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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
`
`
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`14/388,448
`
`09/26/2014
`
`Atsushi YAMASHIMA
`
`WASHB—53246
`
`6452
`
`06’1““ —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`BAISA, JOSELITO SASIS
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`ART UNIT
`2837
`
`NOTIFICATION DATE
`
`DELIVERY MODE
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`06/15/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patdocket @ pearne.c0m
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 14/388,448 YAMASHIMA ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2837JOSELITO BAISA first“
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
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`-
`-
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`Status
`
`
`1)IXI Responsive to communication(s) filed on 5/11/16.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
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`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20160608
`
`Disposition of Claims*
`5)|XI Claim(s) L5is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s L5 is/are rejected.
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`is/are objected to.
`
`) )
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`_
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`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
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`
`
`
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`or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
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`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`
`
`

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`Application/Control Number: 14/388,448
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`Page 2
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`Art Unit: 2837
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`The present application is being examined under the pre—AIA first to invent provisions.
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 103
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`The following is a quotation of pre—AIA 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`Claims 1-3 are rejected under pre-AIA 35 U.S.C. 103(3) as being unpatentable over
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`Okamoto [U.S. Pat. No. 8102228] in View of Sako et 31. [JP 63276846], Kato et al.
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`[2011/0156853A1] and Ursch [U.S. Pat. No. 2992405].
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`Regarding claim1, Okamoto discloses a reactor apparatus comprising a coil 105 that
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`includes an annularly wound conductor wire and that is energized to generate a magnetic flux;
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`a case101 in a cylindrical shape having a side surface portion, a bottom surface portion,
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`and one open end (Figure 2), that includes a first fastening section 23 extending outward from an
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`outer wall of the side surface portion, and that houses the coil 105;
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`a potting resin 108 that fills a space between an inner wall of the case 101 and the coil
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`105; and
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`

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`Application/Control Number: 14/388,448
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`Page 3
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`Art Unit: 2837
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`a fastener (e. g., integral part of the fastening sections where screw goes) that fixes the
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`first fastening section 23 and another section together [Col. 4, Lines l—24, Fig. 2].
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`Okamoto discloses the instant claimed invention discussed above except for the case is
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`made of resin; a metal plate that includes a second fastening section to be fastened with the first
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`fastening section and that is fixed so as to be in contact with a whole surface of the bottom
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`surface portion of the case; a heat radiating adhesive that fills a gap generated between the
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`bottom surface portion of the case and the metal plate.
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`Sako discloses a reactor case made of resin [Abstract].
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`It would have been obvious to one having ordinary skill in the art at the time of the
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`invention to use a reactor case made of resin as taught by Sako to the reactor of Okamoto provide
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`insulation property and at the same time good thermal conductivity for electric device that
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`generates heat.
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`Kato discloses a plate (e. g., cooling base 100) that includes a second fastening section
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`(e. g., screw hole 42h) that can be fastened with a first fastening section and that is fixed so as to
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`be in contact with a whole surface of a bottom surface portion of a case (e. g., bottom surface of
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`external resin portion 40 with integrated heatsink); a heat radiating adhesive that fills a gap
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`generated between the bottom surface portion of a case and the plate [Paragraph 0271—0274].
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`It would have been obvious to one having ordinary skill in the art at the time of the
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`invention to use a plate for mounting the case and a heat radiating adhesive as taught by Kato to
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`the reactor of Okamoto to provide heat dissipation for the reactor and the adhesive provide an
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`excellent adhesion between the case and the cooling base.
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`

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`Application/Control Number: 14/388,448
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`Page 4
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`Art Unit: 2837
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`Ursch discloses a plate 18 made of metal that is in contact with non—metal body attached
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`to a heat source i.e., coil [Col. 2, Lines 40—60, Fig. 1].
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`It would have been obvious to one having ordinary skill in the art at the time the
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`invention was made to use a metal plate in contact with a non—metal surface as taught by Ursch
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`to the case of Okamoto with the resin material of Sako so as to provide a good dissipating means
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`and drawing heat from an inductor encapsulated/separated by insulation material.
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`Regarding claim 2, Okamoto discloses the first fastening sections include circular holes
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`having center positions that are identical to each other when the case is fastened to the metal
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`plate.
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`Okamoto discloses the instant claimed invention discussed above except for the fastener
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`includes a screw hole along a central axis and is inserted in the hole of the first fastening section,
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`the fastener being a metal collar integrally shaped with the first fastening section by molding,
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`and fixing the first fastening section to the second fastening section by tightening a screw into
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`the screw hole, the screw being inserted from the hole of the second fastening section.
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`Kato discloses fastener 42c includes a screw hole along a central axis and is inserted in
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`the hole 42h of fastening section, the fastener being a metal collar integrally shaped with the first
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`fastening section by molding, and fixing the first fastening section to the second fastening
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`section by tightening a screw into the screw hole, the screw being inserted from the hole of the
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`second fastening section [Paragraph 0158 and 0274].
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`Application/Control Number: 14/388,448
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`Page 5
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`Art Unit: 2837
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`It would have been obvious to one having ordinary skill in the art at the time of the
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`invention to use a metal collared fastener in a screw hole along a central axis as taught by Kato
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`to the fastener of Okamoto to ensure toughness and avoid breakage on the fastening sections.
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`Regarding claim 3, Kato discloses the collar 42c includes an upper end that protrudes
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`from the hole of fastening section 42 above an upper surface portion of the first fastening
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`section; and a gap generated between the protruding upper end of the collar and the upper surface
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`portion of the first fastening section 42 is filled with a heat radiating adhesive [Paragraph 0274].
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`Claim 4 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
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`Okamoto in View of Sako, Kato and Ursch as applied to claim 2 above, and further in View
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`of Sato [U.S. Pub. No. 2010/0209314A1].
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`Regarding claim 4, Okamoto discloses the first fastening section 23 is formed of a leg—
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`like shape protruding and extending from an outer edge of the bottom surface portion in parallel
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`to a horizontal surface of the bottom surface portion of the caselOl [see Figure 2].
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`Okamoto in view of Sako, Kato and Ursch disclose the instant claimed invention
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`discussed above except for the second fastening section is formed of a leg—like shape protruding
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`and extending from an outer edge of the metal plate in parallel to a horizontal surface of the
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`metal plate.
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`Sato discloses a second fastening section (e. g., sections of cooling block 1) that matches
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`the shape of the base 2 of the molded body 4 [Paragraph 0028].
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`It would have been obvious to one having ordinary skill in the art at the time of the
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`invention to have a second fastening section to be similar to the base of the molded body as
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`

