NON-FINAL OFFICE ACTION
This non-final office action addresses U.S. Application No. 18/792,179, which is a broadening reissue application of U.S. Application No. 17/764,012 (hereinafter the “012 Application"), entitled TEST APPARATUS FOR SEMICONDUCTOR CHIPS WITH FINE-PITCH BUMPS, which issued as U.S. Patent No. 11,828,792 (hereinafter the “792 Patent") on November 28, 2023.
The status of the claims is as follows:
Claims 10-22 are pending and examined.
Claims 10-22 are rejected.
TABLE OF CONTENTS
I. STATUS OF CLAIMS 3
II. PRIORITY AND RELATED PATENTS 3
III. OBJECTION TO SPECIFICATION 3
IV. REJECTIONS – 35 U.S.C. §251 4
IV.A. Rejection Based on Original Patent Requirement 4
V. REISSUE OATH/DECLARATION 8
VI. CLAIM INTERPRETATION 9
VI.A. Lexicographic Definitions 10
VI.B. Claim Interpretation Under 35 U.S.C. §112(f) 10
VI.C. Conclusion of Claim Interpretation 21
VII. CLAIM REJECTIONS 35 U.S.C. §112 21
VII.A. Indefiniteness Rejection of Claims 10-22 21
VII.B. Written Description Rejection Claims 10-22 22
VII.C. Written Description Rejection Claims 12, 14, 21 and 22 23
VIII. CLAIM REJECTIONS – 35 U.S.C. §251 24
IX. COMPACT PROSECUTION 25
X. CLAIM REJECTIONS – 35 U.S.C. §102 25
X.A. Anticipation Rejections Applying Kikuchi 25
XI. PRIOR OR CONCURRENT PROCEEDINGS 31
XII. INFORMATION MATERIAL TO PATENTABILITY 32
XIII. CONCLUSION 32
I. STATUS OF CLAIMS
The 792 Patent issued with claims 1-9.
Applicant filed a preliminary amendment on August 1, 2024 (hereinafter the "2024 Preliminary Amendment") along with the filing of the present application. In the 2024 Preliminary Amendment, patent claims 1-9 were cancelled and claims 10-22 were added.
Therefore, claims 10-22 are pending and will be examined.
II. PRIORITY AND RELATED PATENTS
Examiners acknowledge that the present application is a reissue of the 012 Application, now the 792 Patent, which was the national stage of PCT/KR2020/012114, filed September 8, 2020. Examiners further acknowledge the claim of foreign priority to Korean Application No. KR10-2019-0156584, filed November 29, 2019.
III. OBJECTION TO SPECIFICATION
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter, specifically, the “detecting unit” and “device alignment section” as recited in claims 10-14. See 37 CFR §1.75(d)(1) and MPEP §608.01(o). Correction is required to provide proper antecedent basis in the specification for these phrases.
IV. REJECTIONS – 35 U.S.C. §251
35 U.S.C. §251 Reissue of defective patents.
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
IV.A. Rejection Based on Original Patent Requirement
MPEP §1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP §1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
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(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
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(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The Fed. Cir. addressed the “original patent” requirement in Antares Pharma, Inc. v. Medac Pharma Inc., 112 USPQ2d 1865 (Fed. Cir. 2014). The court stated that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.” Antares, 112 USPQ2d at 1868 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals). Further, the court stated “‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 112 USPQ2d at 1871 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals) (citation omitted), or that “the exact embodiment claimed on reissue [be] expressly disclosed in the specification.” Id.
Recently, the Fed. Cir. stated:
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[I]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus Chems, 315 US at 676 (emphasis in Forum US). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362.1
Claims 10-14 are rejected under 35 U.S.C. §251 because they are not for the same invention as that disclosed as being the invention in the original patent.
Claims 10-14
First for example, Examiners find that each of patent claims 1-9 of the 792 Patent is directed to a test apparatus and recites and requires a main body, a loading part, a loading picker, a vacuum chuck, a device alignment part, a tester and an unloading picker. Upon comparison with the patent claims, Examiners find new claims 10-14 in this have been broadened to be directed to only a device alignment apparatus and do not recite or require any a main body, a loading part, a loading picker, a tester and an unloading picker. Thus, the new invention now being claimed in claims 10-24 is directed to only a portion of the overall test apparatus that was claimed in the original patent, i.e., the 792 Patent. Such is confirmed by Applicant in the Reissue Declaration filed August 1, 2024 (hereinafter the “2024 Reissue Declaration”) wherein Applicant states “new claim 10 has been added to delete claim recitations that are overlimited” and that “at least one submitted reissue claims is broader in scope than the issued independent claim 1.”
