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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
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
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`14/388,448
`
`09/26/2014
`
`Atsushi YAMASHIMA
`
`WASHB—53246
`
`6452
`
`01’1““ —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
`
`01/14/2016
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patdocket @ pearne.c0m
`jcholley @pearne.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`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
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 10/14/15.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:| This action is non-final.
`2a)IZ| 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.
`
`3) D Interview Summary (PT0_413)
`1) D 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)
`
`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 20160108
`
`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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`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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`or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`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).
`
`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)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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`
`
`

`

`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], Wilson [U.S. Pat. No.
`
`4009423] and Kato et al. [2011/0156853A1].
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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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`Wilson discloses a metal plate 10 that includes a second fastening section (e. g., screw
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`hole) that can be fastened with a fastening section and that is fixed so as to be in contact with a
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`whole surface of a bottom surface portion of a case (e. g., reactor 16 in a case) [Col. 3, Lines 25—
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`35, Fig. l-2].
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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 plate for mounting the case as taught by Wilson to the reactor of
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`Okamoto to provide heat dissipation for the reactor.
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`Kato discloses a heat radiating adhesive that fills a gap generated between the bottom
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`surface portion of a case and the metal plate (e. g., heatsink with cooling base) [Paragraph 0271,
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`0274] .
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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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`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 heat radiating adhesive as taught by Kato to the reactor of Okamoto to provide
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`an excellent adhesion between the case and the cooling base.
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`Regarding claim 2, Okamoto in view of Wilson discloses the first and the second
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`fastening sections respectively include circular holes having center positions that are identical to
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`each other when the case is fastened to the metal plate (e. g., plate 10 of Wilson).
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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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`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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`

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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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`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, Wilson and Kato 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, Wilson and Sato 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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`taught by Sato and to be applied to the first and second fastening section of Okamoto in view of
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`Sako, Wilson and Kato to have an efficient heat dissipation from the reactor.
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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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`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, Wilson and Kato 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, Wilson and Kato 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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`The specific shape of the core structure (e.g., toroidal core that results in having a
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`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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`reactor of Okamoto in View of Sako, Wilson and Kato 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 1—5 have been considered but are not
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`persuasive.
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`

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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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`Claim 1 is rejected under pre—AIA 35 U.S.C. 103(a) as being unpatentable over Okamoto
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`[U.S. Pat. No. 8102228] in view of Sako et al. [JP 63276846], Wilson [U.S. Pat. No. 4009423]
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`and Kato et al. [2011/0156853A1].
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`In the remarks, dated 14 October 2015, the Applicant argues that in the prior art Wilson,
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`the metal plate 10 contacts the reactor 16 directly, and the metal Qlate 10 serves as an electric
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`M through which electric current flows to or from reactors 16. Thus, if such a metal plate was
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`“fixed so as to be in contact with a whole surface of the bottom surface portion of the case”, the
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`case would also serve as an electric bus, flowing with current. Because such a combination
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`would yield a dangerous result, one of ordinary skill in the art would not have been motivated to
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`combine Wilson with Okamoto.
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`The Applicant insists that the use of a metal plate as taught by Wilson would contradict
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`the use of the claimed potting resin because the potting resin provides insulation whereas the
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`result of the metal Qlate is to make the case electrically conductive. As such, one of ordinary skill
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`in the art would not have been motivated to combine Wilson with Okamoto and the other prior
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`art references.
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`The Examiner disagrees. The metal plate 10 of Wilson is designed primarily as a “heat
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`sink”, column 3, lines 20—22. The Applicant did not mention that the metal plate 10 of Wilson is
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`mainly a mounting plate or heatsink for a power supply, reactor 16 in particular. The prior art
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`Okamoto discloses a reactor apparatus comprising a coil 105, a case101 in a cylindrical shape, a
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`bottom surface portion, and one open end, and a firstfastening section 23 extending outward
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`from an outer wall of the side surface portion that houses the coil 105. The reference Sako
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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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`discloses a reactor case can be made of resin. Wilson provides the metal plate Where the
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`apparatus of Okamoto can be mounted.
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`With respect to the adhesive, the Applicant argues that Kato merely discloses
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`that application of grease 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 of the case and the metal plate”.
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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 7 ”. Kato discloses this adhesive that is used With
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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 applicant’s amendment has been fully considered. Accordingly, THIS ACTION IS
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`MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy
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`as set forth in 37 CFR l.l36(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed Within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE—MONTH shortened statutory period, then the shortened statutory period
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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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`Will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR
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`1.136(a) Will be calculated from the mailing date of the advisory action. In no event, however,
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`Will the statutory period for reply expire later than SIX MONTHS from the date of this final
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`action.
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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
`
`Art Unit 2837
`
`/J. B./
`
`Examiner, Art Unit 2837
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`

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`Application/Control Number: 14/388,448
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`Page 10
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`Art Unit: 2837
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`/A1exander Talpalatski/
`
`Primary Examiner, Art Unit 2837
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`