DETAILED CORRESPONDENCE
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 invention and/or species, and corresponding claims (16-20) is acknowledged. The election has been made without traverse. Non-elected claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation
A spacer having a core and an insulating top covering.
The intended use is to place the spacer (100) between circuit boards (204) to reduce deformation of solder balls (206) during solder reflow. See paragraph 46 of publication. The determination of patentability of an object is based upon the structure of the spacer itself.
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302
582
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References to unclaimed (not positively recited) structures in the claim are considered recitations of intended use.
For example, in claim 1, “wherein the spacer has a cross sectional size to fit onto a depopulated connection pad of a ball grid array” is considered a functional limitation and does not require the user to actually use the spacer in a particular manner (e.g., using the spacer with a particular ball grid array that accommodates the spacer without interference).
Claim Objections
Claim 17 recites “that that” in the last line.
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.
Claim(s) 17 is/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 pre-AIA the applicant regards as the invention.
In reference to claim 17, the limitation “the spacer … is placed” renders the claim indefinite because it requires a user to actually use the claimed structure to accomplish a recited function. A structure claim that requires a user to actually use a structure to accomplish a recited function constitutes an attempt to bridge more than one statutory class of invention and renders the claim indefinite1.
If an end user used the apparatus without performed the claimed action, then they would not meet every limitation of the claim because the above limitation would not be met, however no structural change would have occurred to the structure.
Suggested change: Applicant could change “is placed” to “configured to be placed” or other language that does not positively recite method-step language.
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 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) 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GMW (NPL 20222).
In reference to claim 16, GMW discloses an spacer having the same structure as claimed (see figure)
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152
140
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288
438
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The covering is disclosed as polyester and is considered an insulator as claimed.
Limitations regarding the intended use of the claimed apparatus have been considered but do not distinguish from the cited prior art structure. The determination of patentability is based upon the apparatus structure itself.
In reference to claim 17 the cited prior art discloses the invention as in claim 1.
Limitations regarding the intended use of the claimed apparatus have been considered but do not distinguish from the cited prior art structure. The determination of patentability is based upon the apparatus structure itself.
In reference to claim 18 the cited prior art discloses the invention as in claim 1.
See figure which shows a core covered on sides. The specification indicates that the core can have a circular cross section, therefore the side of the apparently cylindrical core of the GMW reads on a side surface as intended by applicant.
Claim(s) 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cohn (US 20030038373 A1).
In reference to claim 16, Cohn discloses a “spacer-connector stud comprises a stacked array of glass epoxy laminates, each laminate having a copper layer laminated thereto… thermal contacts on the stud, typically solderable, join to a wiring array” (Abstract) see Fig 2 and description thereof. Figure 2 shows conductive paths embedded in the epoxy lamination and covered on top.
The epoxy reads on the covering
The copper or conductive paths read on the core.
The structure is disclosed as a spacer and would be suitable for the claimed intended use as a spacer.
In reference to claim 17 the cited prior art discloses the invention as in claim 1.
Limitations regarding the intended use of the claimed apparatus have been considered but do not distinguish from the cited prior art structure. The determination of patentability is based upon the apparatus structure itself.
In reference to claim 18 the cited prior art discloses the invention as in claim 1.
See figure 2, which shows conductive paths embedded in the epoxy lamination and covered on all sides.
In reference to claim 19 the cited prior art discloses the invention as in claim 1.
See figure 2 at element 212 and see figure 3 and “Solder ball reflow contacts 212 are installed on the contact points 207 at the top and bottom laminates 205 to form a top contact footprint 213 and a bottom contact footprint 215.” (P0017).
In reference to claim 20 the cited prior art discloses the invention as in claim 1.
See “copper” (abstract).
Conclusion
Any prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
In reference to claim 19, EPP (NPL 20143) discloses spacers as claimed except for the covering layer.
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633
1000
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In reference to claims 16 and 20, Kim (US 20210252343 A1) discloses a structure with a copper core and thermoplastic covering (“center 230 may include not only a core… a cover layer” [P0131] and “the cover layer comprises … polymer” [Claim 1] and “core comprises… copper” [Claim 16])
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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, Xiao Zhao can be reached on 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
1 35 U.S.C. § 101 delineates four categories of statutory subject matter: “processes,” “machines,” “manufactures,” and “compositions of matter.” A claim is indefinite if it does not reasonably apprise those skilled in the art of the statutory class of invention the claim is directed to or if the claim attempts to bridge more than one statutory class of invention.
See IPXL Holdings, 430 F.3d at 1384 (claim attempting to claim both a system and a method of using that system held indefinite); In re Rishoi, 197 F.2d 342, 345 (CCPA 1952) (“[T]here is no patentable combination between a device and the material upon which it works.”); In re Smith, 36 F.2d 302, 303 (CCPA 1929) (“It will be borne in mind that it has been long established that a person may not patent a combination of device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.”).
2 https://g-mw.de/fileadmin/Downloads/Schaltschrank_Komponenten/Kataloge/Fremdsprachen/Stromschienen_Isolatoren_EN.pdf
3 https://epp-europe-news.com/technology/products/spacer-blocks-for-precise-height-tolerance-reliability/
Prosecution Insights