However, Examiners do not find an unequivocal disclosure in the 792 Patent for this new invention, i.e., the device alignment apparatus separate from the test apparatus. For example, for the 792 Patent, the title of the invention is a “[t]est apparatus” and the summary the invention states “in order to achieve the invention, …,there is provided a test apparatus” (See 792 Patent col. 2, lines 8-10). Furthermore, following a review of the entirety of the 792 Patent, Examiners find only one embodiment of the invention, which is discussed as having at least all the components of the main body, the loading part, the loading picker, the vacuum chuck, the device alignment part, the tester and the unloading picker. Thus, Examiners are unable to find any unequivocal support for a disclosure of the device alignment apparatus separate from the overall test apparatus.
As noted above, the original patent requirement puts a limit on the manner to which reissue applicants can broaden the patent claims in reissue. Specifically, claims that are broadened in reissue that cover a new scope/class of invention must have an unequivocal disclosure on the face of the original patent for that new class of invention as a separate invention. Following a careful review of claims 10-14 in this reissue application with respect to the patent claims as patented in the 792 Patent, Examiners find the new scope of claims 10-14 covers a new invention that is not unequivocally disclosed on the face the 792 Patent, i.e., Examiners do not find an unequivocal disclosure or a discussion of the new invention of providing a device alignment apparatus separate from the test apparatus. Rather Examiners find that the removed portions of the test apparatus to arrive at claims 10-14 are critical and required features of the invention to operate as a test apparatus according to the disclosure of the Patent. Thus, Examiners conclude claims 10-14 presented in this reissue application fail the original patent requirement and thus are rejected under 35 U.S.C. §251.
Examiners find this factual situation is similar to the factual situation presented to the Federal Circuit in the Antares Pharma v. Medac Pharma, GMBH.2 In that case, the Court found that the original patent claims were focused on jet injectors, that the specification disclosed only one general embodiment/class of jet injectors, the title was directed to jet injector, the summary of inventions was directed to the jet injector. Id. At 1362. Further, the Court noted that “[a]lthough safety features were mentioned in the specification, they were never described separately from the jet injector, nor were the particular combinations of safety features claimed on reissue ever disclosed in the specification” and “[r]ather, the safety features were serially mentioned as part of the broader conversation...” Id. At 1363. Thus, the Court did not find the claims in reissue which were directed to the safety features without limitation to the jet injectors had unequivocal support in the underlying patent.
In the present reissue, Examiners similarly find original claims of the 792 Patent and the 792 Patent as a whole are focused on the test apparatus comprising the features recited in claim 1 of the 792. Examiners do not find the device alignment apparatus was separately described from the overall test apparatus and specifically find the device alignment apparatus was only “serially mentioned as part” of the overall test apparatus. Accordingly, Examiners conclude that claims 10-14 directed solely to the device alignment apparatus do not have unequivocal support in the 792 Patent and thus are not proper claims in reissue under the original patent requirement following the same reasoning as held in Antares Pharma.
V. REISSUE OATH/DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
The 2024 Reissue Declaration filed along with this reissue application is acknowledged. Examiners acknowledge a proper error is stated wherein “[t]he basis for filing the present reissue application is that the patentee claimed less than what he was entitle to claim by filing to include at least one claim directed to a device alignment method.” Accordingly, Examiners find the 2024 Reissue Declaration properly states an error on which to base this reissue.
Examiners do note that the 2024 Reissue Declaration also states another error, but is an improper error, wherein Applicant states an intention to simply “delete claim recitations that are overlimited” in claim 10. As provided above, Examiners find the presentation of claims 10-14 is improper under the original patent requirement. Thus, this error is not a valid basis on which to base this reissue.
Nevertheless, as noted above, Applicant has identified at least one proper error on which to base this reissue, and thus the 2024 Reissue Declaration is accepted even thought it also states an improper error.
