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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“thermally conductive member” in claim 1
“heat-generating element” in claim 1
“heat receiving portion” in claim 7
“cast member” in claim 15
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 7-8, 11, 14-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hatamian et al. (US 20070285894), hereinafter referred to as Hatamian.
Re claim 1, Hatamian teaches a heat sink comprising:
a base portion (e.g. 14) having a first surface (top surface) and a second surface (bottom surface) facing the first surface, in which a heat-generating element is to be thermally connected to the second surface (e.g. ¶ 15, “the latter being operative to be mounted upon a heat-generating source, such as an electronic component or otherwise incorporated as part of a heat transfer application”); and
heat radiation fins (e.g. 16) provided upright on the first surface of the base portion,
wherein the base portion and the heat radiation fins are integrally molded (e.g. ¶ 16, “As will further be readily understood, although depicted as fins 16, the improved heat sink 10 of the present invention may be configured such that any of a variety of structures may be formed to extend from the base 14 so as to maximize surface area. For example, it should be understood that structures such as columns, protuberances, corrugated structures and the like could be readily integrated as heat-dissipating structures”), and
at least a part of a thermally conductive member (e.g. 18) is embedded in the heat sink.
Re claim 2, Hatamian teaches the heat sink according to claim 1, comprising a block portion (see Fig 2) extended in an extending direction of the base portion, wherein the thermally conductive member is embedded in the block portion (see Fig 2).
Re claim 3, Hatamian teaches the heat sink according to claim 1, wherein the thermally conductive member is embedded in the base portion (see Fig 2).
Re claim 4, Hatamian teaches the heat sink according to claim 2, wherein the block portion is a protruding part of the first surface, which is protruded in a thickness direction of the base portion from the first surface of the base portion (see Fig 2).
Re claim 7, Hatamian teaches the heat sink according to claim 1, wherein the thermally conductive member has a heat receiving portion to be thermally connected to the heat-generating element (inherent).
Re claim 8, Hatamian teaches the heat sink according to claim 1, wherein the entire thermally conductive member is embedded in the heat sink (see Fig 2).
Re claim 11, Hatamian teaches the heat sink according to claim 1, wherein the thermally conductive member extends along an extending direction of the base portion (see Fig 2).
Re claim 14, Hatamian teaches the heat sink according to claim 1, wherein the thermally conductive member is a heat pipe or a vapor chamber (see ¶ 18, “As will be readily appreciated by those skilled in the art, to provide such structures will enable fluid to be drawn in to a dedicated channel 18 without the need for any type of mechanical pumping action or the like”).
Re claim 15, Hatamian, as modified, teaches the heat sink according to claim 1. The examiner notes that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. (see MPEP 2113 I)
Re claim 16, Hatamian teaches the heat sink according to claim 1, wherein a sealed injection tube that is used to inject a working fluid into an inside of the heat pipe or the vapor chamber is provided in an inward direction from a peripheral edge portion of the heat sink (see ¶ 18, “As will be readily appreciated by those skilled in the art, to provide such structures will enable fluid to be drawn in to a dedicated channel 18 without the need for any type of mechanical pumping action or the like”).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 5, 9-10, 13-14, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatamian, in view of Huang et al. (US 20100032137), hereinafter referred to as Huang.
Re claim 5, Hatamian teaches the heat sink according to claim 2. Hatamian does not explicitly teach the limitation of wherein the block portion is a protruding part of the second surface, which is protruded in a thickness direction of the base portion from the second surface of the base portion. However, Huang teaches a heat sink comprising a block portion (see Fig 4) is a protruding part of a second surface, which is protruded in a thickness direction of a base portion from the second surface of the base portion (see Fig 4). Therefore, at the time the invention was filed it would have been obvious for a person of ordinary skill in the art to have modified Hatamian and integrated wherein the block portion is a protruding part of the second surface, which is protruded in a thickness direction of the base portion from the second surface of the base portion, as taught by Huang, in order to have better contact with the heat source.
Re claims 9-10, Hatamian teaches the heat sink according to claim 1 and 5. Hatamian does not explicitly teach the limitation of wherein at least a partial region of the thermally conductive member has an exposed portion exposed from the second surface of the base portion, and the exposed portion is to be directly in contact with the heat-generating element. However, Huang teaches a heat sink comprising a partial region of the thermally conductive member has an exposed portion exposed from the second surface of the base portion, and the exposed portion is to be directly in contact with the heat-generating element (see Fig 4). Therefore, at the time the invention was filed it would have been obvious for a person of ordinary skill in the art to have modified Hatamian and integrated a partial region of the thermally conductive member has an exposed portion exposed from the second surface of the base portion, and the exposed portion is to be directly in contact with the heat-generating element, as taught by Huang, in order to have better contact with the heat source.
Re claim 13, Hatamian, as modified, teaches the heat sink according to claim 9. Huang teaches wherein the thermally conductive member has a protrusion portion protruded in a thickness direction of the base portion, and the exposed portion is formed by the protrusion portion (see Fig 4).
Re claim 14, Hatamian, as modified, teaches the heat sink according to claim 9. Huang teaches wherein the thermally conductive member has a protrusion portion protruded in a thickness direction of the base portion, and the exposed portion is formed by the protrusion portion (see Fig 4).
Re claim 17, Hatamian, as modified, teaches the heat sink according to claim 14. Huang teaches wherein the heat pipe is a flat type heat pipe that is flattened (see Fig 4).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatamian.
Re claim 19, Hatamian, as modified, teaches the heat sink according to claim 1. Hatamian does not teach the limitation of wherein a shape of the thermally conductive member in a longitudinal direction is a shape having a bent portion in plan view. One of skill in the art would recognize that changes in shape are a matter of design choice such that changing the shape of the thermally conductive member is obvious. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Allowable Subject Matter
Claims 6, 12, 18, 20 are 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. (see PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NELSON NIEVES whose telephone number is (571)270-0392. The examiner can normally be reached Monday to Friday 9am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frantz Jules can be reached at 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NELSON J NIEVES/Primary Examiner, Art Unit 3763 9/17/2026
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