CTNF 18/966,245 CTNF 77140 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. Claim 9 is 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. The limitation of “an electrical/electronic system of claim 8” renders the scope of the claim indefinite since it is not clear whether applicant refer to “an electronic system” of claim 8. For purpose of examination, “an electrical/electronic system of claim 8” is understood as “an electronic system of claim 8”. Double Patenting 08-30 AIA A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co. , 151 U.S. 186 (1894); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert , 245 F.2d 467, 114 USPQ 330 (CCPA 1957). A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101. Claims 4-5, 7-9 and 11-19 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 4-5, 7-9 and 11-19 of prior U.S. Patent No. US 12,158,310 B2. This is a statutory double patenting rejection. The claims of the instant application and the patent are drawn to identical subject matter. Regarding claims 11-19, claims 11-19 of the instant application are identical with claims 11-19 of the patent. Regarding claims 4-5 and 7-9, these claims depend on claim 1, which claims a percent by volume of total non-condensable gas of not greater than 1%. The only difference in claim 1 of the patent and the instant application is that the patent further claim the lower limit of the range, which is from 0.2% to not greater than 1%. However, claim 4 of the instant application narrows the range to 0.2% to less than about 0.5% and a temperature of less than 3.5 degrees, which is the same with claim 4 of the patent. Claim 5 of the instant application, depend on claim 4 and identical with claim 5 of the patent. Claims 7 and 8 of the instant application depend on claim 4 and identical with claims 7 and 8 of the patent. Claim 9 of the instant application depend on claim 8 and identical with claim 9 of the patent. 08-33 AIA 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. 08-34 AIA Claim s 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-3 of U.S. Patent No. (US 12,158310B2) . Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between claims 1-3 of the application and claims 1-3 of the patent lies in the fact that the patent claim includes a narrower range of the volume percent of the non-condensable gas than claims 1-3 of the instant application, thus they are much more specific,. Thus the invention of claims 1-3 of the patent are in effect a “species” of the “generic” inventions of claims 1-3 of the instant application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d2010 (Fed. Cir. 1993). Since claims 1-3 are anticipated by claims 1-3 of the patent, they are not patentably distinct from claims 1-3 of the patent .. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-3, 6 and 10 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Juan et al. (Applied Thermal Engineering, volume 173). Regarding claims 1-3, Juan discloses (figure 1A and conclusion, page 12) a method of transferring heat in a heat pipe comprising (a) providing a heat pipe (TPCT) having an evaporator section and a condenser section with a gaseous heat transfer composition in the condenser section, the gaseous heat transfer composition in the condenser section having a percent by volume of total non-condensable gases (NCG) of not greater than 1% (claim 1) or not greater than 0.75% (claim 2) or not greater than 0.5% (claim 3). ( column 2, page 10 and column 1, page 12, non-condensable gas is 0.002 volume fraction.. (b) transferring heat from the heat pipe by condensing the gaseous heat transfer composition in the condenser section, wherein the heat pipe operates with a temperature differential of less than 5 degrees (about 1.2 degrees, in conclusion, column 1). Regarding claim 6 , Juan et al. discloses (page 2, first column) that the gaseous heat transfer composition is a low-pressure working fluid (R134a, or R11 or R12 and R12), since the term “low” is a relative term, it is reasonable to read the working fluid (R134a or R11, R12 and R22) of the heat pipe as a low-pressure working fluid. Regarding claim 10 , Juan et al. discloses (page 2, first column) that the gaseous heat transfer composition is a high pressure working fluid (R134a, or R11 or R12 and R12), since the term “high” is a relative term, it is reasonable to also read the working fluid (R134a or R11, R12 and R22) of the heat pipe as a low-pressure working fluid . 