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
Applicant’s election of Group I, (claims 16-27) in the reply filed on 7/14/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 28-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention II, there being no allowable generic or linking claim. Election was treated as without traverse. Further, Applicant's reply filed on 7/14/26 is acknowledged and also it is clearly that invention I-II do not overlap in scope (e.g., Method versus system). The traversal is on the ground(s) that there is no serious search burden. This is not found persuasive because a complete search of both inventions would require a search in at least two CPC designations (H05K3/10, and H01M4/0435). A complete search also includes a search of both domestic and foreign patent documents, non-patent literature, unique text searches and additional applicable CPC designations (ex. H05K2201/09054, H05K2201/10272, H05K2201/10416, H05K2203/0323, etc.). This can amount to thousands of documents that the examiner must search. Thus, the inventions are distinct and a serious search burden exists. Consequently, Applicant's arguments are not found persuasive. The requirement is still deemed proper and is therefore made FINAL.
An OA on the merit of claims 16-27 as following:
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 method limitation features (see claim 17 entirely) must be shown in method diagram formats (see suggested below) or the feature(s) canceled from the claim(s). No new matter should be entered.
PNG
media_image1.png
351
577
media_image1.png
Greyscale
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 title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The abstract should be updated to reflect method invention. Also, the title existed on the abstract (see line 1, ¶ [0001] should be deleted from the abstract). Note: The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. Correction is required. See MPEP § 608.01(b).
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 16-27 are objected to because of the following informalities:
The scope of claims clearly directed to a method however claim recites” A method for producing circuit boards having perforated shaped parts, wherein said perforated shaped parts are arranged and affixed with respect to one another in a predetermined configuration in order to form a semi-finished product with a perforated mask, wherein said semi-finished product is thereafter positioned or aligned in a press by said perforated mask and is pressed with at least one further element to form a circuit board substrate for producing a circuit board” (see claim 16 entirely) appears to be directed to product since no active method step found in claim 16. Further, claim 16 is also missing transition term “comprising steps of:” following its preamble.
It is suggested the following preamble for clarity of the claims scope.
-- A method for producing circuit boards operatively associated with a system includes a press and a mold, comprising steps of: --.
“a. Step A: Providing “(claim 17, line 2) should be changed to: --“providing” --, since no need to redundant Step when the preamble already recites “steps of:”
Similar to the above applied to “b. Step B.. . h. Step H” respectively (see claim 17, lines 5, 10, 12, 1, 18, and 21). For clarity of the inventive method claim steps.
Further, claims 18-27 is/are also requested to make necessary changes to reflect changes as noted in claim 17 above. Appropriate correction is required.
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 16-27 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.
It is unclear as to what applicant intends to claim method or product or combination of method and a press. Base on the present claim formats especially the most comprehensive claim 17, is directed to the making of PCB operatively associated with a press, therefore the Examiner presumes that claims directed to a method for PCB using a press and claims will be rejected accordingly.
claim 16 appears to be in product claim formats and should be updated to method inventive form (see claim 16, lines 1-6)
it is unclear as to whereabout the body of claim 16 is, since the transient term such as “comprising” following the preamble is missing from the claim.
“are arranged and affixed” (claim 16, line 2), “is pressed” (claim 16, line 5) not active method limitations.
It is unclear as to whether “a circuit board” (claim 16, line 6) is directed to one of “circuit boards” as previous represented in line 1 of claim 16.
“the steps of:” (claim 17, line 1) lacks proper antecedent basis.
whether or not “a press” (claim 17, line 2) as same as that in line 5 of claim 16?
“the pressing process” (claim 17, line 4); lacks proper antecedent basis.
” Providing perforated shaped parts” (claim 17, lines 5-6) is awkwardly worded which does not agreed with claim 16, line 1. Appears to be: “perforating shaped parts on a circuit board substrate”.
“Providing a mold” (claim17, line 7) should be: --“providing the mold”, to reflect one cited in new preamble (see under claim objection)
“can be” (claim 17, lines 7 and 9) should be deleted, for clarity of claim scope.
The phrase: “can be arranged such that they together form a perforated mask into which said positioning pins for positioning said shaped parts can be inserted;” (claim 17, line 7-9) awkwardly worded and confusing and should be deleted.
“d. Step D: Arranging said shaped parts” (claim 17, lines 10-11) should be changed to: --arranging said shaped parts” --. Also, the phrase:” said shaped parts” (claim 17, line 10) lacks proper antecedent basis.
“e. Step E: Connecting said perforated shaped parts” (claim 17, lines 12-14) should be updated to: --“connecting said perforated shaped parts” --.
