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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/23/26 has been entered.
Election/Restrictions
Newly submitted claims 30-35 are directed to an invention that is independent or distinct from the invention originally claimed/elected for the following reasons: claims 30-35 are drawn to a process which would have been part of Invention II that the applicant did not elect in the response dated 4/10/25.
Since applicant has received an action on the merits for the originally presented/elected invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 30-35 are withdrawn from consideration as being directed to a non-elected invention.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.
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 “end point” of claims 1 and 18, the “stimulant means” of claim 18, and the “length” of claims 36 and 37 the 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.
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: “stimulant means that applies” in claim 18.
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.
Claims 36 and 37 are 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.
Claims 36 and 37 recite, “wherein a length of the second chamfer portion increases/decreases as the tip portion changes from the first state to the second state” while the only mention of “length” in the originally filed disclosure is in [0032], which states,
“The shape memory material enables the second portion 120 of the capillary 100 to change from a first state (such as shown in FIG. 1A) to a second state (such as shown in FIG. 1B). For example, the shape memory material enables a shape of the second portion 120 of the capillary 100 to change, which increases/decreases a diameter of the second chamfer portion 150. In another example, changing the shape of the second portion 120 of the capillary 100 may cause a length of the second chamfer portion 150 to increase/decrease.”
Note that there is no support for stating the increase/decrease is from first state to the second state. Additionally, there is no support for the length increase/decrease to also happen when the diameter increases/decreases as the length is “another example”.
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 18 and 20 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 18 recites the limitation “stimulant means” which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. While the specification and the claims state the stimulant is voltage or heat, the disclosure fails to state the structure for producing the stimulant. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 20 recites the limitation “the stimulant”. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 36, and 37 are rejected under 35 U.S.C. 102a1 as being anticipated by Yu et al. (US 2008/0197461 A1).
Regarding claim 1, Yu discloses:
A capillary [capillary tool (500); figures 6a-e] for a wire bonder, comprising:
a first body portion [main body (508)] defining a first chamfer portion, the first chamfer portion having a static diameter [the through hole does not change]; and
a tip portion [compressible head (510)] defining a second chamfer portion, the second chamfer portion extending from the first chamfer portion and defining an end point [head (510) is the end of the tool (500)], the second chamfer portion and the end point having a first diameter [size of the through hole] when the tip portion is in a first state [figure 6a or 6b, with 6b being when the head is compressed] and having a second diameter [size of the through hole] when the tip portion is in a second state [0026 and figure 6a or 6b; i.e. when the first state is figure 6a then the second state is figure 6b and vice versa],
wherein the second diameter is based, at least in part, on a size parameter of a bond pad.
Concerning any claimed results, materials, and/or functions:
Since the prior art apparatus, i.e. the apparatus based on the prior art reference above, is structurally identical to the claimed apparatus, it is the examiner’s position that the prior art apparatus is capable of achieving any claimed function with any claimed material to achieve any claimed result; such as basing the second diameter on a bond pad. This reasoning applies to any claim below where functional language, material worked upon, and/or a result is claimed.
Regarding claim 36, Yu discloses:
wherein a length of the second chamfer portion increases as the tip portion changes from the first state to the second state [the first state in this case being when the head is compressed, as implied in figure 6b, and when the head returns to the second state, as in figure 6a, the length between the outer surfaces of the head increases].
Regarding claim 37, Yu discloses:
wherein a length of the second chamfer portion decreases as the tip portion changes from the first state to the second state [the first state in this case being when the head is not compressed, as in figure 6a, and when the head moves to the second state, as implied in figure 6b, the length between the outer surfaces of the head decreases].
Claims 1-4, 18, 20-22, 36 and 37 are rejected under 35 U.S.C. 102a1 as being anticipated by Matsusumi et al. (JP 2-275648 A).
Regarding claim 1, Matsusumi discloses:
A capillary [capillary (31, 41); figures 3 and 4] for a wire bonder, comprising:
a first body portion [lower end of capillary (31) or capillary body (32)] defining a first chamfer portion [the exterior of the capillary is chamfered], the first chamfer portion having a static diameter [the through hole of these portions does not change]; and
a tip portion [wire holding member (33, 43)] defining a second chamfer portion, the second chamfer portion extending from the first chamfer portion and defining an end point [the end of the holding member is an end point], the second chamfer portion and the end point having a first diameter [hole portion (33a, 43a)] when the tip portion is in a first state and having a second diameter when the tip portion is in a second state [member (33)/hole portion (33a) changes shape/size when voltage is applied; page 3, or member (43)/hole portion (43a) changes shape/size when heated; pages 4-5 and figure 4(b)],
wherein the second diameter is based, at least in part, on a size parameter of a bond pad [note that this limitation is not further limiting as it is drawn to material worked upon].
Regarding claim 2, Matsusumi discloses:
wherein a state of the second portion changes from the first state to the second state based, at least in part, on a voltage applied to the second portion [page 3].
Regarding claim 3, Matsusumi discloses:
wherein a state of the second portion changes from the first state to the second state based, at least in part, on an amount of heat applied to the second portion [pages 4-5].
Regarding claim 4, Matsusumi discloses:
wherein the first portion is comprised of a first material [ceramic; page 4] and the second portion is comprised of a shape memory material (SMA) [Ni-Ti alloy; page 4].
