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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`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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`14/388,448
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`09/26/2014
`
`Atsushi YAMASHIMA
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`WASHB—53246
`
`6452
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`“’30’2016 —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`BAISA, JOSELITO SASIS
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
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`PAPER NUMBER
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`ART UNIT
`2837
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`NOTIFICATION DATE
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`DELIVERY MODE
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`11/30/2016
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`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):
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`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.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`JOSELITO BAISA [SENS 2837
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`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 CFR1. 136( a).
`after SIX () 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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`Status
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`1)IZI Responsive to communication(s) filed on 9/7/16.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:l This action is non-final.
`2a)|Z| 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)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) gas/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
`7)|Z| CIaim(s)_1-5is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
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`are subject to restriction and/or election requirement.
`9)I:I 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
`hit
`:/'I’vaIW.usnI‘.0. ovI’ atentS/init events/
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`
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
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`Application Papers
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`10)I:l The specification is objected to by the Examiner.
`11)I:l 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
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`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:l All
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`b)|:l Some” c)I:l None of the:
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`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| 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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`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20161118
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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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`Drawings
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`The drawings are objected to under 37 CFR 1.83(a). The drawings must show every
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`feature of the invention specified in the claims. Therefore, the “base having a cooling
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`mechanism” of claim 1 must be shown or the feature(s) canceled from the claim(s). No new
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`matter should be entered.
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`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to
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`the Office action to avoid abandonment of the application. Any amended replacement drawing
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`sheet should include all of the figures appearing on the immediate prior version of the sheet,
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`even if only one figure is being amended. The figure or figure number of an amended drawing
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`should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure
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`must be removed from the replacement sheet, and where necessary, the remaining figures must
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`be renumbered and appropriate changes made to the brief description of the several views of the
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`drawings for consistency. Additional replacement sheets may be necessary to show the
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`renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an
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`application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet”
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`pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will
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`be notified and informed of any required corrective action in the next Office action. The
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`objection to the drawings will not be held in abeyance.
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`Claim Rejections - 35 USC § 103
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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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`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], Ursch [U.S. Pat. No. 2992405] and Walz [U.S. Pat. No. 7164584].
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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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`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 1—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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`Application/Control Number: 14/388,448
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`Page 4
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`Art Unit: 2837
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`fastening section that is fixed so as to be in contact with a whole surface of the bottom surface
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`portion of the case and that is installed on a base having a cooling mechanism; a heat radiating
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`adhesive that fills a gap generated between the bottom surface portion of the case and the metal
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`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 (e. g., grease,
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`Paragraph 0274) that fills a gap generated between the bottom surface portion of a case 40 (flush
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`with heatsink 70) and the plate 100 [Paragraph 0271—0277].
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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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`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. l].
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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 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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`Walz discloses a base 44 having a cooling mechanism [Col. 3, Lines 20—30, Fig. 2 and 3].
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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 base having a cooling mechanism as taught by Walz to the structure
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`Okamoto in view of Kato to provide an efficient way of dissipating heat from the reactor.
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`Regarding claim 2, Kato discloses the heat radiating adhesive (e. g., grease disclosed in
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`Paragraph 0274) attaches the bottom surface portion of the case 40 (flush with heatsink 70) and
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`the plate 100 to each other [Paragraph 0274—0277].
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`Regarding claim 3, Kato discloses that the heat is conducted from the case 40 to the metal
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`plate 100 through the heat radiating adhesive (e.g., grease) when the bottom portion of the case
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`warps (i.e., grease flexes with the movement) [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, Ursch and Walz as applied to claim 1 above, and further
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`in View of Sato [U.S. Pub. No. 2010/0209314A1].
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`Regarding claim 4, Okamoto discloses the first fastening section 23 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; the first fastening section 23 is formed of a leg—like shape protruding and extending from
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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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`an outer edge of the bottom surface portion in parallel to a horizontal surface of the bottom
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`surface portion of the caselOl [see Figure 2].
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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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`Okamoto in view of Sako, Kato, Ursch and Walz 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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`Application/Control Number: 14/388,448
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`Page 7
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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 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, Kato, Ursch and Walz to form a leg—like shape protruding and extending from an outer
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`edge of the metal plate in parallel (e.g., horizontal portions) to a horizontal surface of the metal
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`plate to 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, Ursch and Walz as applied to claim 1 above, and further
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`in View of Fastner et al. [U.S. Pat. No. 3210701].
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`Regarding claim 5, Okamoto in view of Sako, Kato, Ursch and Walz 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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`Application/Control Number: 14/388,448
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`Page 8
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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 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, Kato, Ursch and Walz 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 moot in
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`view of the new ground(s) of rejection.
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`Walz discloses a reactor with a base 44 having a cooling mechanism. It would have been
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`obvious to one having ordinary skill in the art at the time the invention was made to use a base
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`having a cooling mechanism as taught by Walz to the structure Okamoto in view of Kato to
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`provide an efficient way of dissipating heat from the reactor.
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`The Applicant argues that the plate 18 disclosed in Ursch configures a part of the case
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`(cover 12) and that Ursch does not disclose that the plate 18 is fixed so as to be in contact with a
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`whole surface of the bottom surface portion of 12.
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`The Examiner disagrees. Prior art Ursch in column 2, lines 69—70 discloses the cover 12
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`is in thermal contact with plate 18. The reference Kato discloses plate 100 in contact with a
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`whole bottom surface portion of case 40 except that plate is not disclosed to be of metal.
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`With respect to the adhesive, the Applicant argues that Kato does not discloses
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`that application ofw to the bottom face of the heatsink 70 and the surface of the plate 100.
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`The Examiner disagrees. It is clearly stated in Paragraph 0274 that the application of the grease
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`or the like serves as an excellent adhesion between the heatsink 70, which is flushed with the
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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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`case 40, and the plate 100. Therefore, Kato teaches a “heat radiating adhesive that fills a gap
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`generated between the bottom surface portion of the case and the metal plate”.
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`Conclusion
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`The applicant’s amendment has been fially 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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`Will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR
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`l.l36(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 JOSELITO 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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`Application/Control Number: 14/388,448
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`Page 10
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`Art Unit: 2837
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`J OSELITO BAISA
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`Examiner
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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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`/Alexander Talpalatski/
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`Primary Examiner, Art Unit 2837
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`