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 with traverse of Group I, claims 1, 8, 12, 15, 20-21, and 23-28 in the reply filed on 9/30/2025 is acknowledged. The traversal is on the ground(s) that the inventions are unified. This is not found persuasive because each limitation held in common between the independent claims previously presented is disclosed by HACKSTEINER (WO 2020/169439), as previously described. However, as this action indicates allowable subject matter, applicant has the opportunity to amend the non-elected invention to contain allowable subject matter in order to rejoin withdrawn claims.
The requirement is still deemed proper and is therefore made FINAL.
Claims 29, 31, 36-37, 39, 41, and 43-44 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/30/2025.
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 1, 8, 12, 15, 20, 21, and 23-28 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 1 recites the limitation "the area of the holding device that surrounds the microchip" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the area of the holding device surrounding the microchip" in lines 10-11. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the electrically-conductive connection" in lines 17-18. There is insufficient antecedent basis for this limitation in the claim. This will be read as “the electrical connection”.
Claim 1 recites “film is attached when the polymer film is glued on with the application …” in lines 21-22, but this not defined because the claim does not require attachment or gluing on. Examiner suggests amending to language similar to “film is applied with the input of heat and application of pressing force”.
Claim 12 recites “a polymer film” in line 2, but does not define whether this refers to the polymer film” of claim 1. This will be read as “the polymer film”.
Claim 15 recites “a polymer film” in line 2, but does not define whether this refers to the polymer film” of claim 1. This will be read as “the polymer film”.
Claim 20 recites “a polymer film” in line 2, but does not define whether this refers to the polymer film” of claim 1. This will be read as “the polymer film”.
Claim 21 recites the limitation "the conductor film" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation "the face, the back side, and the edge" in line 2. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests amending to “a face, a back side, and the at least one edge”.
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: “holding device” in claims 1 and 28.
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.
The limitation “holding device” recites the generic place holder “device” coupled with the functional modifier “holding” without reciting sufficient structure to perform the function claimed. This will be interpreted as: structure 1, shown in figure 2, and equivalents thereof.
Allowable Subject Matter
Claims 1, 8, 12, 15, 20-21, and 23-28 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art of record is disclosed by HACKSTEINER (WO 2020/169439, which discloses loading a holding device with a microchip, applying a polymer film to a holding device surrounding and onto the substrate, producing an electrical connection between the microchip substrate and the area of the holding device surrounding the microchip substrate, performing a wet-chemical treatment, removing the polymer film, and extracting the treated microchip. However, the prior art of record does not teach or fairly suggest such a method wherein the polymer film is applied to the holding device and microchip substrate via heat and pressure, wherein the heat is applied via laser.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: WARABISKO et al. (US 2010/0193362), BASKER et al. (US 2009/0127121), HOMMA et al. (US 2003/0098241), OTANI et al. (US 2022/0143954), BASIT et al. (US 2021/0045252), and BREUER et al. (US 2002/0119079).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nickolas R Harm whose telephone number is (571)270-7605. The examiner can normally be reached 10:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICKOLAS R HARM/Examiner, Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745