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
`
`17/377,832
`
`07/16/2021
`
`Bryan LOCHMAN
`
`TER-O90CPC1/1 10853-5090
`
`1162
`
`MO
`
`ee
`
`USLLP
`
`MORGAN, LEWIS & BOCKIUS LLP (BO)
`2222 MarketStreet
`Philadelphia, PA 19103
`
`VAN ROY, TOD THOMAS
`
`ART UNIT
`
`2828
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/20/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`judith.troilo @ morganlewis.com
`phpatentcorrespondence@ morganlewis.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/377,832
`Examiner
`TOD T VAN ROY
`
`Applicant(s)
`LOCHMAN etal.
`Art Unit
`AIA (FITF) Status
`2828
`Yes
`
`-- The MAILING DATEof this 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 07/16/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 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)\0) 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.
`
`Disposition of Claims*
`41-62 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`(J) Claim(s)__ is/are allowed.
`Claim(s) 41-59 and 61-62 is/are rejected.
`Claim(s) 60 is/are objectedto.
`1) 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)C) The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 07/16/2021 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)0) 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)C) All
`1.2 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 receivedin 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 07/16/2021.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231030
`
`

`

`Application/Control Number: 17/377,832
`Art Unit: 2828
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA 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.
`
`Priority
`
`Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35
`
`U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more
`
`conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) or under 35 U.S.C.
`
`120, 121, 365(c), or 386(c) as follows:
`
`The later-filed application must be an application for a patent for an invention whichis also
`
`disclosed in the prior application (the parent or original nonprovisional application or provisional
`
`application). The disclosure of the invention in the parent application and in the later-filed application
`
`must be sufficient to comply with the requirementsof 35 U.S.C. 112(a) or the first paragraph of pre-AlA
`
`35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance
`
`Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
`
`The disclosure of the prior-filed application, Application No. 15627917, fails to provide adequate
`
`support or enablementin the manner provided by 35 U.S.C. 112(a) or pre-AlA 35 U.S.C. 112,first
`
`paragraph for one or moreclaims of this application.
`
`Claim 41 of the current application outlines a particular double recessed bottom anode cooler
`
`structure and a top anode cooler having a structure that that only partially overlaps with the bottom
`
`anode cooler. The priority application does not support or enable this structure.
`
`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
`
`

`

`Application/Control Number: 17/377,832
`Art Unit: 2828
`
`Page 3
`
`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 underthe first inventor tofile
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146et 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 |.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 befiled after final for consideration. See MPEP §§
`
`706.07(e) and 714.13.
`
`

`

`Application/Control Number: 17/377,832
`Art Unit: 2828
`
`Page 4
`
`The USPTOInternet website contains terminal disclaimer forms which may be used. Pleasevisit
`
`www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed
`
`determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A
`
`web-based eTerminal Disclaimer maybefilled out completely online using web-screens. An eTerminal
`
`Disclaimer that meetsall requirements is auto-processed and approved immediately upon submission.
`
`For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-
`
`online/eterminal-disclaimer.
`
`Claims 41-46, 49-59, 61 and 62 are rejected on the ground of nonstatutory double patenting as
`
`being unpatentable over claims 1-7, 15-20, 22 and 23 of U.S. Patent No. 11095091. Althoughthe claims
`
`at issue are notidentical, they are not patentably distinct from each other because the claims of the
`
`patent are more detailed than thoseof the instant application.
`
`The following claims correspond:
`
`Patent
`
`Application
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`15
`
`16
`
`17
`
`18
`
`41-43, 45, 46, 50
`
`50
`
`52
`
`53
`
`54
`
`55
`
`56
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`57
`
`58
`
`59
`
`61
`
`

`

`Application/Control Number: 17/377,832
`Art Unit: 2828
`
`Page 5
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`19
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`20
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`22
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`23
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`62
`
`51
`
`44
`
`49
`
`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 moreclaims particularly pointing out
`and distinctly 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-AlA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 44, 47 and 48 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
`
`paragraph,as being indefinite for failing to particularly point out and distinctly claim the subject matter
`
`which the inventor or a joint inventor (or for applications subject to pre-AlA 35 U.S.C. 112, the
`
`applicant), regards as the invention.
`
`The term “approximately”in claim 44 is a term which does not have a fixed meaning. The
`
`specification is not found to clearly define the term, making the scope of the claim unclear.
`
`For purposes of examination, the limitation will be understood to be +/- 10%.
`
`Claim 47 at line 4 first defines “a dispersive element” and again states “a dispersive element” at
`
`line 5. It is unclear if the second instanceis the same or a different element, making the meets and
`
`bounds of the claim unclear.
`
`For purposes of examination, the second instance will be read as “the dispersive element”.
`
`Claim 48 inherits the same issue via dependency.
`
`Claim Rejections - 35 USC § 103
`
`