VI. CLAIM INTERPRETATION
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II). Therefore, unless one of the exceptions applies below, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation.
VI.A. Lexicographic Definitions
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. See MPEP §2111.01(IV). Following an independent review of the claims in view of the specification herein, Examiners find that Patent Owner has not provided any lexicographic definitions related to claim terms with any reasonable clarity, deliberateness and precision.
VI.B. Claim Interpretation Under 35 U.S.C. §112(f)
A second exception to the prohibition of reading limitations from the specification into the claims is when the claimed feature is written as a means-plus-function or a step-plus-function. See 35 U.S.C. §112(f) and MPEP §2181-2183.
As noted in Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015), there is a presumption that claim terms with the word “means” invoke §112(f) and that claim terms without the word “means” do not. Williamson, 792 F.3d at 1348. This presumption is rebuttable if a challenger demonstrates that a claim term either fails to “recite sufficiently definite structure” (WIT1) or else recites “function without reciting sufficient structure for performing that function” (WIT2) Williamson, 792 F.3d at 1348. WIT1 and WIT2 are in the alternative and thus a challenger need only demonstrate one of WIT1 or WIT2 for the claims to invoke §112(f). The presumption against means-plus-function claiming is not “strong” and that a challenger need not show that the limitation is essentially devoid of anything that can be construed as structure; rather a challenger need only show that the structure is not sufficient for performing the claimed function. See Id. Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See TriMed, Inc. v. Stryker Corp. 4514 F.3d 1256, 1259 (Fed. Cir. 2008).
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II) and Williamson, 792 F.3d at 1351.
Examiners find herein that claims 10-14 include one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. §112(f) because the claim limitations use 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. Each such limitation will be discussed in turn as follows.
VI.B1. FL #1: “detecting unit…” (Claims 10-14)
A first means-plus-function phrase is recited in claim 10 (and included in each of dependent claims 11-14), which recites “a detecting unit…” or hereinafter FL #1. Examiners determine herein that FL #1 meets the test of Williamson as discussed above and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(f).
The Examiners find that FL #1 in claim 10 recites:
a detecting unit configured to detect a position of the device place on the vacuum chuck...
(B1)(a) Claim Phrase FL #1 Functional
Examiners find that FL #1 is functional. While this claim limitation recites a unit, the claim limits this unit based on in functionality rather than its underlying structures. For example, FL #1 recites the functionality of the unit to “detect” and “to detect a position of the device place on the vacuum chuck.” However, Examiners do not find any further limitation to the structure of the unit or any limitations of the nature of how the detection is performed.
Examiners further note that because nothing in the written description contradicts the plain language describing this function, the functions within FL #1 will have their ordinary and accustomed meaning.
(B1)(b) Claim Phrase FL #1 Invokes
FL #1 invokes 35 U.S.C. §112(f) because "means ... for" type language is recited. Examiners first find that “unit” is a generic placeholder or nonce term equivalent to “means” because while the term “unit” does imply some structure, it does not convey any specific structure and/or is an ambiguous structure. Furthermore, “unit” has been held by the Federal Circuit to be a nonce term. See MPEP §2181(I)(A). Examiners further note that the specification of the present specification does not define “unit” or use the phrase “detecting unit” and thus the specification of the present specification does not impart or disclose any specific structure for the phrase.
In view of the forgoing findings, Examiners find that while unit implies some generic structure, Examiners find nothing in the specification, prosecution history or the prior art to construe “unit” or “detecting unit” in FL #1 as the name of a sufficiently definite structure for performing the functions recited in FL #1 so as to take the overall claim limitation out of the ambit of §112(f). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015). Rather Examiners find that unit is merely used in a generic sense as a nonce term equivalent to means as a generic base structure which has a special configuration to perform the special functions recited in FL #1. Accordingly, Examiners do not find that the simple use of unit or detecting unit alone is a sufficient structure for performing the claimed functions recited in FL #1 and thus conclude FL #1 invokes interpretation under 35 U.S.C. §112(f).
(B1)(c) Corresponding Structure
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II).