07-15 AIA Claim s 1-8 and 10-12, 14, 16-17 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Hikaru et al. (US 20190257553A1). Regarding claims 1-4, Hikaru discloses (paragraph 173-174) a method of transferring heat in a heat pipe comprising (a) providing a heat pipe having an evaporator section and a condenser section with a gaseous heat transfer composition in the condenser section, the gaseous heat transfer composition in the condenser section having a percent by volume of total non-condensable gases (NCG) of not greater than 1% (claim 1) or not greater than 0.75% (claim 2) or not greater than 0.5% (claim 3) or within the claimed range 0.2-0.5% (claim 4), ( paragraph 185, the non-condenser gas is preferably 0.5 volume % or less). (b) transferring heat from the heat pipe by condensing the gaseous heat transfer composition in the condenser section, wherein the heat pipe operates with a temperature differential of less than 5 degrees (claim 1), less than 4 degrees (claim 2) and less than 3.5 degrees (claim 3-4), (paragraphs 85-87, the temperature glide or temperature difference is close to zero). Regarding claim 5, Hikaru further discloses (paragraph 130) that the heat transfer composition is iso-pentane Regarding claim 6 , Hikaru further discloses (paragraph 130) that the gaseous heat transfer composition is iso-pentane. Since the term “low” is a relative term, it is reasonable to read the working fluid (iso-pentane) of the heat pipe as a low-pressure working fluid. Regarding claims 7 and 8 , Hikaru further discloses (paragraph 174) that the heat pipe is used to cool a heat generating part of electronic device. Regarding claim 10 , Juan et al. discloses (paragraphs 130 or 131) that the gaseous heat transfer composition is a high pressure working fluid (iso-pentane or CFO), since the term “high” is a relative term, it is reasonable to also read the working fluid (Iso-pentane or CFO) of the heat pipe as a high-pressure working fluid. Regarding claim 11, Hikaru discloses (paragraph 173-174) a method of transferring heat in a heat pipe comprising providing a heat pipe having an evaporator section and a condenser section with a gaseous heat transfer composition in the condenser section, the gaseous heat transfer composition in the condenser section being iso-pentane (paragraph 130) and having a percent by volume of total non-condensable gas being 0.5% or less, which is within the claimed range 0.2 to 0.8. transferring heat from the heat pipe by condensing the gaseous heat transfer composition in the condenser section. Regarding claims 12 and 14 , Hikaru et al. further discloses (paragraph 174) that the heat pipe is used to cool a heat generating part of electronic device. Regarding claim 16 , Hikaru et al. discloses (paragraph 173-174) a cooled electronic component comprising a heat pipe, the heat pipe having evaporator section in thermal communication with the electronic component and a condenser having a gaseous heat transfer composition therein, the gaseous heat transfer component in the condenser section having a percent by volume of total non-condensable gas of 0.5 volume percent or less, which is within the claimed range (0.2 to 0.5%). Regarding claim 17, Hikaru et al. further discloses (paragraph 130) that the heat transfer composition is iso-pentane . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim s 9, 13, 15, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hikaru et al. in view of Oman (US 7,324,341). Hikaru et al. substantially discloses all of applicant’s claimed invention as discussed above except for the limitation that the electronic device include a printed circuit board and an IGBT. Oman discloses (figure 3) an electronic assembly (24) that has a printed circuit board (20) containing an isolated gate bipolar transistor (GBTI), wherein a heat pipe (32) is used in the electronic assembly for a purpose of cooling the GBTI. It would have been obvious to one having ordinary skill in the art to use Oman’s teaching in Hikaru’s device for a purpose of using the heat pipe in the electronic assembly that has a printed circuit board to cool the IGBT that is mounted on the circuit board . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nubbe (US 20160181676A1) discloses a variable conductive heat pipe. Guo (US 6,209,625) discloses a heat pipe with hydrogen getter. Hyman et al. (US 5,771,967) discloses a wick interrupted temperature controlling heat pipe. Hara et al. (US 3,933,198) discloses a heat transfer device. Kirkpatrick (US 3,673,306) discloses a fluid heat transfer method. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THO V DUONG whose telephone number is (571)272-4793. The examiner can normally be reached M-F 10-6 EST. 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, Atkisson Jianying can be reached on 571-270-7740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent- center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /THO V DUONG/Examiner, Art Unit 3763 Application/Control Number: 18/966,245 Page 2 Art Unit: 3763 Application/Control Number: 18/966,245 Page 3 Art Unit: 3763 Application/Control Number: 18/966,245 Page 4 Art Unit: 3763 Application/Control Number: 18/966,245 Page 5 Art Unit: 3763 Application/Control Number: 18/966,245 Page 6 Art Unit: 3763 Application/Control Number: 18/966,245 Page 7 Art Unit: 3763 Application/Control Number: 18/966,245 Page 8 Art Unit: 3763 Application/Control Number: 18/966,245 Page 9 Art Unit: 3763 Application/Control Number: 18/966,245 Page 10 Art Unit: 3763 Application/Control Number: 18/966,245 Page 11 Art Unit: 3763 Application/Control Number: 18/966,245 Page 12 Art Unit: 3763
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