`

`Application/Control Number: 17/377,832
`Art Unit: 2828
`
`Page 6
`
`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-AlA 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 of rejection if the prior art relied upon, and
`
`the rationale supporting the rejection, would be the same under eitherstatus.
`
`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 contentsofthe 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 presentin the application indicating obviousness or
`
`nonobviousness.
`
`Claim(s) 41, 45, 47-58 and 60-62 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Tayebati et al. (US 2019/0190232) in view of Hulburd et al. (US 5263536).
`
`With respect to claim 41, Tayebati teaches a laser package(fig.5b) comprising: a bottom anode
`
`cooler (fig.5b #510) having (i) a top surface (fig.5b top of #510), (ii) a bottom surface opposite the top
`
`surface (fig.5b bottom of #510), (iv) a top recess defined in the top surface (fig.5b area under #440
`
`wherefluid contacts), and (v) fluidly connecting the top recess, a plurality of hollow ports (fig.5b top of
`
`#460s) for forming jets of cooling fluid therethrough ([0059]), wherein the top surface of the bottom
`
`anode cooler comprises(a) a first portion surrounding the top recess(fig.5b area directly around top
`
`

`

`Application/Control Number: 17/377,832
`Art Unit: 2828
`
`Page 7
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`recess covered by #500/440), and (b) a second portion extending toward a rear side of the bottom
`
`anode cooler (fig.5b area on top of #510 to left of and not covered by #500, extending towardleft side
`
`which can be called rear side); and disposed above the bottom anode cooler, a top anode cooler (fig.5b
`
`#500/440) having(i) a top surface (fig.5b top of #500) and (ii) a bottom surface opposite the top surface
`
`(fig.5b bottom of #500/440), the bottom surface comprising an impingementsurface (fig.5b underside
`
`of #500/440) and an outer border surrounding the impingement surface (fig.5b area directly around top
`
`recess covered by #500/440), wherein (a) the outer border is coupled to the first portion of the bottom
`
`anode cooler (as seen in fig.5b, [0059]), and (b) the top anode cooler does not overlie the second
`
`portion of the top surface of the bottom anode cooler(fig.5b as defined above), whereby cooling
`
`fluid introduced into the bottom anode cooler and jetted through the ports strikes the
`
`impingement surface of the top anode cooler (fig.5b see arrows). Tayebati does not specify the
`
`impingement surface has a non-planar pattern OR an entry recessfluidly connected to the ports and top
`
`recess. Hulburd teaches a similar cooling device for a laser (fig.1/9) which includes a non-planar fluid
`
`impingementsurface (fig.1 underside of #8) as well as an entry recess(fig.1 underside of #4 with #16)
`
`fluidly connected to the ports(fig.1 ports above entry recess) and top recess(fig.1/5 space between
`
`ports and impingementsurface). It would have been obvious to one of ordinary skill in the art before the
`
`filing of the instant application to make use of the non-planar impingement type surface of Hulburd on
`
`the impingement surface of Tayebati in order to increase heat transfer by increasing surface area
`
`(Hulburd, col.2 lines 11-12) as well as to utilize an entry recess to connect the ports and top recess as
`
`taught by Hulburd in order to provide a common channel to supply coolant to the ports.
`
`With respect to claim 45, Tayebati teaches the second portion is coplanar with thefirst portion
`
`(as defined in claim 1 rejection above and seen in the cross-section offig.5b).
`
`With respect to claim 47, Tayebati teaches disposed over the top anode cooler, a beam emitter
`
`configured to emit a plurality of beams (fig.6 #615, beams from #610s); focusing optics for focusing the
`
`

`

`Application/Control Number: 17/377,832
`Art Unit: 2828
`
`Page 8
`
`plurality of beams (fig. #625) toward a dispersive element(fig.6 #635); a dispersive element for receiving
`
`and dispersing the received beams (fig. #635); and a partially reflective output coupler positioned to
`
`receive the dispersed beams, transmit a portion of the dispersed beams therethrough as an output
`
`beam, and reflect a second portion of the dispersed beams back toward the dispersive element (fig.6
`
`#640, [0061]), whereby the cooling fluid striking the impingement surface of the top anode cooler cools
`
`the beam emitter during operation thereof ([0061], fig.1-5).
`
`With respect to claim 48, Tayebati teaches the dispersive element comprises a diffraction
`
`grating ([0061)).
`
`With respect to claim 49, Tayebati teaches both the top anode cooler and the bottom anode
`
`cooler are electrically insulating ([0059] based on eachbeingfully diamond coated).
`
`With respect to claim 50, Tayebati teaches at least a portion of at least one of the bottom anode
`
`cooler or the top anode cooler comprises at least one of copper, aluminum, stainless steel, CuW
`
`([0006]), tungsten, WC, alumina, mullite, diamond,or SiC.
`
`With respect to claim 51, Tayebati teaches the device outlined above, but does not teach the
`
`bottom anode cooler comprises alumina and the top anode cooler comprises SiC. Use of both AIN and
`
`SiC is well knownin the art to be used with laser cooling apparatuses. Therefore, it would have been
`
`obvious to one of ordinaryskill in the art at the time the application was filed to make the bottom anode
`
`cooler of AIN and the top anode cooler ofSiC, since it has been held to be within the general skill of a
`
`worker in the art to select a known material on the basis ofits suitability for the intended use as a
`
`matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
`
`With respect to claim 52, Tayebati, as modified, teaches the non-planar pattern comprises a
`
`plurality of raised features (as seen in Hulburdfig.1).
`
`With respect to claim 53, Tayebati teaches the bottom anode cooler defines a plurality of raised
`
`struts (fig.5b portions between gaps #460) disposed between openingsof the ports.
`
`

