www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/235,224
`
`12/28/2018
`
`Akio INOUE
`
`YKIPPO10S5US
`
`5771
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`VORTMAN, ANATOLY
`
`2835
`
`12/18/2019
`
`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.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-12 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Claim(s) 1-7 and 9-12 is/are allowed.
`£) Claim(s)
`is/are rejected.
`Claim(s) 8 is/are objectedto.
`C1) Claim(s
`are subject to restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 28 December 2018 is/are: a) accepted or b)() 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).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a)) All
`1.4) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been received in this National Stage
`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.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20191211
`
`Application No.
`Applicant(s)
`16/235,224
`INOUE etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ANATOLY VORTMAN
`2835
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 28 December 2018 (New application).
`CO) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)(J This action is FINAL. 2b))This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\(Z 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/235,224
`Art Unit: 2835
`
`Page 2
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`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthe
`
`first inventor to file provisions of the AJA.
`
`Claim Objections
`
`2.
`
`Claim 11 is objected to because of the following informalities: redundant “according to”
`
`recited in line 2 of the claim. Appropriate correction is required.
`
`Applicant’s cooperation is hereby requested in correcting of any remaining informalities
`
`of which Applicant may becomeawarein the claims.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—Thespecification shall conclude with one or more claims particularly pointing
`out anddistinctly 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 claimsparticularly pointing out and distinctly
`claiming the subject matter which the applicant regardsas his invention.
`
`4.
`
`Claim 5 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
`
`

`

`Application/Control Number: 16/235,224
`Art Unit: 2835
`
`Page 3
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`matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the
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`invention.
`
`The terms “large-sized” in claim 5 is a relative term which renders the claim indefinite.
`
`The term is not defined by the claim, the specification does not provide a standard for
`
`ascertaining the requisite degree, and one ofordinary skill in the art would not be reasonably
`
`apprised of the scope of the invention (1.e., how large, relative to what, etc. ?)
`
`Claim Rejections - 35 USC § 102/103
`
`5.
`
`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 for the rejection will not be considered a new ground ofrejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`6.
`
`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 madein this Office action:
`
`A personshall 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.
`
`7.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejectionsset forth in this Office action:
`
`A patent for a claimed invention maynot 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 obviousbefore 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 mannerin which the invention was made.
`
`

`

`Application/Control Number: 16/235,224
`Art Unit: 2835
`
`Page 4
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`8.
`
`Claims 1-7 and 9-12, are rejected under 35 U.S.C. 102(a)(1) as anticipated byor, in the
`
`alternative, under 35 U.S.C. 103 as obvious over US 2013/0250521 to Kawai et al. (Kawai), or
`
`yet alternatively, over Kawai in view of US 2003/0026077 to Wennemuth et al. (Wennemuth)
`
`and US 2016/0021789 to Negishi etal. (Negishi).
`
`Regarding claims 1 and 2, Kawai disclosed (Fig. 1-4) a power supply device that converts
`
`input powerto generate output power(inherently, since the device is an electronic control
`
`module, see par. [0001], [0002], etc.), the device comprising: a first member(13) including a
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`circuit board placement surface((13a), (25), and remaining inner surfaces of the first member
`
`(13)); a circuit board (11) with a side placed onthe circuit board placement surface of thefirst
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`member; a second member(12) that covers anotherside of the circuit board opposite in a
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`thickness direction to the side of the circuit board placed on the circuit board placementsurface;
`
`and a plurality of electronic components mounted on the anotherside of the circuit board,
`
`wherein the plurality of electronic components (14) include at least one high-height component
`
`((14b), Fig. 4) and at least one low-height component ((14b), Fig. 4) having a height lower than
`
`the high-height componentrelative to the anotherside of the circuit board (Fig. 4), the second
`
`memberincludesa flat reference surface ((20a), Fig. 4) substantially perpendicular to the
`
`thickness direction, at least one concave portion (22) recessed from the reference surface away
`
`from the anotherside of the circuit board in the thickness direction, and at least one convex
`
`portion (21) projecting from the reference surface toward the another side of the circuit board in
`
`the thickness direction, the at least one high-height component (14b) includesat least one high-
`
`height thermally connecting component(33), a tip end portion of which is thermally connected
`
`to a bottom surface (21) of the concave portion (Fig. 4), and the at least one low-height
`
`component (14b) includes at least one low-height thermally connecting component(33), a tip
`
`

