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 .
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 12/09/2024, 03/09/2026 and 07/20/2026 are being considered by the examiner.
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.
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Claims 1, 3-18 and 27-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-12, 14, 17-25 and 27 of U.S. Patent No. 12/200,853. The instant application claims similar subject matter as the patent with differences that are obvious to one ordinary skilled in the art. For instance:
Claims 1, 3-18 and 27-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-12, 14, 17-25 and 27 of U.S. Patent No. 12/200,853 in view of Lin (US 2014/0251658) and Nelson et al. (US 2019/0378891 A1).
Pertaining to claim 1, Claim 1 of U.S. Patent No. 12/200,853 teaches A heat sink component (claim 1, line 1) comprising a body comprising a thermally conductive material that is electrically non-conductive (claim 1, line 2); a lower conductive layer (claim 1, line 3) formed over a bottom surface of the body (claim 1, line 3); an upper conductive layer formed over a top surface of the body (claim 1, line 5); and, wherein the heat sink component has a length in an X-direction (claim 1, lines 7) that is parallel with the top surface of the body and a thickness in a direction perpendicular to the top surface (claim 1, line 8).
But, U.S. Patent No. 12/200,853 does not explicitly teach at least one thin film component formed on at least one of the top surfaces, the bottom surface, or a side surface of the body and wherein a ratio of the length to the thickness is greater than about 7.
However, Lin teaches at least one thin film component (32, see paragraph [0063]) formed on at least one of the top surfaces, the bottom surface, or a side surface of the body and a structure with a heat sink component (2), and from the figure, it appears the length is much more than the thickness.
Additionally, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of effective filing date of application, to provide at least one thin film component formed on at least one of the top surfaces and the heat sink component body of Min with a ratio of the length to the thickness being greater than about 7, as taught by Nelson et al. and Li in order to provide high precision, superior thermal stability, and low electrical noise and also enhanced heat transferring area.
Pertaining to claim 12, Claim 1 of U.S. Patent No. 12/200,853 teaches A circuit board (claim 12, line 1) comprising: a substrate comprising a mounting surface (claim 12, line 2); a ground plane layer spaced apart from the mounting surface (claim 12, line 3); and a heat sink component at least partially embedded within the substrate (claim 12, line 6), the heat sink component comprising: a body comprising a thermally conductive material that is electrically non-conductive (claim 12, line 8); a lower conductive layer formed over a bottom surface of the body and electrically connected with the ground plane layer (claim 12, lines 9-10); and an upper conductive layer formed over a top surface of the body; and a via electrically connected with the upper conductive layer and extending toward the mounting surface (claim 12, lines 11-12).
Pertaining to claims, claims 3-4, 6-11, 13-18 and 27-29 of U.S. Patent No. 12/200,853 further teaches dependent claims 6-10, 11, 14, 17-25 and 27 of the instant application.
Claim Rejections - 35 USC § 103
5, 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, 34, 6-12, 14 -18 and 27-29 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Min (US 2016/0143129) in view of Lin (US 2014/0251658) and Nelson et al. (US 2019/0378891 A1).
Pertaining to claim 1, Min, figure 1 and 3, discloses a heat sink component comprising: a body (110-1) comprising a thermally conductive material that is electrically non-conductive (graphite, paragraph 0053); a lower conductive (110-3, formed of copper, paragraph 0057) layer formed over a bottom surface of the body and electrically connected with a ground plane layer (obvious as connected to pattern 141, which is connected to a ground, paragraph 0083); an upper conductive layer formed over a top surface of the body (layer forming pattern 131); wherein the heat sink component has a length in an X-direction that is parallel with the top surface of the body and a thickness in a direction perpendicular to the top surface (see figure, 3B).
Min does not explicitly disclose at least one thin film component formed on at least one of the top surfaces, the bottom surface, or a side surface of the body and wherein a ratio of the length to the thickness is greater than about 7 and from the figure, it appears the length is much more than the thickness
However, Nelson discloses at least one thin film component (32, see paragraph [0063] formed on at least one of the top surfaces, the bottom surface, or a side surface of the body and Lin discloses a structure with a heat sink component (2), and from the figure, it appears the length is much more than the thickness, and from the figure, it appears the length is much more than the thickness.
Additionally, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of effective filing date of application, to provide at least one thin film component formed on at least one of the top surfaces and the heat sink component body of Min with a ratio of the length to the thickness being greater than about 7, as taught by Lin, in order to have enhanced heat transferring area and Nelson provide high precision, superior thermal stability, and low electrical noise and
Pertaining to claim 3, the modified heat sink of Min further discloses wherein the at least one thin film component comprises one or more of a resistor, varistor, capacitor, or inductor.
Pertaining to claim 4, the modified heat sink component of Min further discloses at least one additional upper conductive layer (110-2) formed over the top surface of the
body of the heat sink component, and wherein the at least one additional upper
conductive layer (131) is spaced apart from the upper conductive layer on the top
surface (see figure).
Pertaining to claim 6, the modified heat sink component of Min further discloses wherein the upper conductive layer has a thickness in a Z-direction that is greater than about 1 micron (not explicitly disclosed, but the thickness would be selected to enhance the mechanical strength of the heat sink component).
