DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is responsive to an Application filed on 05/30/2024.
Currently, claims 1-5 are examined as below.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Acknowledgment is made of applicant's Information Disclosure Statement (IDS) filed on 07/01/2024. The IDS has been considered.
Claim Rejections - 35 USC § 102/103
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.
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.
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by US 2016/0320426 A1 to Boysel et al. (“Boysel”) or, in the alternative, under pre-AIA 35 U.S.C. 103 as obvious over Boysel.
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Regarding independent claim 1, Boysel in Figs. 2A, 2G and 3 teaches a micromechanical component 2000 (Fig. 2G & ¶ 52, integrated MEMS system 2000), comprising:
an arrangement of external electrical contacts 2124, 2126, 2228, 2230 (Fig. 2A, bond pads 2124, 2126, 2228, 2230) for contacting on a printed circuit board 300 (Fig. 2G, ¶ 66, PCB 300, and bond pads of the component 2000 are bonded (i.e., contactable) to the PCB 300 via solder bumps 45), the component 2000 being contactable in a first soldering configuration 45 (Figs. 2A, 2G, ¶ 66, one of the solder bumps 45), and the component is contactable in at least one second soldering configuration 45 (Figs. 2A, 2G, ¶ 66, the other one of the solder bumps 45), wherein a calibration data set (Fig. 3, ¶ 60, ¶ 67-¶ 68, data for calibration) is configurable for the first soldering configuration 45 or the second soldering configuration 45 (see Note below).
Note: A limitation of “is configurable for the first soldering configuration or the second soldering configuration” is attempting to define the claimed calibration data set by what it does, rather than by what it is, which can be evidenced by its specific structure or specific composition. See MPEP § 2173.05(g). The limitation can be construed as a function and/or a property of the claimed micromechanical component.
According to Section 2114 of the MPEP, "While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original)".
Here, since Boysel teaches all of the claimed structure limitations of the claimed micromechanical component, the micromechanical component taught by Boysel is capable of performing the claimed function as recited in the limitation above.
Furthermore, according to Section 2112.III of the MPEP, "Where applicant claims a composition in terms of a function, property or characteristic{,} and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims {underlined for emphasis}."
Here, the limitation does not structurally distinguish the claimed calibration data set over the prior art as is it directed to a function or property of the claimed micromechanical component. The micromechanical component including inherently has the property or can function as recited in the limitation above.
Regarding claim 2, Boysel in Figs. 2G and 3 further teaches the component 2000, 3000 (¶ 52, ¶ 67, integrated MEMS system 2000 or 10-DOF-IMU system 3000) includes an internal memory 3246 (Fig. 3, ¶ 62, ¶ 68, memory 3246), in which a first calibration data set for the first soldering configuration 45 and/or a second calibration data set for the second soldering configuration 45 is selectably stored (see Note below).
Note: A limitation of “in which a first calibration data set for the first soldering configuration and/or a second calibration data set for the second soldering configuration is selectably stored” is attempting to define the claimed internal memory by what it does, rather than by what it is, which can be evidenced by its specific structure or specific composition. See MPEP § 2173.05(g). The limitation can be construed as a function and/or a property of the claimed micromechanical component.
According to Section 2114 of the MPEP, "While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original)".
Here, since Boysel teaches all of the claimed structure limitations of the claimed micromechanical component, the micromechanical component taught by Boysel is capable of performing the claimed function as recited in the limitation above.
Furthermore, according to Section 2112.III of the MPEP, "Where applicant claims a composition in terms of a function, property or characteristic{,} and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims {underlined for emphasis}."
Here, the limitation does not structurally distinguish the claimed internal memory over the prior art as is it directed to a function or property of the claimed micromechanical component. The micromechanical component including inherently has the property or can function as recited in the limitation above.
Regarding claim 3, Boysel in Figs. 2G and 3 further teaches the component 2000, 3000 includes an internal memory 3246 (Fig. 3, ¶ 62, ¶ 68, memory 3246), in which are stored a basic calibration data set as a first calibration data set for the first soldering configuration 45 and difference values, in relation to the basic calibration data set, for determining a second calibration data set for the second soldering configuration 45 (see Note below).
Note: A limitation of “in which are stored a basic calibration data set as a first calibration data set for the first soldering configuration and difference values, in relation to the basic calibration data set, for determining a second calibration data set for the second soldering configuration” is attempting to define the claimed internal memory by what it does, rather than by what it is, which can be evidenced by its specific structure or specific composition. See MPEP § 2173.05(g). The limitation can be construed as a function and/or a property of the claimed micromechanical component.
According to Section 2114 of the MPEP, "While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original)".
Here, since Boysel teaches all of the claimed structure limitations of the claimed micromechanical component, the micromechanical component taught by Boysel is capable of performing the claimed function as recited in the limitation above.
Furthermore, according to Section 2112.III of the MPEP, "Where applicant claims a composition in terms of a function, property or characteristic{,} and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims {underlined for emphasis}."
Here, the limitation does not structurally distinguish the claimed internal memory over the prior art as is it directed to a function or property of the claimed micromechanical component. The micromechanical component including inherently has the property or can function as recited in the limitation above.
Regarding claim 5, Boysel in Figs. 2G and 3 further teaches the component 2000, 3000 is configured to automatically detect its soldering configuration 45 (see Note below).
Note: A limitation of “is configured to automatically detect its soldering configuration” is attempting to define the claimed micromechanical component by what it does, rather than by what it is, which can be evidenced by its specific structure or specific composition. See MPEP § 2173.05(g). The limitation can be construed as a function and/or a property of the claimed micromechanical component.
According to Section 2114 of the MPEP, "While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original)".
Here, since Boysel teaches all of the claimed structure limitations of the claimed micromechanical component, the micromechanical component taught by Boysel is capable of performing the claimed function as recited in the limitation above.
Furthermore, according to Section 2112.III of the MPEP, "Where applicant claims a composition in terms of a function, property or characteristic{,} and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims {underlined for emphasis}."
Here, the limitation does not structurally distinguish the claimed micromechanical component over the prior art as is it directed to a function or property of the claimed micromechanical component. The micromechanical component including inherently has the property or can function as recited in the limitation above.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claim 4 objected to as being dependent upon a rejected base claim, but would be allowable if (i) rewritten in independent form to include all of the limitations of the base claim and any intervening claims or (ii) the objected claim and any intervening claims are fully incorporated into the base claim.
Claim 4 would be allowable, because the prior art of record, singularly or in combination, fails to disclose or suggest, in combination with the other claimed elements in claim 4, wherein the component has a type-specific or individual serial number, and a first calibration data set for the first soldering configuration and/or a second calibration data set for the second soldering configuration and/or a difference value to a basic calibration data set is retrievably stored in an external database or a host processor in a manner assigned to the serial number.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2009/0194829 A1 to Chung et al. relates to a MEMS package comprising one or more MEMS dies, a cap section having one or more integrated circuit (IC) dies, and a packaging substrate or a printed circuit board (PCB) arranged in a stacking manner, in which connectors, such as through-silicon-vias (TSVs), are formed to provide short electrical connections between the various components.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIKKA LIU whose telephone number is (571)272-2568. The examiner can normally be reached on 9AM-5AM EST M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eliseo Ramos-Feliciano can be reached on 571-272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.L./Examiner, Art Unit 2817
/ELISEO RAMOS FELICIANO/Supervisory Patent Examiner, Art Unit 2817
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