DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Elections/Restrictions
2. This office action is a response to Applicant's election filed on 04/27/2026 with traverse of Group I, sub-species I-1A, claims 1-2 for further examination. Claims 3-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The traversal is on the grounds that Although the claims of an application may be restricted to one of two or more claimed inventions if they are either independent or distinct, if the search and examination of all the claims in an application may be made without serious burden, then the examiner must examine them on the merits, even though they may include claims directed to independent or distinct inventions. MPEP 803. With regard the restriction requirement between Groups I, II, and III, Applicants note that there is a substantial overlap of common core elements (e.g., a printed circuit board, a solder paste printing unit, a solder mask cleaning unit, and a processor (or a control unit)) between the alleged Groups. In view of the substantial overlap, Applicants believe that a significant portion of the patents classified in either one of the alleged Group would naturally be found when searching another of the alleged Group. Furthermore, MPEP §808.02 states "[w]here, however, the classification is the same and the field of search is the same and there is no clear indication of separate future classification and field of search, no reasons exist for dividing among independent or related inventions." Applicants believe that it is very likely that Groups I, II, and III would be classified in a single class/subclass. In view of the above, Applicants submit that the search and examination of all the alleged Species (e.g., Species IA through Species 1F) may be made without serious burden, and therefore the Examiner would be able to consider the entire Groups on the merits without serious burden. Accordingly, Applicants submit that the restriction is improper at least because there would be no undue burden placed on the Examiner if the restriction requirement were not maintained. Additionally, Applicants note that the Examiner's election of species requirement for each Group is excessive. For example, dependent claims 2-7 are merely different example embodiments that fall under a single "genus" claim (e.g., claim 1). Under MPEP § 806.04, if a genus claim is found allowable, then the election of species becomes moot. Furthermore, the alleged subdivision effectively subdivided the case to the point where each claim is effectively its own "group," and thus violate the spirit of 35 U.S.C. § 121, which is intended to protect the USPTO from searching distinct inventions, not to force an applicant to file multiple divisional applications for one inventive concept.
This is not found persuasive because regardless of the search method, inventions with different limitations will require different search strategies, and the times to consider the relevancy of collective references would increase proportionality as well. Also, even though U.S. Patents disclosing apparatus species may be found in CPC subclass B23K, subgroup 3/0638, it is recognized that species of a solder printing apparatus are characterized as separate and distinct subject for inventive efforts. Thus it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention. The findings of different field of search would justify a serious burden on the examiner if restriction is not required. See MPEP 808.02.
Furthermore, the restriction requirement was based on these species are not obvious variants of each other based on the current record. As stated in the Office action dated 04/16/2026, the application contains claims directed to three patentably distinct species of the claimed invention as recited in claims 1-7, 8-14 & 15-20, respectively, wherein claim 1 is drawn to a solder printing apparatus comprising: a printed circuit board feeding unit configured to sequentially feed a plurality of printed circuit boards; a solder paste printing unit configured to locate a solder mask on each of the plurality of printed circuit boards fed by the printed circuit board feeding unit and print solder paste on each of the plurality of printed circuit boards through an opening of the solder mask; a solder mask cleaning unit configured to clean residual solder from the solder mask after the solder paste is printed by the solder paste printing unit; and a control unit configured to control the solder paste printing unit and the solder mask cleaning unit, wherein the control unit is further configured to differently set a printing parameter of the solder paste printing unit for each of the plurality of printed circuit boards according to a cleaning cycle count set for the solder mask; claim 8 is drawn to a solder printing apparatus comprising: a printed circuit board feeding unit configured to sequentially feed a plurality of printed circuit boards; a solder paste printing unit configured to locate a solder mask on each of the plurality of printed circuit boards sequentially fed by the printed circuit board feeding unit and print solder paste on each of the plurality of printed circuit boards; a solder mask cleaning unit configured to clean the solder mask; and a processor connected to the solder paste printing unit and the solder mask cleaning unit, wherein the plurality of printed circuit boards include a first printed circuit board group and a second printed circuit board group, and the processor is configured to, obtain a first printing parameter and a second printing parameter according to a cleaning cycle count set for the solder mask, and transmit information to the solder paste printing unit, the information instructing to print the solder paste to the first printed circuit board group according to the first printing parameter and print the solder paste to the second printed circuit board group according to the second printing parameter; and claim 15 is drawn to a solder printing apparatus comprising: a printed circuit board feeding unit configured to sequentially feed a plurality of printed circuit boards; a solder paste printing unit configured to locate a solder mask on each of the plurality of printed circuit boards sequentially fed by the printed circuit board feeding unit and print solder paste on each of the plurality of printed circuit boards; a solder mask cleaning unit configured to clean the solder mask; and a processor connected to the solder paste printing unit and the solder mask cleaning unit, wherein the processor is configured to classify the plurality of printed circuit boards into first to n-th printed circuit board groups based on a remainder value when a number of printed circuit board feeding times is divided by a cleaning cycle count set for the solder mask, where “n” is a positive integer, obtain first to n-th printing parameters respectively used to print the solder paste on the first to n-th printed circuit board groups, and transmit information to the solder paste printing unit, the information instructing to print the solder paste to each of the first to n-th printed circuit board groups.
