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 . This Office Action responds to the Application and IDS filed on 12/01/2023. Claims 1-22 are pending.
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 18-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: how the output data comprising supplementary data that includes information regarding one or more trace elements for one or more locations in a layer for a PCB, are used during the fabrication and leveraging steps. For examination purposes, this particular is inoperative; therefore, any type of data that allows the fabrication and post-processing to occur would meet the limitations of the claims.
Applicant may want to insert, --using the supplementary data—after “fabrication” (line 7) and after “post-processing” (last line) to provide for this omission.
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) 21-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bora et al. (US Patent Application Publication No. 2010/0270066 A1).
As per claims 21-22¸Applicant should note that the claims are directed to a product by a process claim. [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (see also MEPP section 213). The product in these claims comprises a PBC having one or more trace elements formed in one or more locations in a layer of the PCB. As described in paragraphs [0012], [0018], [0020], Bora et al. teach that there are several conductive traces formed in the one or more locations in a layer of the PCB.
Claim(s) 18-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Caprio et al. (US Patent Application Publication No. US 2023/0026067 A1).
As per claim 18, Fig. 10 illustrates the elements of the claims, wherein the one or more trace elements are formed in the layer during fabrication is performed at block 22 (which is based on the design PCB board data in block 20) and one or more trace elements are leveraged during post-processing are performed at blocks 24-26; wherein since the supplemental data that includes information regarding one or more trace elements for one or more locations in a layer for the PCB, is inoperative as discussed in the rejections of claims 18-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph above and wherein the design PCB board at block 20 and shorting stub at block 21 would contain the data used for manufacturing at block 22, wherein the data for back-filling (which is a post-processing step) at block 25, would be used for the post-processing step at block 26 (see also paragraphs [0087]-[0088], [0094]-[0096]).
As per claim 19, the elements of claim 18, from which the claim depends, are discussed in the rejection of claim 18 above, wherein as illustrated in Fig. 10, the adjustment data outputted at block 25 would be adjusted or modified to the original the design data as outputted at blocks (20-21) (therefore, this modified data would not be separate or distinct from the design data) to allow for the post-processing at block 26 (see also paragraphs [0094]-[0096]).
As per claim 20¸ the elements of claim 18, from which the claim depends, are discussed in the rejection of claim 18 above, wherein the information comprises one or more graphics that corresponds to the one or more trace elements which are also illustrated in Fig. 10 (i.e., shorting traces 10 added at block 21—see also paragraph [0088]).
As per claims 21-22¸Applicant should note that the claims are directed to a product by a process claim. [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (see also MEPP section 213). The product in these claims comprises a PBC having one or more trace elements formed in one or more locations in a layer of the PCB. Caprio et al. teach that there are several conductive traces formed in the one or more locations in a layer of the PCB as illustrated in Fig. 2A (i.e., traces 16, 6 located on a layer as shown).
Allowable Subject Matter
Claims 1-17 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
As per claims 1-17, the independent claims 1 and 15, from which the respective claims depend, recite the device/non-transitory machine-readable medium comprising a combination of inventive steps/operations comprising generating output data for facilitating fabrication and post-processing of the PCB, wherein the output data includes the supplementary data, and wherein the supplementary data enables the one or more trace elements to be formed in the layer during the fabrication of the PCB and leveraged during the post-processing of the PCB, as claimed, which the prior arts made of record failed to teach or suggest as claimed. Furthermore, under the 2019 Patent Eligibility Guideline, the claims are directed to patent eligible subject matter because (1) under Step 1, the claims are directed to a process, article of manufacture and machine, respectively; (2) under Step 2A, Prong One, the claims are not directed to mathematical concepts comprising mathematical relationships, mathematical formulas or equations, and mathematical calculations since no expressed equation or formula is recited in the claims; nor are the claims directed to a mental process since one of ordinary skilled in the art at the time of the filing of the invention, would NOT reasonably be able to perform the method mentally since the calculations would involve large amount of data associated with the electronic design, as normally found in the art of computer-aided design and analysis of circuits; nor are the claims directed to certain methods of organizing human activity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHALLAKA KIK whose telephone number is (571)272-1895. The examiner can normally be reached Maxiflex Mon-Fri 8:30AM-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, Jack Chiang can be reached at 5712727483. 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.
Any response to this action should be mailed to:
Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450
or faxed to:
571-273-8300
/PHALLAKA KIK/Primary Examiner, Art Unit 2851 September 5, 2026
Prosecution Insights