502.01, 502, 502.05.
Information Disclosure Statement
The information disclosure statements filed 11/8/2024, 4/6/2026 have been fully considered and are attached hereto.
Specification
The disclosure is objected to because of the following informalities: the written description does not describe element 254 shown in Fig 2A.
Appropriate correction is required.
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, the
Sold mask layers of claim 5
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.
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 12-13, 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 and 16 of copending Application No. 18/941576 in view of Park et al. (US 2020/0111721 – hereinafter, “Park”).
With respect to claim 12, claim 12 of the ‘576 reference recites (recitations of the ‘576 reference in parentheses) a system comprising a first cooling module configured to extract heat from a power module (Cl. 12, verbatim), wherein the power module includes a printed circuit board and a switching power device embedded within the printed circuit board (Cl. 12, verbatim).
The ’576 reference fails to specifically recite wherein the power module includes a first external isolation layer external to the printed circuit board, and wherein the first cooling module directly contacts the first external isolation layer.
Park, however, teaches wherein a power module includes a first external isolation layer (400a) external to a printed circuit board (See Fig 1), and wherein the first cooling module (600a) directly contacts the first external isolation layer (400a, ¶ 0053, “The first coating layer 400a may be configured such that a first surface thereof is bonded to the upper surface of the upper substrate 100 while a second surface thereof is bonded to a first cooling means 600a.”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Park with that of claim 12 of the ‘576 reference such that the ‘576 reference also recites wherein the power module includes a first external isolation layer external to the printed circuit board, and wherein the first cooling module directly contacts the first external isolation layer, as taught by Park, since doing so would allow electrical isolation between the first cooling module and the printed circuit board.
With respect to claim 13, claim 12 of the ‘576 reference recites the limitations therein verbatim.
With respect to claim 16, claim 16 of the ‘576 reference recites (recitations of the ‘576 reference in parentheses) a method comprising (Claim 16, verbatim): embedding a switching power device within a printed circuit board of a power module (Claim 16, verbatim); and extracting heat from the power module via a first cooling module (Claim 16, verbatim).
Claim 16 of the ‘576 reference fails to specifically recite wherein the power module includes a first external isolation layer external to the printed circuit board, and wherein the first cooling module directly contacts the first external isolation layer.
Park, however, teaches (In Fig 1) wherein a power module includes a first external isolation layer (400a) external to a printed circuit board (50 and everything embedded therein), and wherein a first cooling module (600a) directly contacts the first external isolation layer (400a, ¶ 0053, “The first coating layer 400a may be configured such that a first surface thereof is bonded to the upper surface of the upper substrate 100 while a second surface thereof is bonded to a first cooling means 600a.”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Park with that of claim 16 of the ‘576 reference such that claim 16 further recites wherein the power module includes a first external isolation layer external to the printed circuit board, and wherein the first cooling module directly contacts the first external isolation layer as taught by Park, since doing so would allow electrical isolation between the first cooling module and the printed circuit board.
With respect to claim 17, claim 16 of the ‘576 reference recites the limitations therein verbatim.
Claims 15, 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 and 16 of copending Application No. 18/941576 in view of Park and further in view of Edwards et al. (US 2013/0192655 – hereinafter, “Edwards”).
With respect to claim 15, the ‘576 reference as modified by Park recites the limitations of claim 12 of the present application as per above but fails to specifically recite the additional limitations of claim 15.
Edwards, however, teaches a heat sink (122) which is liquid cooled (¶ 0017).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Edwards with that of Park such that claim 12 of the ‘576 application further recites that the first cooling module cools the power module via liquid cooling, as taught by Edwards, since doing so would allow for the first cooling module to remove more heat than if it were cooled via air cooling.
With respect to claim 20, the ‘576 reference as modified by Park recites the limitations of claim 17 of the present application as per above but fails to specifically recite the additional limitations of claim 20.
Edwards, however, teaches a heat sink (122) which is air cooled (¶ 0017).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Edwards with that of Park such that claim 16 of the ‘576 reference further recites that the first cooling module cools the power module via air cooling, as taught by Edwards, since doing so would allow for the first cooling module to be cooled by a fluid which is not capable of leaking and causing subsequent damage to the power module.
This is a provisional nonstatutory double patenting rejection.
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.
Claims 12-14, 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park.