Even further, Applicant further acknowledges dependent claims 2-7 are merely different example embodiments that fall under a single "genus" claim (e.g., claim 1).
Thus far, applicant has not proved or provided convincing argument that there is no material difference between the three species and numerous sub-species currently on the record. Therefore, the requirement is still deemed proper and is therefore made FINAL.
Priority
3. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 12/18/2023 is being considered by the examiner.
Claim Interpretation
5. 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-AlA 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: “printed circuit board feeding unit” in claim 1; “solder paste printing unit” in claim 1; “solder mask cleaning unit” in claim 1; “control unit” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AlA 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 wishes to provide further explanation or dispute the examiner' s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections
6. 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.
7. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Rejections - 35 USC § 102
8. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
9. Claims 1-2 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Tomomatsu et al. (US 20140102322 A1) hereinafter Tomomatsu (the terminology of the claims in the application is used, but the references of Tomomatsu are included between parentheses).
As regards to claim 1, Tomomatsu discloses a solder printing apparatus (abs; fig 1-7), comprising:
a printed circuit board feeding unit ([0010]; [0053]) configured to sequentially feed (printing of the one substrate is finished, printing of a next substrate is started) a plurality of printed circuit boards (2) ([0010]; [0018]-[0020]; [0053]; fig 1-7);
a solder paste printing unit (16) configured to locate a solder mask (13) on each of the plurality of printed circuit boards (2) fed by the printed circuit board feeding unit ([0010]; [0053]) and print solder paste on each of the plurality of printed circuit boards (2) through an opening (13h) of the solder mask (13) ([0007]-[0008]; [0010]; [0018]-[0020]; [0024]-[0026]; [0032]; [0040]-[0044]; [0051]-[0052]; fig 1-7);
a solder mask cleaning unit (18) configured to clean residual solder from the solder mask (13) after the solder paste is printed by the solder paste printing unit (16) ([0007]-[0008]; [0010]; [0018]-[0020]; [0024]-[0029]; [0032]; [0034]; [0040]-[0044]; [0047]-[0049]; [0051]-[0052]; fig 1-7); and
a control unit (19) configured to control the solder paste printing unit (16) and the solder mask cleaning unit (18), wherein the control unit (19) is further configured to differently set a printing parameter ([0005]; [0010]; [0053]-[0055]) of the solder paste printing unit (16) for each of the plurality of printed circuit boards (2) according to a cleaning cycle count set for the solder mask (13) ([0005]; [0007]-[0008]; [0010]; [0018]-[0020]; [0024]-[0029]; [0031]-[0035]; [0037]-[0049]; [0050]-[0055]; fig 1-7).
As regards to claim 2, Tomomatsu discloses a solder printing apparatus (abs; fig 1-7), wherein the printing parameter includes a squeegee speed, and a print count ([0005]; [0007]-[0008]; [0010]; [0018]-[0020]; [0024]-[0029]; [0031]-[0035]; [0037]-[0049]; [0050]-[0055]; fig 1-7).
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights