DETAILED ACTION
Notice of Pre-AIA 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 .
Election/Restrictions
Newly submitted claim 7 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-6, drawn to “a fly-cut apparatus”.
Group II, claim(s) 7, drawn to “a method of cutting”.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: in accordance with the guidance set forth in MPEP section 1850, it has been determined a posteriori, i.e., after taking the prior art into consideration, that the features common to all the claims do not constitute “special technical features” since they do not make a “contribution” over the prior art in light of at least US Pat. No. 4,640,651 Runyon, for example.
Specifically, it is noted that the features which are common to all the claims are as follows: a fly-cut tool and a chuck.
Note that Runyon teaches as in Figures 1 and 2, a fly-cut tool (26) and a chuck (38).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 7 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “cutting-time predicting part” in claim 5.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Amended claim 5 now recites “a cutting-time predicting part which calculates a predicted time the protective film reaches a preset finished thickness based on…or feed in a direction along a rotational axis of the tool spindle”.
Paragraphs [0025] and [0034] set forth the following:
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However, the specification as filed is silent as to the cutting-time predicting part calculating a “predicted” time the protective film reaches a “preset” finished thickness based on “feed in a direction along a rotational axis of the tool spindle”. As indicated above, paragraph [0025] of the specification as filed only sets forth that the cutting-time predicting part calculates time (not specifically predicted time) when the film reaches a finished thickness based on the number of revolutions of the tool spindle, the number of revolutions of the chuck spindle and fall velocity of the spindle feed mechanism. There is no mention of this calculation being based in a direction along a rotational axis of the tool spindle. Proper clarification is needed.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims 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-AIA ), 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 3 and 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites the retaining surface “formed in a center-protruding shape of the chuck, in which a center is higher compared with an outer perimeter of the chuck”. First it is unclear what exactly is meant by the retaining surface being formed in “a center-protruding shape of the chuck”. Second, it is unclear where is this center is being taken from is being taken from. A center of what? Further clarification is needed.
Claim 5 recites “a cutting-time predicting part which calculates a predicted time the protective film reaches a preset finished thickness, based on a measurement value of the thickness sensor, number of revolutions of the fly-cut tool, number of revolutions of the chuck, and fall velocity of the tool spindle”. It is unclear what exactly this “predicted time” that is calculated, is. Furthermore, it is unclear what exactly this “measurement value of the thickness sensor, is; and what is catalogued as “a fall velocity”. Further clarification is needed.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 5 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muri et al. US 2017/0263490 (hereafter—Muri--).
In regards to claim 1, Muri discloses a fly-cut apparatus (200) which is capable of cutting an upper surface of a protective film laminated to a work including a bump region with bumps formed on a front surface and an outer peripheral region around the bump region, the apparatus (200) comprising: a fly-cut tool (104); a tool spindle with a lower end to which the fly-cut tool is attached (see Figure 2), and capable of ascending and descending (see 101d directional arrows) in a state of rotating (see 101r directional arrows) the fly-cut tool (see Figure 2); and a chuck (102) which rotatably retains the work (106) (paragraph [0191]), wherein the fly-cut tool (104) is capable of cutting the upper surface of the protective film from a center of the protective film toward an outer perimeter of the protective film (since the chuck has directional displacement arrows 103d (see paragraph [0059]), the fly-cut tool is capable of cutting the upper surface from a center toward an outer perimeter).
In regards to claim 2, Muri discloses the fly-cut apparatus according to claim 1, Muri also discloses that the fly-cut tool (104) includes a ring frame (refer to the ring frame 104) to be attached to the tool spindle, and a cutting tool (14b) to be inserted to an outer perimeter of the ring frame and capable of cutting the protective film (see Figure 2).
In regards to claim 5, Muri discloses the fly-cut apparatus according to any one of claims 1, Muri also discloses a thickness sensor (paragraph [0189] and [0213]) which measures a thickness of the protective film during cutting by the fly-cut tool; and a cutting-time predicting part (controller paragraph [0189] and [0213]) which calculates a predicted time the protective film reaches a preset finished thickness, based on a measurement value of the thickness sensor, number of revolutions of the fly-cut tool, number of revolutions of the chuck, and fall velocity of the tool spindle (see paragraph [0189] and [0213]).
In regards to claim 6, Muri discloses the fly-cut apparatus according to claim 1, Muri also discloses that the center of the protective film is capable of being cut thinner than the outer perimeter of the protective film. It is noted that these recitations are intended use recitations, as they are all related to the intended workpiece being machined.
Claim(s) 1, 3 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pavlosky US 4,221,514
In regards to claim 1, Pavlosky discloses a fly-cut apparatus (Figures 1-7) which is capable of cutting an upper surface of a protective film laminated to a work including a bump region with bumps formed on a front surface and an outer peripheral region around the bump region, the apparatus comprising: a fly-cut tool (3,16, Figures 1-7); a tool spindle (55) with a lower end to which the fly-cut tool is attached (see Figure 5-7), and capable of ascending and descending (see directional arrows in Figure 1) in a state of rotating (see rotational directional arrows in Figure 5) the fly-cut tool; and a chuck (2) which rotatably retains the work (1) (col 3, line 7), wherein the fly-cut tool (3,16) is capable of cutting the upper surface of the protective film from a center of the protective film toward an outer perimeter of the protective film (see Figure 2).
In regards to claim 3, Pavlosky discloses the fly-cut apparatus according to claim 1, Pavlosky also discloses that the chuck (2) has a rotation axis set as being tilted by a predetermined angle (in the same way as presented by Applicant’s rotation axis being set as being tilted by a predetermined angle), and the chuck (102) has a retaining surface which retains the work, the retaining surface formed in a center-protruding shape of the chuck (refer to protruding shapes 8), in which a center (of the protruding shape 8) is higher compared with an outer perimeter of the chuck (2).
In regards to claim 6, Pavlosky discloses the fly-cut apparatus according to claim 1, Pavlosky also discloses that the center of the protective film is capable of being cut thinner than the outer perimeter of the protective film. It is noted that these recitations are intended use recitations, as they are all related to the intended workpiece being machined.
Claim(s) 1, 4 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujimoto et al. US 2007/0006694 (hereafter— Fujimoto --).
In regards to claim 1, Fujimoto discloses a fly-cut apparatus (Figure 4) which is capable of cutting an upper surface of a protective film laminated to a work including a bump region with bumps formed on a front surface and an outer peripheral region around the bump region, the apparatus comprising: a fly-cut tool (27); a tool spindle with a lower end to which the fly-cut tool is attached (see Figure 4), and capable of ascending and descending in a state of rotating (see rotational directional arrows) the fly-cut tool (see Figure 4); and a chuck (23/26) which rotatably retains the work (W), wherein the fly-cut tool (27) is capable of cutting the upper surface of the protective film from a center of the protective film toward an outer perimeter of the protective film (paragraph [0026] and [0029] disclose that the location fo a work is adjusted by driving table 22 and that cutting is carried out by making the work and the cutting blade move relatively to each other).
In regards to claim 4, Fujimoto discloses the fly-cut apparatus according to claim 1, Fujimoto also discloses a cooling water nozzle (24) which is capable of supplying cooling water to the upper surface of the protective film.
In regards to claim 6, Fujimoto discloses the fly-cut apparatus according to claim 1, Fujimoto also discloses that the center of the protective film is capable of being cut thinner than the outer perimeter of the protective film. It is noted that these recitations are intended use recitations, as they are all related to the intended workpiece being machined.
Response to Arguments
Applicant's arguments filed 08/23/2026 have been fully considered but they are not persuasive.
Applicant argues on pages 9-10 regarding the Muri reference, that Muri does not “expressly disclose that the fly-cut tool (104) is capable of cutting the upper surface of a protective film from a center toward an outer perimeter” because as best understood, “direction arrows 103d only represent a speed of displacement of at least one of the chuck 102 and the planarization tool 104”. Applicant cited paragraph [0066] which allegedly supports this argument. The Examiner disagrees.
In response to applicant's argument that Muri does not “expressly disclose that the fly-cut tool (104) is capable of cutting the upper surface of a protective film from a center toward an outer perimeter”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Muri discloses a fly-cut apparatus (200), the apparatus (200) comprising: a fly-cut tool (104); a tool spindle with a lower end to which the fly-cut tool is attached and a chuck (102) which rotatably retains the work (106). Paragraph [0191] of Muri sets forth that the chuck 102 may be rotatable around a rotation axis. The fly-cut tool (104) is capable of cutting the upper surface of the protective film from a center of the protective film toward an outer perimeter of the protective film (since the chuck has directional arrows 103d, the fly-cut tool is capable of cutting the upper surface from a center toward an outer perimeter). Attention is brought to paragraph [0059] which supports Examiner’s rationale. As discussed in paragraph [0059] of Muri “the rotatable 101r bit carrier 104c and the chuck 102 may be configured for an at least two-axis displacement to each other. A first axis 101 of the two-axis displacement may be parallel to the rotation axis 101a. A second axis 103 of the two-axis displacement may be perpendicular to the rotation axis 101a. The rotatable bit carrier 104c and the chuck 102 may be configured for at least one of a first displacement 101d along the first axis 101 (see also FIG. 2) and a second displacement 103d the second axis 103. Optionally, the rotatable bit carrier 104c and the chuck 102 may be configured for a displacement along a third axis 105 perpendicular to both, the first axis 101 and the second axis 103.” Because the chuck does 1) move along axis 103 as indicated by displacement 103d arrows, and 2) rotates around a rotation axis, Muri’s device’s structure is capable of performing the intended use and thus meets the claim.
In re Applicant cited paragraph [0066], it is respectfully noted that there is no mention of any directional arrow 103d as only representing a speed of displacement of at least one of the chuck 102 and the planarization tool 104 as alleged by Applicant.
Applicant, at some length, argues that the prior art Muri disclosure lacks the specifics of the intended use with regard to a specific workpiece (e.g. cutting a protective film from a center toward an outer perimeter). It is noted however, the workpiece and the method of cutting said workpiece are merely functional limitations. Nevertheless, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See section 23 above for details.