With respect to claim 12, Park teaches (In Fig 1) a system comprising a first cooling module (600a) configured to extract heat from a power module (400a, 400b and everything therebetween, see Fig 1), wherein the power module includes a printed circuit board (50 and everything embedded therein) and a switching power device (300) embedded within the printed circuit board (See Fig 1), wherein the power module includes a first external isolation layer (400a) external to the printed circuit board (See Fig 1), and wherein the first cooling module (600a) directly contacts the first external isolation layer (400a, ¶ 0053, “The first coating layer 400a may be configured such that a first surface thereof is bonded to the upper surface of the upper substrate 100 while a second surface thereof is bonded to a first cooling means 600a.”).
With respect to claim 13, Park further teaches that the printed circuit board includes a plurality of conductive layers (100a, 100b), and wherein each conductive layer of the plurality of conductive layers is electrically connected to the switching power device (¶ 0036, “Upper substrates 100a and 100b serve as output terminals and are connected to a driving motor to supply power.”).
With respect to claim 14, Park further teaches a second cooling module (600b) configured to extract heat from the power module, and wherein the power module includes a second external isolation layer (400b) external to the printed circuit board (See Fig 1), wherein a first side (Top side) of the first external isolation layer (400a) is in contact with the first cooling module (600a) and a second side (Bottom side) of the first external isolation layer (400a) opposite to the first side is in contact with a first end (Top end) of the printed circuit board (See Fig 1), and wherein a first side (Bottom side) of the second external isolation layer (400b) is in contact with the second cooling module (600b) and a second side (Top side) of the second external isolation layer (400b) opposite to the first side is in contact with a second end (Bottom end) of the printed circuit board (See Fig 1).
With respect to method claims 16-19, the method steps recited in the claims are inherently necessitated by the device structure as taught by the Park reference.
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.
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 1, 3-4, 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Park.
With respect to claim 1, Park teaches (In Fig 1) a power module (Fig 1, 400a, 400b and everything therebetween); and a first cooling module (600a) configured to extract heat from the power module, wherein the power module includes: a printed circuit board (50 and everything embedded therein); a switching power device (300) embedded within the printed circuit board (See Fig 1); and a first external isolation layer (400a) external to the printed circuit board (See Fig 1), wherein the first cooling module (600a) directly contacts the first external isolation layer (400a, ¶ 0053, “The first coating layer 400a may be configured such that a first surface thereof is bonded to the upper surface of the upper substrate 100 while a second surface thereof is bonded to a first cooling means 600a.”).
Park Fig 1 fails to specifically teach or suggest that the power module is part of a power conversion unit.
Park background of the invention teaches the conventionality of having a power module as part of a power conversion unit (¶ 0003, “A power module, which is a core component of the power converter”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Park ¶ 0003 with that of Park Fig 1 such that the power module of Park Fig 1 is part of a system comprising a power conversion unit, as taught by Park ¶ 0003, since doing so would provide functionality to the power module of Park Fig 1.
With respect to claim 3, Park further teaches a second cooling module (600b) configured to extract heat from the power module, and wherein the power module includes a second external isolation layer (400b) external to the printed circuit board (See Fig 1).
With respect to claim 4, Park further teaches wherein a first side (Top side) of the first external isolation layer (400a) is in contact with the first cooling module (600a) and a second side (Bottom side) of the first external isolation layer (400a) opposite to the first side is in contact with a first end (Top end) of the printed circuit board (See Fig 1), and wherein a first side (Bottom side) of the second external isolation layer (400b) is in contact with the second cooling module (600b) and a second side (Top side) of the second external isolation layer (400b) opposite to the first side is in contact with a second end (Bottom end) of the printed circuit board (See Fig 1).
With respect to claim 9, Park further teaches that the printed circuit board includes a plurality of conductive layers (100a, 100b), and wherein each conductive layer of the plurality of conductive layers is electrically connected to the switching power device (¶ 0036, “Upper substrates 100a and 100b serve as output terminals and are connected to a driving motor to supply power.”).
With respect to claim 10, Park further teaches wherein the power module is cooled via double-side cooling (600a on a top side and 600b on a bottom side, see Fig 1).