“f. Step F: Positioning said semi-finished product and at least one electrically insulating surface element in said press while introducing said positioning pins into said perforated mask” (claim 17, lines 15-17) should be: --“positioning said semi-finished product and at least one electrically insulating surface element in said press of the system, and while inserting the positioning pins into said perforated mask” --, for clarity of method claim formats.
“g. Step G: Pressing said semi-finished product with said electrically insulating surface element in said press to embed said perforated shaped parts into said electrically insulating surface element; and” (claim 17, lines 18-20) should be updated to: --“pressing said semi-finished product with said electrically insulating surface element in said press to embed said perforated shaped parts into said electrically insulating surface element; and”—
“h. Step H: Working out a conductor structure from said electrically conductive surface element to produce said circuit board” (claim 17, line 21-22) should be updated to: --"working out a conductor structure from said electrically conductive surface element to produce said circuit board”. Further, it is unclear as to exactly what being associated with the recites” working out”? please be more specific to what exactly associated with process of working out.
Claim 18 appears to be structure form which does not further limit the claimed method. since no positively active method limitation existed in claim 18.
“is arranged” (claim 19, lines 1-2); “is fixed “(claim 19, line 2) is/are not positive method limitations. The use of active method such as “arranging . . . affixing “is/are suggested.
“and/or” (claim 19, line 2) unclear and confusing should be: --“and” --, for clarity of the method claim.
Similar to claim 19 applied to claim 20 where “are inserted” (claim 20, line 2) not active method claim.
“and/or” (claim 19, line 2, claims 23-24, line 2) should be more specific since alternative term and/or representing separate process and optional process.
“in step E” (claim 21, line 2, and 4) should be: --"in the connecting said perforated shaped parts to an electrically conductive surface element” --, for clarity of the method inventive claim formats.
“it” (claim 22, line 2) should be directed to exactly what associated structure.
Claims 23-27 considered to be vague and indefinite since the scope of these claims is/are undetermined base on the present form of claim 16. Further, steps F, D E H existed in these claims all should be rewritten to positive method claim limitation rather than merely cited steps above.
Due to the 35 USC 112(b) issues noted above for claim 17, the examiner is not able to make a meaningful prior art rejection at this time for claims 17. Note that such omission of any prior art rejection is not to be construed as an indication of allowable subject matter, since the patentability determination of these claims cannot be made at this time due to the ambiguity in the claim language. Upon the resolution of the 35 USC 112(b) issues, the examiner may apply prior art is deemed appropriate.
Note that: Due to the 35 USC 112(b) issues noted above for claims 17, 21-27, the examiner is not able to make a meaningful prior art rejection at this time such omission of any prior art rejection is not to be construed as an indication of allowable subject matter, since the patentability determination of these claims cannot be made at this time due to the ambiguity in the claim language. Upon the resolution of the 35 USC 112(b) issues, the examiner may apply prior art rejections as deemed appropriate.
Claim Rejections - 35 USC § 102
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 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) 16 as best understood is/are rejected under 35 U.S.C. 102a1 as being anticipated by Ra et al (US20080012168).
Ra et al discloses the claimed method for producing circuit boards having perforated shaped parts, wherein said perforated shaped parts are arranged and affixed with respect to one another in a predetermined configuration in order to form a semi-finished product with a perforated mask, wherein said semi-finished product is thereafter positioned or aligned in a press by said perforated mask and is pressed with at least one further element to form a circuit board substrate for producing a circuit board (see Fig. 6, and discussed in abstract).
Claim(s) 16, 18-20 as best understood is/are rejected under 35 U.S.C. 102a1 as being anticipated by Kazuhiko (JP2006115189).
Kazuhiko discloses the claimed method for producing circuit boards having perforated shaped parts 125, 127, wherein said perforated shaped parts are arranged and affixed with respect to one another in a predetermined configuration in order to form a semi-finished product with a perforated mask, wherein said semi-finished product is thereafter positioned or aligned in a press (see ¶ [0031]) by said perforated mask and is pressed with at least one further element 107, 108, 109 to form a circuit board substrate 111 for producing a circuit board (see Fig. 5, and discussed in ¶¶ [0025-0028]).
As applied to claim 18-20, (see Fig. 5, in conjunction with ¶¶ [0028-0030], respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH N TRINH whose telephone number is (571)272-4569. The examiner can normally be reached M-TH ~5:00-3:30.
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, Thomas J Hong can be reached at 571-272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MINH N TRINH/Primary Examiner, Art Unit 3729
mt
Prosecution Insights