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
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 12/12/25 is acknowledged. The traversal is on the ground(s) that the Korean Patent Office has allowed the application over the KR1020140118418 and JP2006-286936. This is not found persuasive because the US Patent Office is not bound by the decision of a foreign patent office. The common technical features between the groups do not make a contribution over the prior art at least for the reasons detailed in the rejection below. Claims 7 and 8a re withdrawn with traverse
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The claims recite an apparatus with structural limitations and material worked upon by the apparatus. While there is nothing wrong with claiming the material worked upon, such limitations are only given weight to the extent that they limit the structure of the claimed apparatus. See MPEP 2115. See In re Rishoi (94 USPQ 71), In re Smith (3 USPQ 315), and In re Young (25 USPQ 69).
In Rishoi, a film of liquid was claimed as part of an apparatus, it being clear that the liquid film is only present during use of the apparatus. It was held that the liquid film is not a structural limitation and therefore cannot impart patentability to those claims which are otherwise unpatentable. It was further stated that there is no patentable combination between a device and the material upon which it works.
In Smith, a particular web material having an extra length of carbons was claimed as part of an apparatus. The web material is worked upon by the apparatus. The court considered the possibility of combining the specified web with an old machine to provide a patentable combination, but it was held that a person may not patent a combination of a device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.
In Young, a concrete structure upon which an apparatus works was claimed as part of the apparatus. It was held that the inclusion of the material worked upon may not lend patentability to the apparatus.
In view of the cited cases and MPEP 2115, the claimed material worked upon has only been given weight to the extent that such limitations indicate structural limitations of the claimed apparatus.
Claim Rejections - 35 USC § 112
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 1-6 and 9-11 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.
Claims 1 and recite “and suctions”. It is not clear if “suctions” refers to the previously recited suction.
Claims 1 and 6 recite “in the load is further comprised”. The limitation is indefinite because it is not what “is further comprised” means.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3-6 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (KR20140118418, of record see attached machine translation for text citations) in view of Moriyama et al. (JP 2006286936, of record see attached machine translation for text citations)
The electronic component is material to be worked upon.
**Claim 1 does not expressly require the housing member and associated recess as part of the suction device. As such a suction device capable of performing the required functions for a housing with the recess will meet the claim limitations.
As to claims 1 and 6, Jung discloses
a suction unit, comprising: a suction head 1000; a housing member 500/700 having a recess for housing an electronic component (figs 1a-b, 5, 8, para 47-63, 99-116, 132-142); a movement control unit (suction headed moved vertically para 111) that causes the suction head to move between a first position for suction of the electronic component housed in the recess of the housing member and a second position further separated from the electronic component than the first position (para 111, fig 8); and a suction control unit (device that causes suction through suction passage, para 50, 132-140, fig 8) that causes suction of the electronic component to the suction head when the suction head is located at the first position, wherein when located at the first position, the suction head has a contact portion that comes into contact with a first surface on an outer side of a region where the recess in the housing member is opened (para 50, 132-140), and a small-diameter portion 111 (fig 8) that protrudes from the contact portion when the contact portion is in contact with the first surface of the housing member and suctions and holds the electronic component from the recess (fig 8, para 137); a detection unit (load detector 700,730,900) that detects a load acting on the suction head based on a height position of the suction head measured by an encoder and a driving force output from the movement control unit to the suction head and detects that the contact portion is in contact with the first surface of the housing member according to a change in the load is further comprised (para 31, 159-167; fig 1a-b, 4, 5, 8 para 47-63, 92-116, 132-142);
While Jung discloses the stopping of the movement of the suction head (fig 3, 5, 8), Jung does not expressly the suction control unit stops movement of the suction head on condition that it is detected by the detection unit that the contact portion of the suction head is in contact with the first surface of the housing member and causes the suction of the electronic component to the suction head.
Moriyama discloses the suction control unit (load cell) stops movement of the suction head (nozzle) on condition that it is detected by the detection unit that the contact portion of the suction head is in contact with the first surface of the housing member and causes the suction of the electronic component to the suction head (para 35).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Jung such that the suction control unit stops movement of the suction head on condition that it is detected by the detection unit that the contact portion of the suction head is in contact with the first surface of the housing member and causes the suction of the electronic component to the suction head as taught by Moriyama above as such reduces the damage to electron component.
As to claim 3, Moriyama discloses a gap is interposed between the suction head and the electronic component when the suction head is located at the first position (fig 10-11, para 26-28)
As to claim 4 and 9, Moriyama discloses the contact portion comes into contact with the first surface of the housing member on at least two opposing sides of the recess when the suction head 28a is located at the first position (fig 10-11, para 26-28)
As to claims 5, 10 and 11, Moriyama discloses the contact portion comes into contact with the first surface of the housing member while surrounding the recess when the suction head is located at the first position (fig 10-11, para 26-28).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mantz (US 2005/0006916), directed to stopping the movement of a suction head based load cell detection.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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