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`Application/Control Number: 17/377,832
`Art Unit: 2828
`
`Page 9
`
`With respect to claim 54, Tayebati teaches a cathode cooler (fig.1 #115) (i) disposed over the
`
`top anode cooler (#115 understood to be over the laser #105 and the structurein fig.5b as
`
`demonstratedin fig.3), wherein a portion of the cathode cooler overhangs and does not contact the top
`
`surface of the top anode cooler (fig.1 spatially separated by the laser but full width of lower fluid based
`
`heatsink).
`
`With respect to claim 55, Tayebati teaches the cathode cooler is not configured for the flow of
`
`cooling fluid therethrough (fig.1 no fluid taught in #115).
`
`With respect to claim 56, Tayebati teaches the top anode cooler is not configured for the flow of
`
`cooling fluid therethrough (fig.5b #500/440 no fluid taught therein).
`
`With respect to claim 58, Tayebati, as modified, teaches the device outlined above, but does not
`
`teach the bottom anode cooler defines therewithin an exit channel fluidly connecting the top recess
`
`with an exit aperture defined in the bottom surface of the bottom anode cooler and spaced away from
`
`the entry recess. Hulburd further teaches an exit channel (fig.5/6 #23) fluidly connecting the top recess
`
`(fig.6 as seen at left/right arrows) with an exit aperture defined in the bottom surface of the bottom
`
`anode cooler (fig.5/6 #18) and spaced away from the entry recess. It would have been obvious to one of
`
`ordinaryskill in the art before the filing of the instant application to make use of the exit channel linking
`
`the top recess and an exit aperture in the device of Tayebati as demonstrated by Hulburd in order to
`
`efficiently cycle warm fluid out and cool fluid in to the laser heatsink.
`
`With respect to claim 59, Tayebati teaches an entire portion of the bottom surface of the
`
`bottom anodecooler extending between the entry recess and the exit aperture (as modified above) is
`
`planar and parallel to the second portion of the top surface of the bottom anode cooler (as seen in
`
`fig.5b with identified bottom surface and second portion of top surface of anode cooler).
`
`

`

`Application/Control Number: 17/377,832
`Art Unit: 2828
`
`Page 10
`
`With respect to claim 61, Tayebati teaches an attachment material attaching the outer border of
`
`the bottom surface of the top anodecooler to the first portion of the top surface of the bottom anode
`
`cooler (as outlined above and [0059]).
`
`With respect to claim 62, Tayebati teaches the attachment material comprises at least one of
`
`adhesive, solder or a brazing material ([0059]).
`
`Claim 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tayebati and Hulburd in
`
`view of Wu (US 2010/0118902).
`
`With respect to claim 46, Tayebati, as modified, teaches the device outlined above, but does not
`
`teach the top anode cooler non-planar pattern protruding into the top recess of the bottom anode
`
`cooler. Wu demonstratesa liquid cooled laser (fig.4) which includes a liquid cooled bottom anode cooler
`
`with a recess(fig.4 #415, ‘female’ connection) which accepts a top anode cooler with protrusions (fig.4
`
`#423, ‘male’ connection). It would have been obvious to one of ordinaryskill in the art before the filing
`
`of the instant application to protrude the non-planar pattern of Tayebati and Hulburd into the top
`
`recess, as Wu has demonstrated this configuration to be functionally equivalent as well as providing a
`
`closer location to the jetted area to cool the protrusions.
`
`Allowable Subject Matter
`
`Claim 60 is objected to as being dependent upon a rejected base claim, but would be allowable
`
`if rewritten in independent form includingall of the limitations of the base claim and anyintervening
`
`claims.
`
`The prior art was not found to teach or suggest the particular exit channel details in addition to
`
`the details outlined in claims 41 and 58.
`
`

`

`Application/Control Number: 17/377,832
`Art Unit: 2828
`
`Page 11
`
`Conclusion
`
`The prior art made of record and not relied upon is considered pertinent to applicant's
`
`disclosure.
`
`Please see the attached PTO-892 form for a list of related references.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to TOD THOMAS VAN ROY whosetelephone number is (571)272-8447. The
`
`examiner can normally be reached on M-F: 8AM-430PM.
`
`Examiner interviewsare available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to
`
`USOTS.ge
`
`use the USPTO AutomatedInterview Request (AIR) at Sits:
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor,
`
`Jessica Manno can be reached on 571-272-2339. The fax phone number for the organization where
`
`this application or proceedingis 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 may be
`
`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 hf
`
` soy. Should you have questions on accessto the Private PAIR system, contact the
`
`Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would 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.
`
`/TOD T VAN ROY/
`Primary Examiner, Art Unit 2828
`
`