Application No.: 13/269,234
`Attorney Docket No.: 10494.0003-01000
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`REMARKS
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`In the Office Action mailed on March 13, 2012(“Office Action”), claims 1-4, 6-9,
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`and 11-16 were rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent Publication
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`No. 2005/0069432 to Tomioka (“Tomioka”); claim 5 was rejected under 35 U.S.C. 103(a) as
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`being unpatentable over Tomioka in view of U.S. Patent Publication No. 2005/0069432 to Lee et
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`al. (“Lee”); claims 10, 17, 18, and 20 were rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Tomioka, in view of U.S. Patent No. 6,019,165 to Batchelder (“Batchelder”), and claim 19
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`wasrejected under 35 U.S.C. 103(a) as being unpatentable over Tomioka and Batchelder as
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`applied to claims 17, in view of Lee.
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`Applicant does not necessarily agree with the rejections in the Office Action.
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`Nevertheless, to advance prosecution, Applicant amends claim 1, and cancels claims 6 and 9.
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`These amendments find support in the originally filed specification and claims. Claims1-5, 7, 8,
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`and 10-20 are pending.
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`Record of Personal Interview under 37 C.F.R. § 1.133(b).
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`A telephone interview was conducted on Thursday, March 29, 2012 between a
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`representative of the Applicant, Biju Chandran, Examiner Emmanuel Duke, and SPE Frantz
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`Jules to discuss the Office Action. The Applicant and Applicant’s representative thank Examiner
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`Duke and SPE Jules for taking the time to discuss this Office Action. Prior to the interview,in
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`an email to the Examiner, the Applicant’s representative explained the differences between the
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`recited reservoir of independent claims 12 and 17, and the reservoir of Tomioka. During the
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`interview, the Examiner acknowledgedthe differences between independent claims 12 and 17
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`and Tomioka, but maintained that independent claim 1 does not include these differences. The
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`Application No.: 13/269,234
`Attorney Docket No.: 10494.0003-01000
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`amendments and remarksin this response substantially conform to the discussions during the
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`interview.
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`Amongthe pending claims, claims 1, 12, and 17 are independent.
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`Independent claim 12
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`Independentclaim 12 recites a cooling system for a computer system including, among
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`other features, a reservoir configured to be thermally coupledto a heat-generating component of
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`the computer system,the reservoir including “a thermal exchange chamberadaptedto be
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`positioned in thermal contact with the heat-generating component; [and] a separate pump
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`chambervertically spaced part from the thermal exchange chamber and coupled with the thermal
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`exchange chamberthrough one or more passages configured for fluid communication between
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`the pump chamberandthe thermal exchange chamber.” That is, independent claims 12 recites a
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`reservoir with a “pump chambervertically spaced part from the thermal exchange chamber.” In
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`the Office Action, independent claim 12 wasrejected as being anticipated by Tomioka. Office
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`Action, pg. 2.
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`Pump chamber
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`FIG.6 Thermal
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`exchange
`chamber
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`With referenceto FIGS. 4-7 (FIG. 6 reproduced above), Tomioka describes a pumpunit
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`60 of an electronic apparatus. Abstract. The pump unit 60 includes a housing 70. § [0039]. The
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`-9-
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`Application No.: 13/269,234
`Attorney Docket No.: 10494.0003-01000
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`bottom surface 72 of the housing 70 serves as a heat receiving surface that contacts a top surface
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`of a CPU 33. 4 [0039], [0050]. The housing 70 includes a centrally located pump chamber 77
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`that houses the impeller 101a of the pump,and a reserve tank 90 located radially outwardsofthe
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`pump chamber 77. §{][0043], [0044]. The pump chamber 77 andthe reserve tank 90 are
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`separated by a partition member 76 having fluid passages(first pipe 93, second pipe 94,and third
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`pipe 95) therethrough. §[0043], Il.12-16; §[0044]. In the Office Action,as illustrated in
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`annotated FIG. 6 of Tomioka above,the central chamber 77is interpreted as the “pump
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`chamber,” and the reserve tank 90is interpreted as the vertically spaced apart “thermal exchange
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`chamber.” See Office Action, pg. 5, Ins. 10-12; pg. 7, Ins. 24-26. However, as agreed upon
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`during the interview, these chambersare not vertically spaced apart as required by independent
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`claim 12.
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`“A claim is anticipated only if each and every elementas set forth in the claim is found,
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`either expressly or inherently described, in a single prior art reference.” M.P.E.P. 2131 quoting
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`Verdegaal Bros. v. Union Oil Co. ofCalifornia, 814 F. 2d 628, 631, 2 USPQ 2d 1051, 1053
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`(Fed. Cir. 1987). Tomioka does not expressly or inherently discloseat least this aspect of
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`independent claim 12. Accordingly, independent claim is not anticipated by Tomioka. Claims
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`13-16 depend from independent claim 12 and include all ofits limitations. Therefore, these
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`dependentclaims are allowable over Tomiokaat least for the same reason independentclaim 12
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`is allowable overTomioka. These dependentclaims are also allowable because Tomioka does
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`not expressly or inherently disclose the combined limitations of these dependent claims with
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`independentclaim 12.
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`Independent claim 17
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`-10-
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`Application No.: 13/269,234
`Attorney Docket No.: 10494.0003-01000
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`Independentclaim 17 recites a cooling system for a heat-generating component
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`including, among other features, a reservoir including an impeller cover, an intermediate member
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`and a heat exchangeinterface, wherein “a top wall of the reservoir and the impeller cover define
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`a pump chamber for housing the impeller, and the intermediate memberand the heat exchange
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`interface define a thermal exchange chamber, the pump chamber and the thermal exchange
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`chamber being spaced apart from each other in a vertical direction and fluidly coupled together.”
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`In the Office Action, independent claim 17 was rejected as being obvious over Tomioka
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`and Batchelder. Office Action, pg. 7. Among these references, Tomioka wasrelied upon for the
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`teaching ofthe vertically spaced apart pump chamber and thermal exchange chamber(Office
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`Action, pg. 7), and Batchelder wasrelied upon for the teaching of the recited intermediate
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`member. Office Action, pg. 8. However, for similar reasons as discussed with reference to
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`independent claim 12, Tomioka doesnot disclose that “the pump chamber and the thermal
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`exchange chamber[are] spaced apart from each other in a vertical direction,” as recited in
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`independent claim 17. In fact, as explained below, Tomioka teaches away from spacing apart the
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`pump chamber 77 and the reserve tank 90 in a vertical direction.
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`-11-
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`Application No.: 13/269,234
`Attorney Docket No.: 10494.0003-01000
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`Outline of CPU 33
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`Gas-liquid separating
`mechanise
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`FIG?
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`With reference to FIG. 7 annotated and reproduced above, in Tomioka,a first pipe 93
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`deliversliquid from outside the pump housing 70 to the reserve tank 90, and the second pipe 94
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`directs the liquid from the reserve tank 90 to the pump chamber 77. §[0045]. The outlet 93b of
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`the first pipe 93 and theinlet of the 94a of the second pipe 94 form a gas-liquid separating
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`mechanism 92 (§[0044). This gas-liquid separating mechanism 92 operates by using the heat of
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`the CPU 33. [0050]. To enable the mechanism 92 to be heated by the heat of CPU 33, the
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`mechanism 92 is positioned proximate the CPU 33. Jd. Additionally, to ensure that the gas-
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`liquid separating mechanism 92 is always submergedin the liquid in the pump housing 70 even
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`whenthe housing 70 istilted (see FIG. 8 and 9) (so that the mechanism works), the mechanism
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`92 is positionedat the center of mass (barycenter G) and proximate the bottom wall 72. [0046].
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`Since the gas-liquid separating mechanism 72 is formed at the inlet of the passage which directs
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`fluid from the reserve tank 90 to the pump chamber77, if these chambers (pump chamber 77 and
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`the reserve tank 90) were “spaced apart from each other in a vertical direction,”the gas-liquid
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`separating mechanism 92 will be positioned further away from the bottom wall 72 and the CPU
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`-12-
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`Application No.: 13/269,234
`Attorney Docket No.: 10494.0003-01000
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`33. Applicant submits that, positioning the gas-liquid separating mechanism 92 away from the
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`bottom wall 72 and the CPU 33 will decrease the amountof heat transmitted to mechanism 92
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`from the CPU 33, and also cause the mechanism 92 to be abovethe fluid surface when the
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`housing 70is tilted (see FIG. 9). Therefore, the gas-liquid separating mechanism 92 will not
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`function properly if the pump chamber 77 and the reserve tank 90 of Tomioka were“spaced
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`apart from each other in a vertical direction,” as recited in independentclaim 17'. Thatis,
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`Tomioka teaches away from spacing apart the pump chamber 77 andthe reserve tank 90 “in a
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`vertical direction,” as recited in independent claim 17. Therefore, Tomioka also does not suggest
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`this aspect of independent claim 17. Batchelder does notrectify the deficiencies of Tomioka.