Regarding claim 18, Matsusumi discloses:
A wire bonder, comprising:
a bond wire dispensing means [capillary (31, 41); figures 3 and 4] defining a chamfer [the exterior of the capillary is chamfered], the chamfer comprising:
a first portion [lower end of capillary (31) or capillary body (32)] having a static first diameter [the through hole of these portions does not change]; and
a second portion [wire holding member (33, 43)] extending from the first portion and defining an endpoint [the end of the holding member is an end point], the second portion and the end point having the first diameter when the bond wire dispensing means is in a first state [hole portion (33a, 43a)] and having a second diameter when the bond wire dispensing means is in a second state [member (33)/hole portion (33a) changes shape/size when voltage is applied; page 3, or member (43)/hole portion (43a) changes shape/size when heated; pages 4-5 and figure 4(b)],
wherein the second diameter is based, at least in part, on an identified size parameter [note that this limitation is not further limiting as it is drawn to functional language]; and
stimulant means [control device (35), power (34), unlabeled wire, and terminals (33a,b) used on element (33); page 3, or heating device (22) can be used on member (43); pages 3 and 5] that applies an amount of stimulant [voltage or heat] to the bond wire dispensing means based, at least in part, on the identified size parameter [this is functional language], the amount of stimulant causing the bond wire dispensing means to change from the first state to the second state [control device (35) inherently, in the least, controls on/off of the applied voltage or heating device (22) in order to apply when needed/not needed].
Regarding claim 20, Matsusumi discloses:
wherein the stimulant is selected from a group of stimulants comprising:
a voltage [voltage from power (34)]; and
heat [heat from heating device (22)].
Regarding claim 21, Matsusumi discloses:
wherein the identified size parameter comprises one or more dimensions of a bond pad [this limitation is functional language and control device (35) is capable of this function].
Regarding claim 22, Matsusumi discloses:
wherein a diameter of a ball that extends from the end point is proportional to a diameter of the end point [Note that this limitation is not further limiting as it is drawn to material worked upon. Even so, the claims do not require the ball to extend directly from end point; i.e. make direct contact with, thus the diameter of the ball is inherently proportional to the diameter of the hole portion since the diameters can be compared and/or the ball is properly related to the hole portion in size].
Regarding claim 36, Matsusumi discloses:
wherein a length of the second chamfer portion increases as the tip portion changes from the first state to the second state [the first state in this case being when the stimulant is not applied to the holding member and the second being when it is, thus a length from the outer surface to the inner surface of the holding member increases].
Regarding claim 37, Matsusumi discloses:
wherein a length of the second chamfer portion decreases as the tip portion changes from the first state to the second state [the first state in this case being when the stimulant is applied to the holding member and the second being when it is not, thus a length from the outer surface to the inner surface of the holding member decreases].
Claim Rejections - 35 USC § 103
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.
Claims 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Matsusumi et al. (JP 2-275648 A) as applied to claims 1 or 18 above, and further in view of Sonnenreich et al. (US 2002/0100790 A1) and Cui et al. (CN 103131926 A).
Regarding claims 5 and 19, Matsusumi does not teach:
wherein the shape memory material/bond wire dispensing means includes one or more of a tungsten alloy and a tungsten composite.
Sonnenreich teaches capillaries are made from tungsten carbide; 0004.
Cui teaches a tungsten memory alloy; abstract.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use any memory alloy, including that of Cui, minus any unexpected results. Additionally, one would have been motivated to choose the Cui tungsten memory alloy since it is known to use tungsten to make capillaries, due to the hardness of tungsten, and/or bondability to the ceramic body.
Claim 7 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Matsusumi et al. (JP 2-275648 A) as applied to claim 1 above, and further in view of Cai et al. (US 8,011,559 B2).
Regarding claims 7 and 23, Matsusumi does not teach:
further comprising an elastomeric material layer provided on the second chamfer portion; or
further comprising an elastomeric layer provided on an inner surface of the second portion of the chamfer.
The examiner notes that elastomeric materials are well-known dielectric materials since they are commonly used as electrical insulators. Since the applicant did not traverse the examiner’s assertion of official notice, the examiner notes that the above well-known fact in the art is taken to be admitted prior art because applicant failed to traverse the examiner’s assertion of official notice.
Since element (33) is activated with voltage it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention that the holding member and terminals (33b) must be electrically insulated internally and externally in order to prevent shorts and shocks to surrounding objects and the wire. In doing so, it also would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to place any known insulating material, including elastomeric materials such as rubber, silicone, etc., minus any unexpected results.
Response to Arguments
Applicant's arguments filed 2/23/26 have been fully considered but they are not persuasive.
The applicant argues,
“The shape memory portion of Matsusumi does not define an end point that changes diameter as claimed. Rather, Matsusumi's shape memory material merely opens and closes a hollow hole to clamp or release the wire. It does not adjust chamfer diameter in response to bond pad size parameters. Moreover, Matsusumi does not disclose or suggest determining and applying a variable diameter based on bond pad dimensions to accommodate different bond pad sizes during wire bonding.”
The examiner notes that every element of the Matsusumi capillary has an end point. While it appears the applicant intends for the end point to be the terminal end of the capillary this is not claimed. Thus, Matsusumi teaches an end point as claimed. As for determining the size of the diameter based on the bond pad, this is functional language and imparts no structural limitation to the claim. In fact, Matsusumi only needs to be capable of this function, which Matsusumi is since Matsusumi is structurally identical to the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS J GAMINO whose telephone number is (571)270-5826. The examiner can normally be reached M-F 9-6.
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, Keith Walker can be reached at 5712723458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARLOS J GAMINO/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735