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`Application/Control Number: 16/235,224
`Art Unit: 2835
`
`Page 5
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`end portion of which is thermally connected to a tip end surface (21a) of the convex portion (21),
`
`(Fig. 4).
`
`Alternatively, since a main concept of bending(i.e., of changing a shape of) a wall of a
`
`housing(i.e., of the second [covering] member in Kawaiin order to accommodate different
`
`heights of the electronic devices to be cooled) has been taught by Kawai, then creating concave
`
`and convex portions (and vise versa) in said second member of Kawai would have been obvious
`
`thing to do to a person ofthe ordinary skill in the related arts before the effective filing date of
`
`the claimed invention, in order to accommodate various heights of the electronic components to
`
`be cooled and to provide effective thermal coupling therebetween, since it has been held that a
`
`merereversal of the essential working parts (i.e., concave vs. convex) of a device involves only
`
`routine skill in the art. See Jn re Einstein, 8 USPQ 167; fa re Gazda, 219 F.2d 449, 104 LTISPO
`
`400 GOOPA 19553. Also, the rational that a particular shape(i.e., of the second [covering]
`
`memberin Kawai)is a design choice maybe found in legal precedent. See In re Dailey, 357
`
`F.2d669, 149 USPQ 47 (CCPA 1966).
`
`Yot allernatively, Wennerauth teaches (Fig. 1} a cooling arrangerment, wherein the
`
`concave and convex portions of a cover (11) are used to achieve good thermal coupling between
`
`the components (4, 7} on a circuit board (3) and said cover (11), in order to provide offective
`
`cooling (par. (00235).
`
`Purther, Negishi also teaches (Pig. 1, 3} a cooling arrangement, wherein the concave (17)
`
`and convex (16) portions of a cover (2) are used in order to accommodate different heights of the
`
`electronic components (3) disposed on a circuit board (6) and to achieve goadthermal coupling
`
`between said cornponents (5) and said cover (2} so as to provide effective cooling thereof (par.
`
`fOOSOT - [O32 5).
`
`

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`Application/Control Number: 16/235,224
`Art Unit: 2835
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`Page 6
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`Therefore, it would have been obvious to a person of the ordinary skill imin the related
`
`arts before the effective filing date of the claimed invention to have formed concave and convex
`
`portions in said second memberof Kawai, as taught by the combined teachings of Wernernuth
`
`and Negisht, in order to accommodate different heights of the electronic components disposed on
`
`the circuit board and to achieve good thermal coupling between said components and said second
`
`{coverme) nicmber, 50 as to provide effective cooling thereof (see Wennemiuth, par. (00231 and
`
`Negishi, par. (Q050] - [O0821). All claimed elements were knownin the prior art and one skilled
`
`in the art could have combined / modified the elements as claimed by known methods with no
`
`changein their respective functions, and the combination / modification would have yielded
`
`predictable results to one of ordinary skill in the art at the time of the invention. See KSR
`
`
`InternationalCo. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
`
`Regarding claim 3, it would have been obvious to a person of the ordinary skiff in in the
`
`related arts before the effective filing date of the claimed invention to have selected any desired
`
`thicknesses for said first and second memberin Kawai, including wherein the thickness of the
`
`first memberin the thickness direction is larger than the thickness of the second memberas
`
`claimed, in order to achieve desired thermal, mechanical, and electrical characteristics of the
`
`device, while not exceeding targeted production costs, since it has been held that where the
`
`general conditions of a claim are disclosed in the prior art, discovering the optimum or workable
`
`ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Also, a changein the
`
`size is generally recognized as being within the level of ordinary skill in the art. See Jn re Rose,
`
`105 USPQ 237 (CCPA 1955).
`
`Regarding claim 4, Kawai teaches various heights of the electronic components (14b)
`
`(Fig. 1, 3, 4), wherein Fig. 1 depicts at least three different types of said electronic components
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`