Additionally, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Pertaining to claim 7, the modified heat sink component of Min further discloses wherein the heat sink component has a width in a Y-direction that is perpendicular to the X-direction and parallel with top surface, and wherein a ratio of the width of the heat sink component to the length of the heat sink component ranges from 0.2 to 5 (not explicitly disclosed, but the dimension would be selected to have increase contact area in order to better heat transfer rate).
Additionally, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Pertaining to claim 8, the modified heat sink component of Min further discloses wherein the heat sink component comprises a material having a thermal conductivity from about 150 W/m- C to about 300 W/m-Cat about 22 °C (obvious as disclosed at paragraph 0089). Additionally, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routing skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Pertaining to claim 9, the modified heat sink component of Min further discloses wherein the heat sink component comprises aluminum nitride (obvious as disclosed at paragraph 0089, to use ceramic material, and Lin, paragraph, use of nitride layer). Additionally, 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 a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Pertaining to claim 10, the modified heat sink component of Min further discloses wherein the heat sink component comprises beryllium oxide (obvious as disclosed at paragraph 0089, to use ceramic material, and Lin, paragraph, use of nitride layer). Additionally, 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 a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Pertaining to claim 11, the modified heat sink component of Min further discloses wherein the thickness of the heat sink component is less than about 250 microns (not explicitly disclosed by obvious to select a thickness to reduce the form factor of the component depending upon the heat removing capacity.
Pertaining to claim 12 , the modified heat sink component of Min further discloses a substrate (120) comprising a mounting surface (see figure); a ground plane layer spaced apart from the mounting surface (layer forming pattern 141); and a heat sink component at least partially embedded within the substrate, the heat sink component comprising: a body comprising a thermally conductive material that is electrically non- conductive; a lower conductive layer formed over a bottom surface of the body and electrically connected with the ground plane layer; and an upper conductive layer formed over a top surface of the body; and a via (V1) electrically connected with the upper conductive layer and extending toward the mounting surface (obvious as explained and applied to claim 1 above, including an upper conductive layer 131, see figure).
Pertaining to claim 14, the modified heat sink component of Min further discloses at least an additional via that electrically connects the lower conductive layer with the ground plane layer (via at the bottom, see figure).
Pertaining to claim 15, the modified heat sink component of Min further discloses a heat sink terminal on the mounting surface, wherein the via extends from the upper conductive layer to the mounting surface and connects with the heat sink terminal (see figure).
Pertaining to claim 16, the modified heat sink component of Min further discloses wherein the heat sink component further comprises at least one thin film component formed on at least one of the top surface, the bottom surface, or a side surface of the body.
Pertaining to claim 17, the modified heat sink component of Min further discloses wherein the heat sink component has a length in a direction parallel with the mounting surface of the substrate and a thickness in a direction perpendicular to the mounting surface, and wherein a ratio of the length to the thickness is greater than about 7 (obvious as applied to claim 1 above).
Pertaining to claim 18, the modified heat sink component of Min further discloses at least one additional upper conductive layer (obvious as explained and applied to claim 1 above, including an upper conductive layer 131, see figure)
formed over the top surface of the body of the heat sink component, and wherein the at least one additional upper conductive layer is spaced apart from the upper conductive layer on the upper surface (obvious as applied to claim 4 above).
Pertaining to claim 27, the modified heat sink component of Min further discloses wherein the at least one additional upper conductive layer (obvious as explained and applied to claim 1 above, including an upper conductive layer 131, see figure) comprises a connector extending therefrom, and wherein the upper conductive layer (obvious as explained and applied to claim 1 above, including an upper conductive layer 131, see figure) has an edge aligned with a first side surface of the body and the at least one additional upper conductive layer has an edge aligned with a second side surface of the body that is opposite the first side surface, and wherein the connector of the at least one additional conductive layer has an edge aligned with the first side surface of the body (obvious as explained and applied to claim 1 above, including an upper conductive layer 131, see figure).
.
Pertaining to claim 28, the modified heat sink component of Min further discloses wherein the at least one thin film component is formed over the top surface of the body and is connected between the upper conductive layer and the at least one additional upper conductive layer (obvious as explained and applied to claim 1 above, including an upper conductive layer 131, see figure).
.
Pertaining to claim 29, the modified heat sink component of Min further discloses wherein the at least one additional upper conductive layer (obvious as explained and applied to claim 1 above, including an upper conductive layer 131, see figure) comprises a connector extending therefrom, wherein the via is a first via (claim 9 disclose) and a second via (claim 9 disclose) is electrically connected with the at least one additional upper conductive layer and extends toward the mounting surface, and wherein a third via (claim 9 disclose) is electrically connected with the connector of the at least one additional upper conductive layer and extends toward the mounting surface (131, see figure).
Allowable Subject Matter
6. Claim 30 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: regarding claim 30, the specific limitations of " the second upper conductive layer comprising a connector extending therefrom, wherein the connector extends parallel to at least a portion of the first upper conductive layer in an X-direction that is parallel with the top surface of the body, wherein the second upper conductive layer extends parallel to the first upper conductive layer in a Y-direction that is parallel with the top surface of the body and perpendicular to the X-direction," in combination with the remaining elements, are not taught or adequately suggested by the prior art of record.
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Makley et al. (US 2010/0243205 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDARGIE M AYCHILLHUM whose telephone number is (571)270-1607. The examiner can normally be reached M-F 9-5.
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/ANDARGIE M AYCHILLHUM/Primary Examiner, Art Unit 2847
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