Applicant argues on page 11, regarding the Pavlosky reference, that it does “not anticipate claim 1, since Pavlosky does not disclose a protective film laminated to a work including a bump region and cutting the upper surface of the protective film from a center toward an outer perimeter as recited in claim 1”. The Examiner disagrees.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Pavlosky discloses a fly-cut apparatus (Figures 1-7) which is capable of cutting an upper surface of a protective film laminated to a work including a bump region with bumps formed on a front surface and an outer peripheral region around the bump region, the apparatus comprising: a fly-cut tool (3,16, Figures 1-7); a tool spindle (55) with a lower end to which the fly-cut tool is attached (see Figure 5-7), and capable of ascending and descending (see directional arrows in Figure 1) in a state of rotating (see rotational directional arrows in Figure 5) the fly-cut tool; and a chuck (2) which rotatably retains the work (1), wherein the fly-cut tool (3,16) is capable of cutting the upper surface of the protective film from a center of the protective film toward an outer perimeter of the protective film (see Figure 2 and note that bidirectional arrows indicated that the tool is capable of being movable from a center to an outer perimeter and viceversa).
Applicant, at some length, argues that the prior art Pavlosky disclosure lacks the specifics of the intended use with regard to a specific workpiece (e.g. cutting a protective film from a center toward an outer perimeter). It is noted however, the workpiece and the method of cutting said workpiece are merely functional limitations. Nevertheless, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See section 25 above for details.
Applicant argues on page 12, regarding the Fujimoto reference, that it does “not anticipate claim 1, since Fujimoto does not disclose a protective film laminated to a work including a bump region and cutting the upper surface of the protective film from a center toward an outer perimeter as recited in claim 1”. The Examiner disagrees.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Fujimoto discloses a fly-cut apparatus (Figure 4) which is capable of cutting an upper surface of a protective film laminated to a work including a bump region with bumps formed on a front surface and an outer peripheral region around the bump region, the apparatus comprising: a fly-cut tool (27); a tool spindle with a lower end to which the fly-cut tool is attached (see Figure 4), and capable of ascending and descending in a state of rotating (see rotational directional arrows) the fly-cut tool (see Figure 4); and a chuck (26) which rotatably retains the work (W), wherein the fly-cut tool (27) is capable of cutting the upper surface of the protective film from a center of the protective film toward an outer perimeter of the protective film. Paragraph [0026] and [0029] disclose that the location of a work is adjusted by driving table 22 and that cutting is carried out by making the work and the cutting blade move relatively to each other. As such, the apparatus of Fujimoto, is capable of performing the intended function.
Applicant, at some length, argues that the prior art Fujimoto disclosure lacks the specifics of the intended use with regard to a specific workpiece (e.g. cutting a protective film from a center toward an outer perimeter). It is noted however, the workpiece and the method of cutting said workpiece are merely functional limitations. Nevertheless, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See section 27 above for details.
Applicant argues on pages 12-13, that the Examiner “has improperly given the claims their broadest possible interpretation rather than the required broadest reasonable interpretation consistent with the specification. (MPEP 2111)” as best understood, to support argument of each of Muri, Pavlovsky and Fujimoto not anticipating the intended use limitations. The Examiner disagrees.
The Examiner has interpreted the claims under broadest reasonable interpretation. The scope of the claims is limited to the device capable of performing the functional limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See sections 23, 25 and 27 above for details. As such, the Examiner’s interpretation is not precluded. Further, as stated on section 2111.01, II of the MPEP, "Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, 69 USPQ2d 1801, 1807 (Fed. Cir. 2004).
Applicant argues on page 15, that Muri’s chuck “does not adopt a constitution or have a structure that holds the workpiece 106 rotatably. Accordingly…a machining bit 104b of a fly-cut tool 104n cuts the workpiece along a path that passes from the outer periphery of the workpiece 106 o the opposite outer periphery. Therefore, the fly-cut tool 104 in Muri is completely different from the fly-cut apparatus “to cut the upper surface of the protective film from a center toward an outer perimeter.” As recited in claim 1 in the present application.” The Examiner disagrees.
As discussed in the rejection above, Muri discloses a chuck (102) which rotatably retains the work (106). See paragraph [0191] of Muri which clearly states that the chuck 102 may be rotatable around a rotation axis. Accordingly, Muri’s device is indeed capable of having the fly-cut tool (104) to cut the upper surface of the protective film from a center of the protective film toward an outer perimeter of the protective film. Since the chuck has directional arrows 103d, and rotates around an axis, the fly-cut tool is capable of cutting the upper surface from a center toward an outer perimeter. The Examiner’s interpretation is not precluded.
As a general note, the scope of the claims is to an apparatus/device. Not to a method or a workpiece. Thus, the scope of the claims is limited to the device capable of performing the functional limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As such, since the prior art as set forth in the rejections above, has all the structural limitations as currently claimed, the Examiner’s interpretation is not precluded.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722