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`Art Unit: 2835
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`Page 7
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`(14b) having different heights. However, Kawai does not provide explicit teaching that there is
`
`at least one middle-height electronic componentis provided having a heightrelative to the
`
`another side of the circuit board lower than the high-height component and higher than the low-
`
`height component, andthe at least one middle-height componentincludeat least one middle-
`
`height thermally connecting component, a tip end portion of which is thermally connected to the
`
`reference surface.
`
`However, since as explained abovein relation to claims 1-3, Kawai explicitly teaches two
`
`types of the electronic components (14b) to be cooled having twodifferent heights (e.g., see Fig.
`
`4), it would have been obvious to a person of the ordinary skill in in the related arts before the
`
`effective filing date of the claimed invention to have adapt the design of Kawai as modified
`
`above to accommodateat least three different types of the electronic components, in order to
`
`provide effective cooling therefor, including wherein thereis at least one middle-height
`
`electronic componenthaving a heightrelative to the another side of the circuit board lower than
`
`the high-height componentand higher than the low-height component, andthe at least one
`
`middle-height componentinclude at least one middle-height thermally connecting component, a
`
`tip end portion of which is thermally connected to the reference surface as claimed, in order to
`
`provide effective thermal coupling and cooling for said middle-height electronic component,
`
`since a changein the size is generally recognized as being within the level of ordinary skill in the
`
`art. See In re Rose, 105 USPQ 237 (CCPA 1955).
`
`Regarding claim 5, as best understood, Kawai a modified disclosed (Fig. 3 and 4): at least
`
`one of: including a large-sized concave portion (22), a bottom of which (21a) is thermally
`
`connected to respective tip end portions of a plurality of the high-height thermally connecting
`
`components (33), in the at least one concave portion; and including a large-sized convex portion
`
`

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`Application/Control Number: 16/235,224
`Art Unit: 2835
`
`Page 8
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`(21), a tip end surface (21a) of which is thermally connected to respective tip end surfaces of a
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`plurality of the low-height thermally connecting components (33), in the at least one convex
`
`portion,is satisfied. Alternatively, providing a single large-sized concave (convex) portion to
`
`contact a plurality of the respective tip end surfaces of the plurality of thermally connecting
`
`components(i.e., instead of the single concave (convex) portion contacting a single tip end
`
`surface of a single thermally connecting component) would have been an obvious thing to do for
`
`a person of the ordinary skill in the related arts, in order to reduce production costs(i.e., forming
`
`a single concave (convex) portion involves a single productionstep [e.g., a single stampingstep,
`
`etc.] instead of multiple production steps [e.g., multiple stamping steps]), since it has been held
`
`that forming in one piece an article which has formerly been formed in twopieces(i.e., a single
`
`concave [convex] portion instead of multiple ones) and put together involves only routine skill in
`
`the art. See Howard v. Detroit Stove Works, 150 U.S. 164 (1893); f# re Larson, 340 F.2d 865,
`
`968, 144 USPO 347, 349 (COPA 1965).
`
`Regarding claims 6 and 7, Kawai a modified disclosed (Fig. 6) that the second member
`
`(12) inchides a plurality of radiator fins (20c) that arc integrally formed, wherein the plurality of
`
`racHator fins (20c} extending linearly in parallel in an extending direction, the plurality of
`
`radiator fins (20c) being aligned in an alignment direction perpendicular to both of the extending
`
`dhrection of the radiator fins and the thickness direction, there exists a plane (Le., the plane of the
`
`portion (21) or (20a) on Fig. 6) including the thickness direction and the alignment direction, the
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`plorahity of rachator fins being substanhally symmetrical with respect to the plane, and the
`
`second member (12) 1s configured with sheet metal (Pig. 1, 2).
`
`However, Kawai dui not teach that the first mernber (13) includes a plurality of radiators
`
`fins.
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`

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`Application/Control Number: 16/235,224
`Art Unit: 2835
`
`Page 9
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`it would have been obvious to a person of the ordinary skill in in the related arts before
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`the effective filing date of the claimed invention to have provided the first member (133 of Kawai
`
`wilh fins (i.e., analogously to the second member(Fig. 6)), in order to enhance heatdissipation,
`
`since such a modification would have involved a mere duplication of the essential working
`
`components of the device(i.e., of the fins), or alternatively, a mere repositioning of someof the
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`fins from the second memberto the first member, which is not inventive, since it has been held
`
`that mere duplication of the essential working parts of a device (i.e., of the fins) involves only
`
`routine skill in the art. See fn re Harza, 274 F.2d 669, 124 USP378 (COPA 1960) St Regis
`
`Paper Co. v. Bemis Co., 193 USPQ8. Also, it has been held that rearranging parts of an
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`invention(i.e., of the fins) involves only routine skill in the art. See In re Japikse, 86 USPQ 70;
`
`lave Ruble, 326 B2d 353, 188 USPO 7 CCCPA 1975).
`
`Regarding claim 9, Kawai as modified disclosed that the first member (13} 19 a deformed
`
`base member (Pig. | and 2).
`
`Regarding the limitations “a plastically deformed” and “extrusion molded”, these
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`lrmitahons directed to a method of making of the device. H has been held that even though the
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`claims are limited by and defined by the recited process, the determination of patentability of the
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`productis based on the productitself, and does not depend on its method of production. If the
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`product in the product-by-process claim is the same as or obvious from a productofthe prior art,
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`the claim is unpatentable even though the prior product was madeby a different process. In re
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`Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). It is the patentability of the product claimed and
`
`not of the recited process steps which mustbe established. Jn re Brown, 459 F.2d 531, 535, 173
`
`USPQ 685, 688 (CCPA 1972). It should also be noted that a “[p]roduct-by process claim,
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`although reciting subject matter of claim in terms of how it is made, is still product claim; it is
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`

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`Application/Control Number: 16/235,224
`Art Unit: 2835
`
`Page 10
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`patentability of product claimed andnotrecited process steps that must be established, in spite of
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`fact that claim mayrecite only process limitations”, In re Hirao and Sato, 190 USPQ 15 (Fed.
`
`Cir. 1976). The presence of process limitations on product claims, which product does not
`
`otherwise patentably distinguish over prior art, cannot impart patentability to the product. In re
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`Stephens, 145 USPQ 656 (CCPA 1965).
`
`Accordingly, said method of making limitations have not been given patentable weight.
`
`Regarding claim 10 , Kawai as modified disclosed (Fig. 4) the at least one concave
`
`portion (22) includesat least one further concave portion recessed from the bottom surface
`
`further away from the anotherside of the circuit board in the thickness direction, and there exists
`
`the high-height component(14b), at least a portion of which is contained in further concave
`
`portion (Fig. 4).
`
`Regarding claims 11 and 12, Kawai disclosed a moving body(1.e., a vehicle, par. [0002]),
`
`wherein the vehicle inherently comprises light sources(e.g., headlights, taillights, etc.). Further,
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`Kawai teachesthat the electronic control unit is for an automatic transmission or an engine (par.
`
`[0002]). However, Kawai did not explicitly teach that the power supply device(1.e., the
`
`electronic control unit) is for supplying powerto the light sources.
`
`it would have been obvious to a person of the ordinary skill in in the related arts before
`
`the effective filing date of the claimed invention to have adopted the electronic control unit of
`
`Kawai to supply power to the Hght sources of a vehicle G.e., to provide the housing with similar
`
`cooling arrangement for the electronic components of the power supply device ofthe light
`
`sources}, in order to achieve effective heat dissipation from said electronic components through
`
`the housing of the device. All claimed elements were knownin theprior art and one skilled in
`
`the art could have combined / modified the elements as claimed by known methods with no
`
`

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`Application/Control Number: 16/235,224
`Art Unit: 2835
`
`Page 11
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`changein their respective functions, and the combination / modification would have yielded
`
`predictable results to one of ordinary skill in the art at the time of the invention. See KSR
`
`
`InternationalCo. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
`
`Allowable Subject Matter
`
`9.
`
`Claim 8 is objected to as being dependent upon a rejected base claim, but would be
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`allowable if rewritten in independentform includingall of the limitations of the base claim and
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`any intervening claims.
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`10.
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`The following is a statement of reasonsfor the indication of allowable subject matter: the
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`limitations of claim 8 (“the first member includes an engaging projection portion projecting
`
`toward the second memberin the thickness direction and the second memberincludes a through
`
`hole, and the engaging projection portion includes a hole disposition part disposed within the
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`through hole, and an engaging part positionedcloserto a tip end side of the engaging projection
`
`portion than the hole disposition part, the engaging part having a shape incapable of passing
`
`through the through hole”) in combination with all of the limitations of the parent claim 1, are
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`believed to render the combined subject matter allowable overthe prior art of record, taken alone
`
`or in combination.
`
`Conclusion
`
`11.
`
`The additional documents madeof record and notrelied upon are considered pertinent to
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`Applicant's disclosure, because of the teachings of various cooling arrangements for electronic
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`

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`Application/Control Number: 16/235,224
`Art Unit: 2835
`
`Page 12
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`devices with heat conduction through the supports meansand / or housings thereof.
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`12.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANATOLY VORTMANwhosetelephone numberis (571)272-
`
`2047. The examiner can normally be reached on Monday-Thursday, between 10 am and 8:30
`
`pm. Examinerinterviews are available via telephone, in-person, and video conferencing using a
`
`USPTOsupplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request (AIR)at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Jayprakash N. Gandhi can be reached on 571-272-3740. The fax phone numberfor
`
`the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`maybe obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC)at 866-217-9197 (toll-free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/ANATOLY VORTMAN/
`Primary Examiner
`Art Unit 2835
`
`