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
Claims 4-7, 15, and 16 are withdrawn from further consideration pursuant to 37 CFR
1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Election was made without traverse in the reply filed on 8/07/2026.
Status of claims
The action is in reply to the Application filed on 7/26/2024. Claims 1-20 are currently pending.
Claims 4-7, 15, and 16 are withdrawn and claims 1-3, 8-14, and 17-20 are being examined.
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:
“Control module” in claim 8.
“Control module” in claim 17, line 7.
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 § 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.
(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.
Claim(s) 1-3, 13, and 14 is/are rejected under 35 U.S.C. 102a(1)(2) as being anticipated by Masaaki (DE 10149712 A1).
Regarding claim 1, Masaaki (DE 10149712 A1) teaches a grinding wheel (2; fig. 1; para. 15) comprising: a wheel body (4; fig. 5; para. 15) positioned over a wafer (38; fig. 3; para. 19); a plurality of wheel tips (36; fig. 5; para. 36) disposed on the wheel body (disposed on the underside of the wheel body as seen in annotated fig. 5 below; para. 18); and a support block (as annotated in fig. 5 below; para. 18) disposed on the wheel body (disposed on the underside of the wheel body as seen in annotated fig. 5 below; para. 18) and an outer side surface of each of the wheel tips (as annotated in fig. 5 below; para. 18).
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Regarding claim 2, Masaaki teaches the limitations of claim 1, as described above and further teaches wherein the support block has a lower surface (bottom surface of the support block; annotated fig. 5; para. 18) that is higher than a lower end of each of the wheel tips (lower end is considered the region towards the bottom face of the wheel tips, limitations met as seen in annotated fig. 5 above; para. 18).
Regarding claim 3, Masaaki teaches the limitations of claim 1, as described above and further teaches wherein the support block has an inner side surface (as annotated in fig. 5 above; para. 18) that contacts the outer side surface of each of the wheel tips (as shown in annotated fig. 5 above; para. 18).
Regarding claim 13, Masaaki teaches the limitations of claim 1, as described above and further teaches wherein the wheel body comprises: a wheel (as annotated in fig. 5 above; para. 18) arranged over the wafer (fig. 3; para. 22); and a base shank (as annotated in fig. 5 above; para. 18) arranged on an edge portion of a lower surface of the wheel (base shank is located at the radially outward edge of the wheel as seen in fig. 5 above), wherein the wheel tips are disposed on the base shank (the top face of the wheel tips are disposed on the bottom face of the base shank as seen in annotated fig. 5 above and fig. 6).
Regarding claim 14, Masaaki (DE 10149712 A1) teaches a grinding wheel (2; fig. 1; para. 15) comprising: a wheel (as annotated in fig. 5 below; para. 18) arranged over a wafer (fig. 3; para. 22); a base shank (as annotated in fig. 5 below; para. 18) arranged on an edge portion of a first surface of the wheel (edge portion is the bottom portion of the annotated wheel, limitation met as seen in annotated fig. 5 below; para. 18); a plurality of wheel tips (36; fig. 5; para. 36) arranged on a first surface of the base shank (as shown in annotated fig. 5 below; para. 18); and a support block (as annotated in fig. 5 below; para. 18) disposed on the base shank (disposed on the base shanks first surface, as shown in annotated fig. 5 below; para. 18) and an outer side surface of each of the wheel tips (as shown in annotated fig. 5 below; para. 18), wherein the support block has a first surface (first surface” is considered the bottom face of the support block; fig. 5; para. 18) that is higher than a first end of each of the wheel tips (“first end” is considered the region towards the bottom face of the wheel tips, limitations met as seen in annotated fig. 5 below; para. 18).
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Claim(s) 1, 8, and 17 is/are rejected under 35 U.S.C. 102a(1)(2) as being anticipated by Gon (KR 101547654 B1).
Regarding claim 1, Gon (KR 101547654 B1) discloses a grinding wheel (110; fig. 4; para. 21) comprising: a wheel body (110, 10 and 20; fig. 3; para. 19) positioned over a wafer (as seen in fig. 8; para. 34); a plurality of wheel tips (multiple tips seen on surface 70; fig. 3; para. 28) disposed on the wheel body (disposed on the wheel body via intermediate components; fig. 3; paras. 28 and 29); and a support block (30; fig. 3; para. 28) disposed on the wheel body (disposed on the wheel body via component 25; fig. 3; para. 28) and an outer side surface of each of the wheel tips (outer side surface, 80, is seen housed within 35; figs. 3 and 7; para. 29).
Regarding claim 8, Gon teaches the limitations of claim 1, as described above, and further teaches wherein the grinding wheel further comprises a control module (25, 40, 50, and 60; fig. 3; para. 32) that controls a position of the support block (paras. 28, 34 and 35; figs. 3 and 8).
Regarding claim 17, Gon (KR 101547654 B1) discloses a grinding wheel (110; fig. 4; para. 21) comprising: a wheel (110; fig. 4; para. 21) arranged over a wafer (as seen in fig. 8; para. 34); a base shank (20; fig. 3; para. 19) arranged on an edge portion of a lower surface of the wheel (“edge portion” is considered the outer radial portion of the wheel, limitations met as seen in fig. 4); a plurality of wheel tips (multiple tips seen on surface 70; fig. 7; para. 29) arranged on a lower surface of the base shank (arranged on the lower surface of the base shank via intermediate components 30 and 25; figs. 3 and 7; para. 28); a support block (30; fig. 3; para. 28) disposed on the base shank (disposed on the base shank via component 25; fig. 3; para. 28) and an outer side surface of each of the wheel tips outer side surface, component 80, is seen housed within 35; figs. 3 and 7; para. 29); and a control module (25, 40, 50, and 60; fig. 3; para. 32) that controls a position of the support block (paras.28, 34 and 35; figs. 3 and 8).
Allowable Subject Matter
Claims 9-12 and 18-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 9, Gon, emblematic of the best prior art, discloses the limitations of claim 8 as disclosed above, and further teaches wherein the control module comprises: a resilient member (60; fig. 3; para. 32) that movably connects the support block with the wheel body (figs. 3 and 8; paras. 28, 34 and 35) and a control block (20; fig. 3; para. 34);
However, Gon does not explicitly teach wherein the control block forms an air chamber between the control block and the support block and an air line formed in the control block to selectively supply air to the air chamber. There is no obvious combination to modify in a reference to overcome the stated limitations.
Claims 10-12 are objected to since they are dependent on claim 9.
Regarding claim 18, Gon, emblematic of the best prior art, discloses the limitations of claim 17 as disclosed above, and further teaches wherein the control module comprises: a resilient member (60; fig. 3; para. 32) that movably connects the support block with the base shank (support block pivots on the base shank via component 25; figs. 3 and 8; paras. 28, 34 and 35).
However, Gon does not explicitly teach wherein the control module comprises a control block that forms an air chamber between the control block and the support block and an air line formed in the control block to selectively supply air to the air chamber. There is no obvious combination to modify in a reference to overcome the stated limitations.
Claims 19 and 20 are objected to since they are dependent on claim 18.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL T. FARRELL whose telephone number is (571)270-0401. The examiner can normally be reached 8:00AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at (571) 272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL THADDUES FARRELL JR/Examiner, Art Unit 3723
/JOEL D CRANDALL/Examiner, Art Unit 3723
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