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 .
Specification
The disclosure is objected to because of the following informalities:
The abstract of the disclosure is objected to because of legal phraseology Correction is required. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means”, “said” and “comprising” should be avoided.
Claim Objections
Claims 4-7 are objected to because of the following informalities: “by weigh” in ll. 1 should be rewritten to be – by weight--, and will be interpreted accordingly. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: “said electronic component is comprises an integrated circuit” in ll. 1 should be rewritten to be – said electronic component comprises an integrated circuit--, and will be interpreted accordingly. Appropriate correction is required.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding Claims 1, 10, 15-16, the limitation “a method of heating and/or cooling of electronic components, articles and/or devices” in ll. 1 is indefinite, in context, since it cannot be discerned if the articles or devices are electronic or separate and distinct components. For Examination purposes and in accordance with the specification and drawings, “a method of heating and/or cooling of electronic components, articles and/or devices” will be interpreted as – a method of heating and/or cooling of electronic components,--.
Regarding Claim 1, the limitation “a method of heating and/or cooling of electronic components, articles and/or devices during the manufacture and/or operation thereof” in ll. 1 is indefinite, in context, since it cannot be discerned what method is being claimed or rather is the method referring to a method of operation or a method of manufacturing. Further clarification is required.
Regarding Claim 1, the limitation “comprising at least trans-1,3,3,4,4,5,5,5-octafluoropent-1-ene (hereinafter “transOFP”)” in ll. 10 is indefinite, in context, since it cannot be discerned how “hereinafter ‘transOFP’” further limits the metes and bounds of the claim. For Examination purposes and in accordance with the specification and drawings, “trans-1,3,3,4,4,5,5,5-octafluoropent-1-ene (hereinafter “transOFP”)”” will be interpreted as – trans-1,3,3,4,4,5,5,5-octafluoropent-1-ene”--.
Regarding Claim 1, “where a claim directed to a device can be read to include the same element twice, the claim may be indefinite.” Ex parte Kristensen, 10 USPQ2d 1701 (Bd. Pat. App. & Inter. 1989). See MPEP 2173.05(o). In the instant case, it is unclear if the electronic component, article or device of ll. 3 is referring to the electronic component, article or device of ll. 1 or a separate and distinct electronic component, article or device.
Regarding Claims 4-7, the limitation “at least about” in ll. 1 is a relative term which renders the claim indefinite. The term “at least about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to the percentagetrans-1,3,3,4,4,5,5,5-octafluoropent-1-ene present in the refrigerant.
Regarding Claims 4-9 the limitation “OFP” in ll. 1 is indefinite, in context, since it cannot be discerned what the term “OFP” is referring to or rather is “OFP” referring to the “transOFP” of Claim 1. For Examination purposes and in accordance with the specification and drawings, “OFP” will be interpreted as – trans-1,3,3,4,4,5,5,5-octafluoropent-1-ene--.
Regarding Claim 10, the limitation “during at least a portion of said manufacturing and/or operating process” in ll. 1 is indefinite, in context, since it cannot be discerned if the claim is further limiting the method of manufacturing of Claim 1 or if Claim 10 is further limiting the operating method of Claim 1. Further clarification is required.
Regarding Claim 17, “where a claim directed to a device can be read to include the same element twice, the claim may be indefinite.” Ex parte Kristensen, 10 USPQ2d 1701 (Bd. Pat. App. & Inter. 1989). See MPEP 2173.05(o). In the instant case, it is unclear if the electronic article of ll. 2 is referring to the electronic article of Claim 1 or a separate and distinct electronic article.
Regarding Claim 17, the limitation “providing an electronic article during the process of manufacturing said electronic article” in ll. 1 is indefinite, in context, since it cannot be discerned if the claim is further limiting the method of manufacturing of Claim 1 or if Claim 17 is further limiting the operating method of Claim 1 with a method of manufacturing. Further clarification is required.
Claim 18 recites the limitation "said electronic article" in ll. 3. There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 puts forth heating and cooling in the transferring heat step, wherein Claim 10 repeats the limitations associated with cooling in the transferring heat step. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL ALVARE whose telephone number is (571)272-8611. The examiner can normally be reached Monday-Friday 0930-1800.
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, Len Tran can be reached at (571) 272-1184. 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.
/PAUL ALVARE/ Primary Examiner, Art Unit 3763
Prosecution Insights