With respect to claim 11, Park Fig 1 further teaches a battery connected to the power conversion unit, and a motor configured to rotate based on power received from the power conversion unit (¶ 0037). Park Fig 1 fails to specifically teach that the system is provided as a vehicle.
Park ¶ 0003 teaches that the power conversion unit is provided in a vehicle.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Park ¶ 0003 with that of Park Fig 1 such that Park Fig 1 is provided in a vehicle, as taught by Park ¶ 0003, since doing so would allow the power module and motor of Park Fig 1 to have functionality.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Badaroglu et al. (US 2025/0336757 – hereinafter, “Badaroglu”).
With respect to claim 2, Park teaches the limitations of claim 1 as per above but fails to specifically teach or suggest wherein the first external isolation layer includes a thermal interface material layer and a ceramic isolation layer.
Badaroglu, however, teaches (In Fig 7D, ¶ 0039) a first external isolation layer (470 + 480) includes a thermal interface material layer (470) and a ceramic isolation layer (480, ¶ 0039).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Badaroglu with that of Park such that the first external isolation layer of Park includes a thermal interface material layer and a ceramic isolation layer, as taught by Badaroglu, since doing so would increase heat transfer from the printed circuit board to the first external isolation layer (Placing a TIM between 400a and the PCB of Park will allow for better thermal connection, and thus better heat transfer, between the two).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Park et al. (KR 20180000803 – hereinafter, “Park-803”).
With respect to claim 5, Park teaches the limitations of claim 4 as per above but fails to specifically teach or suggest wherein the power module includes a first solder mask layer in contact with the first end of the printed circuit board and a second solder mask layer in contact with the second end of the printed circuit board, and wherein the first external isolation layer is within and/or exterior to the first solder mask layer and the second external isolation layer is within and/or exterior to the second solder mask layer.
Park-803, however, teaches a PCB (110, 120, 140) which has a solder mask layer (160) thereon and an external isolation layer (201) connected thereto.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Park-803 with that of Park such that the insulating layers of Park include a solder mask layer attached between the insulating layers and the PCB, as taught by Park-803, since doing so would provide an additional insulation layer between the PCB and the first cooling module and between the PCB and the second cooling module thus reducing the chance that an electrical current will travel between the PCB and the cooling modules. See Fig A below for how Park would be modified by Park-803 to arrive at the invention of claim 5.
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Claims 6-7, 15, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Edwards.
With respect to claim 6, Park teaches the limitations of claim 1 as per above but fails to specifically teach or suggest the limitations of claim 6.
Edwards, however, teaches a heat sink (122) which is air cooled (¶ 0017).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Edwards with that of Park such that the first cooling module cools the power module via air cooling, as taught by Edwards, since doing so would allow for the first cooling module to be cooled by a fluid which is not capable of leaking and causing subsequent damage to the power module.
With respect to claim 7, Park teaches the limitations of claim 1 as per above but fails to specifically teach or suggest the limitations of claim 7.
Edwards, however, teaches a heat sink (122) which is liquid cooled (¶ 0017).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Edwards with that of Park such that the first cooling module cools the power module via liquid cooling, as taught by Edwards, since doing so would allow for the first cooling module to remove more heat than if it were cooled via air cooling.
With respect to claim 15, Park teaches the limitations of claim 12 as per above but fails to specifically teach or suggest the limitations of claim 15.
Edwards, however, teaches a heat sink (122) which is liquid cooled (¶ 0017).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Edwards with that of Park such that the first cooling module cools the power module via liquid cooling, as taught by Edwards, since doing so would allow for the first cooling module to remove more heat than if it were cooled via air cooling.
With respect to method claim 20, the method steps recited in the claims are inherently necessitated by the device structure as taught by the Park and Edwards references.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Edwards and further in view of Malouin et al. (US 2023/0284421 – hereinafter, “Malouin”).
With respect to claim 8, Park as modified by Edwards teaches the limitations of claim 7 as per above but fails to specifically teach or suggest that the liquid cooling includes water-glycol.
Malouin, however, teaches a liquid coolant that includes water-glycol (¶ 0040).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Malouin with that of modified Park such that the liquid cooling of modified Park includes water-glycol, as taught by Malouin, since doing so would prevent the liquid coolant from freezing at some below freezing temperatures.
Conclusion
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/ZACHARY PAPE/Primary Examiner, Art Unit 2841