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`Application/Control Number: 14/388,448
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`Page 6
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`Art Unit: 2837
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`taught by Sato and to be applied to the first and second fastening section of Okamoto in view of
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`Sako, Kato and Ursch to form a leg—like shape protruding and extending from an outer edge of
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`the metal plate in parallel (e. g., horizontal portions) to a horizontal surface of the metal plate to
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`have an efficient heat dissipation from the reactor.
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`Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
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`Okamoto in view of Sako, Kato and Ursch as applied to claim 1 above, and further in view
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`of Fastner et al. [U.S. Pat. No. 3210701].
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`Regarding claim 5, Okamoto in view of Sako, Kato and Ursch discloses the instant
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`claimed invention discussed above except for the coil is a toroidal—shaped coil; and the case
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`includes a center fixing member that is formed so as to protrude from a center portion of the
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`bottom surface portion and that is fitted into a hole at a center portion of the coil to fix the coil at
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`a center position inside the case.
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`Fastner discloses coil is a toroidal—shaped coil 11; and the case 13 includes a center fixing
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`member (e. g., 17 with a screw) that is formed so as to protrude from a center portion of the
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`bottom surface portion and that is fitted into a hole 23 at a center portion of the coil 11 to fix the
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`coil at a center position inside the case 13 [C01 3, Lines 9—18, Fig. 1—4].
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`Although, the specific shape of the core structure (e. g., toroidal core that results in having
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`a toroidal—shaped coil) would have been an obvious design consideration based on the intended
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`application.
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`It would have been obvious to one having ordinary skill in the art at the time of the
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`invention to have a toroidal— shaped coil with center fixing member as taught by Fastner to the
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`Application/Control Number: 14/388,448
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`Page 7
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`Art Unit: 2837
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`reactor of Okamoto in view of Sako, Kato and Ursch to secure the coil in the center of the
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`housing before the application of resin.
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`Response to Argument
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`Applicant's arguments with respect to claims l—5 have been considered but are not moot
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`in view of the new ground/s of rejection.
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`In the interview, dated 8 April 2016, the Applicant argues that in the prior art Wilson, the
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`metal plate 10 does not have a high heat radiation properties in direct contact with a
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`whole surface of the bottom surface portion of a case.
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`A newly introduced prior art Ursch discloses a plate 18 made of metal that is in contact
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`with non—metal body attached to a heat source i.e., coil [Col. 2, Lines 40—60, Fig. 1].
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`It would have been obvious to one having ordinary skill in the art at the time the
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`invention was made to use a metal plate in contact with a non—metal surface as taught by Ursch
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`to the case of Okamoto with the resin material of Sako so as to provide a good dissipating means
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`and drawing heat from an inductor encapsulated/separated by insulation material.
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`With respect to the adhesive, the Applicant previously argued that Kato merely discloses
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`that application ofw or the like to the bottom face of the heatsink 70 or the surface of
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`the cooling base 100. This creates a coating film that adheres the heatsink 70 to the cooling
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`base 100. The Applicant asserts that one of ordinary skill in the art would not understand Kato to
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`teach or suggest a “heat radiating adhesive that fills a gag generated between the bottom surface
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`Qortion 0f the case and the metal Qlate”.
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`The Examiner disagrees. The Applicant has already admitted above that Kato discloses
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`this “coating film that adheres the heatsink 70”. Kato discloses this adhesive that is used with
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`

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`Application/Control Number: 14/388,448
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`Page 8
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`Art Unit: 2837
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`heatsink 70 has excellent heat conductivity (a sheet—like heat conductive epoxy adhesive)
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`[Paragraph 0271, 0274].
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure. Please refer to form PTO—892.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to J OSELITO BAISA Whose telephone number is (571)272—7132.
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`The examiner can normally be reached on M—F 5:30 am to 2:00 pm.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Elvin Enad can be reached on (571) 272— 1990. The fax phone number for the
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`organization Where this application or proceeding is assigned is 571—273—8300.
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`
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`
`J OSELITO BAISA
`Examiner
`
`

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`Application/Control Number: 14/388,448
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`Page 9
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`Art Unit: 2837
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`Art Unit 2837
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`/J. B./
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`Examiner, Art Unit 2837
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`/A1exander Talpalatski/
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`Primary Examiner, Art Unit 2837
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`