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`Accordingly, independent claim 17 is allowable over Tomioka and Batchelder. Claims 18 and
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`20 depend from independent claim 17, andis therefore allowable over these referencesat least
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`for the same reason independent claim 17 is allowable.
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`Claim 19 was rejected as being obvious over Tomioka and Batchelder and further in view
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`of Lee. Office Action, pg. 6. Lee does not remedy the deficiencies of Tomioka and Batchelder
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`discussed above. Therefore, claim 19 is allowable over these references at least for the same
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`reason independentclaim 17 is allowable over Tomioka and Batchelder.
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`Independent claim 1
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`Although different in scope, amended independent claim 1 includeslimitations similar to
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`those discussed with reference to independent claims 12 and 17. For instance, amended
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`independent claim | recites a cooling system for a heat-generating component having a double-
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`| See Examination Guidelines Update: Developments in the Obviousness Inquiry Afier KSR v.Teleflex, Federal
`Register, Vol. 75, No. 169, September 1, 2010, p. 53649, describing DePuy Spine, Inc. v. Medtronic Sofamor
`Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009) as supporting the proposition that combinations that render the modified
`device unsuitableforits intended purposes are grounds fora finding of non-obviousness.
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`-13-
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`Application No.: 13/269,234
`Attorney Docket No.: 10494.0003-01000
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`sided chassis with an impeller positioned on the underside of the chassis and a stator positioned
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`on the upperside of the chassis, a reservoir including “a pump chamberincluding the impeller
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`and formed belowthe chassis,” the pump chamberbeing defined by at least an impeller cover
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`having one or more passagesfor the cooling liquid to pass through,“a thermal exchange
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`chamber formed below the pump chamberandvertically spaced apart from the pump chamber,”
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`the pump chamberand the thermal exchange chamber being separate chambersthatare fluidly
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`coupled together by the one or more passages.
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`In the Office Action, independent claim 1 was rejected as being anticipated by Tomioka.
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`Office Action, pg. 2. However, for similar reasons as discussed with reference to independent
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`claim 12, Tomioka does not expressly or inherently disclose the above recited aspects of
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`independent claim 1. Accordingly, independent claim 1 is not anticipated by Tomioka. Claims6
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`and 9 have been cancelled by this response, thereby mooting the rejection of these claims.
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`Claims 2-4, 8, and 11 depend from amended independent claim 1 and includeallofits
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`limitations. Therefore, these dependent claims are allowable over Tomiokaat least for the same
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`reason amended independentclaim 1 is allowable over Tomioka.
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`In the Office Action, claim 5 wasrejected as being obvious over Tomioka in view of Lee.
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`Claim 5 depends from amended independent claim 1. Lee does not remedy the deficiencies of
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`Tomioka discussed above. Therefore, dependent claim 5 is allowable over Tomioka and Lee at
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`least for the same reason amended independent claim 1 is allowable over these references.
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`For the reasons discussed above, Applicant submits that the pending claimsare allowable
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`over the prior art of record. Ifthe Examiner disagrees, the MPEPstates that “a second or any
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`subsequent action on the merits in any application ... will not be madefinal if it includes a
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`-14-
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`Application No.: 13/269,234
`Attorney Docket No.: 10494.0003-01000
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`rejection, on newly cited art, ... , of any claim not amended by applicant or patent ownerin spite
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`of the fact that other claims may have been amendedto require newly cited art.” M.P.E.P.
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`§ 706.07(a). Applicant notes that independent claims 12 and 17, and the claims that depend
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`therefrom, are not amended bythis response. Therefore, to the extent that the Examinerrejects
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`these unamended claims using newly cited art, Applicant respectfully requests that the Examiner
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`make the rejection non-final.
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`CONCLUSIONS
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`In view of the foregoing remarks, Applicant respectfully requests reconsideration and
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`reexamination of this application and the timely allowanceofall pending claims.
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`The Office Action contains characterizations of the claims with which Applicant does not
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`necessarily agree. Unless expressly noted otherwise, Applicant declines to subscribe to any
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`statement or characterization in the Office Action.
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`If the Examiner believes a telephone conversation might advance prosecution, the
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`Examineris invited to call Applicant’s undersigned representative at 202.408.4230.
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`Please grant any extensionsof time required to enter this response and charge any
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`additional required fees to our deposit account 06-0916
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`Respectfully submitted,
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER,L.L.P.
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`Dated: April 6, 2012
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`By:
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`Biyu I. Chandran
`Reg. No. 63,684
`(202) 408-4000
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`-15-
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