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 .
DETAILED ACTION
Applicant's submission filed on April 10, 2026 was received and has been entered. Claims 5-8 were amended. Claims 9-12 were added. Claims 5-12 are in the application. Claims 2-4 have been withdrawn. Replacement Specification was submitted to correct minor typographical errors. A replacement paragraph was submitted to amend the title.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
The previous objection to the drawings are withdrawn based on the submission of amended drawings.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “hemisphere” in claim 9 and the “hump” in claim 10 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The previous objection to the title of the invention is withdrawn based on the amendment to the title.
The previous objection to the specification will be held in abeyance until rejection below is addressed.
The following phrase in paragraphs 33-34 is awkward:
“a diameter of the solder paste dipped into the tip end portion”
The following phrases in paragraphs 3, 40-41, 43-44, 46, 64, 70, 82, 88, 95 is awkward:
“or the like” “and the like”.
Clarification is requested.
The disclosure is objected to because of the following informalities: “film thickness” is a term that is possibly being used to describe different properties in two -three different setting.
Film thickness is used to described in paragraphs 11-12, 75, 79, 82, and 93-94 to describe: “film thickness of the solder paste accommodated in a container”. It is unclear if this term refers to “inherent thickness” or “liquid thickness in a supply container” or “viscosity”. Clarification is requested (based on support in the original priority document and translation is requested). For the purpose of prosecution, his term is being interpreted as “viscosity” based on the drawings and specification discussed above.
Film thickness is used to described in paragraphs 33-34 and Figs. 16A-B to describe: “shape of the solder paste held by the tip end portion when a film thickness is 60um or 200um”. It is unclear if this term refers to “shape of the liquid on the pin” or “bead of solder paste”. Clarification is requested (based on support in the original priority document and translation is requested). For the purpose of prosecution, his term is being interpreted as “bead of solder paste” based on the drawings and specification discussed above.
Film thickness is used to described in paragraphs 35-36 to describe: “film thickness of the solder paste and a diameter of the solder paste dipped into the tip end portion”. It is unclear if this term refers to “film thickness or height of the solder in the process of being transferred to a mounting portion of a component of a board” or “film thickness height of the solder remaining on a mounting portion of a component of a board after transfer has been complete “ie coating”. Clarification is requested (based on support in the original priority document and translation is requested). For the purpose of prosecution, his term is being interpreted as “film height of the solder remaining on a mounting portion of a component of a board after transfer has been complete” based on the drawings and specification discussed above.
Appropriate correction is required.
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: “selection section” in claim 5, “setting section” in claim 7,
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.
The “releasing portion” is shown in Figs. 5-10 and 14 as reference numeral 53 is formed on the tip end side of the main body portion 51, and releases solder paste from tip end portion of main body portion when solder paste including the solder ball is dipped and transferred to mounting portion 91 of component 80 of board 90 and described in Abstract and paragraphs 10, 13, 59-60, 63, and 99-100.
The “mounting portion” is shown in Fig. 1as reference numeral 91 is a portion electrically connected to an electrode of component 80, and is also referred to as a pad and described in Abstract and paragraphs 7,10, 22-23, 49, 54, 56, 62, 65-69, 76-78, 91-92, 96-98, and 100.
The “selection section” is shown in Fig. 11 as reference numeral 61 provided in control device 17 of component mounter 10 and described in paragraphs 11, 72, 79-82, 87-88, 100.
The “setting section” is shown in Fig. 11 as reference numeral 62 provided in control device 17 of component mounter 10 and described in paragraphs 12, 72, 93-95, and 100.
The “control section” is shown in Fig. 11 as reference numeral 63 provided in control device 17 of component mounter 10 and described in paragraphs 72 and 96-100.
The “control device” is shown in Fig. 11 and includes a well-known arithmetic device, a storage device, and a control circuit and described in paragraphs 38, 43-47, 54, and 72 .
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 Objections
The previous objection to claims 5-6 and 8 are withdrawn based on the amendment to the claims.
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.
The following limitation lacks support in the application as-filed: “controller configured to .. determine a transfer diameter of the solder paste to be transferred”.
Claims 6-12 are rejected for their dependence on an indefinite claim.
The term “hemisphere” in claim 9 is a relative term which renders the claim indefinite. The term “hemisphere” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “hump shape” in claim 10 is a relative term which renders the claim indefinite. The term hump” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 103
The previous rejection of claims 5 and 7 under 35 U.S.C. 103 as being unpatentable over JP-H1066911 to Sakamoto et al (hereinafter Sakamoto) and US Pat. Pub. No. 20160299510 A1 to Feine et al (hereinafter Feine) is withdrawn based on the amendment to claim 5.
The previous rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over JP-H1066911 to Sakamoto et al (hereinafter Sakamoto) in view of US Pat. Pub. No. 20160299510 A1 to Feine et al (hereinafter Feine) as applied to claim 5 and further in view of JP-2005000776 A to Saito Katsumi et al (hereinafter Saito) is withdrawn based on the amendment to claim 6.
The previous rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over JP-H1066911 to Sakamoto et al (hereinafter Sakamoto) in view of US Pat. Pub. No. 20160299510 A1 to Feine et al (hereinafter Feine) as applied to claim 5 and further in view of US Pat. Pub. No. 20020083998 A1 to Overbeck et al ( Overbeck) is withdrawn based on the amendment to claim 8.
Response to Arguments
Applicant’s arguments with respect to claims 5-12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner spoke with Applicant’s Representative on Monday June 23, 2026 concerning the limitation:
“controller configured to .. determine a transfer diameter of the solder paste to be transferred”.
However, an agreement for support for this limitation was not able to be reached.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KARL V KURPLE whose telephone number is (571)270-3477. The examiner can normally be reached Monday-Friday 8 AM-5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at (571) 272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARL KURPLE/Primary Examiner
Art Unit 1717
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