Based on a review of the specific functions recited in FL #1, Examiners find the only plausible structure that performs the function of detecting a position of the device place on the vacuum chuck is the first alignment vision 88, which as stated at col. 5, lines 42-46 of the 792 Patent which states “a first alignment vision 88 installed on the moving body 83 so as to check the positions of the devices 30 suctioned by the vacuum chuck 50 through the through hole 85a of the alignment jig block 85 and to inform the control unit of coordinate values of the positions.” However, Examiners do not find a disclosure of how this “vision” works or the underlying structures of this first alignment vision 88. Rather Examiners find the drawings show this first alignment unit as merely a box in FIG. 7 and further Examiners find the specification does not disclose the manner to which this “vision” is performed. For example, does it use LIDAR, image analysis, electromagnetic measuring, etc.? Examiners are thus unable to clearly link the functions recited in FIG. #1 with specific structures in the specification of the 792 Patent.
Nevertheless, as noted in 35 U.S.C. §112(f), a limitation invoking this statute will be limited to these corresponding structures and equivalents thereof as disclosed in the specification. Thus, based on the lack of disclosure of corresponding structures, Examiners will interpret FL #1 as merely any structures that detect a position of a device place on a vacuum chuck.
VI.B2. FL #2: “device alignment section…” (Claims 10-14)
A further means-plus-function phrase is recited in claim 10 (and included in each of dependent claims 11-14), which recites “a device alignment section…” or hereinafter FL #2. Examiners determine herein that FL #2 meets the test of Williamson as discussed above and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(f).
The Examiners find that FL #2 in claim 10 recites:
a device alignment section configured to align the device attached to the vacuum chuck by the first vacuum pressure in x, y, and θ directions according to a notification from the detecting unit...
(B2)(a) Claim Phrase FL #2 Functional
Examiners find that FL #2 is functional. While this claim limitation recites a “section,” the claim limits this section based on in functionality rather than its underlying structures. For example, FL #2 recites the functionality of the section for “device alignment” and “to align the device attached to the vacuum chuck by the first vacuum pressure in x, y, and θ directions according to a notification from the detecting unit.” These functions imply the section receives some notification from the detecting unit and aligns the device on the basis thereof. However, Examiners do not find any further limitation to the structure of the section or any limitations of the nature of how the notification is received or the alignment is performed.
Examiners further note that because nothing in the written description contradicts the plain language describing this function, the functions within FL #2 will have their ordinary and accustomed meaning.
(B2)(b) Claim Phrase FL #2 Invokes
FL #2 invokes 35 U.S.C. §112(f) because "means ... for" type language is recited. Examiners first find that “section” is a generic placeholder or nonce term equivalent to “means” because while the term “unit” does imply some structure, it does not convey any specific structure and/or is an ambiguous structure. Furthermore, Examiners find section merely refers a distinct part of a larger system, but does imply any specific part or structures. Examiners further note that the specification of the present specification does not define or use the phrase “device alignment section” and thus the specification of the present specification does not impart or disclose any specific structure for the phrase.
In view of the forgoing findings, Examiners find that while section implies some generic structure, Examiners find nothing in the specification, prosecution history or the prior art to construe “section” or “device alignment section” in FL #2 as the name of a sufficiently definite structure for performing the functions recited in FL #2 so as to take the overall claim limitation out of the ambit of §112(f). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015). Rather Examiners find that section is merely used in a generic sense as a nonce term equivalent to means as a generic base structure which has a special configuration to perform the special functions recited in FL #2. Accordingly, Examiners do not find that the simple use of unit or detecting unit alone is a sufficient for performing the claimed functions recited in FL #2 and thus conclude FL #2 invokes interpretation under 35 U.S.C. §112(f).
(B2)(c) Corresponding Structure
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II).
Based on a review of the specific functions recited in FL #2, particularly the functions of receipt of a notification from the detecting unit and according alignment of the device on the vacuum, Examiners find the structures that performs the functions are a combination of a control unit and the device alignment part 80 shown in FIGS. 6 and 7, which comprises “the device alignment part 80 includes an X-axis rail 81 installed on the main body 20, a Y-axis rail 82 installed on the X-axis rail 81 so as to move along the X-axis rail 82, a moving body 83 installed on the Y-axis rail 82” and these components “correct the position of the device 30 suctioned by the vacuum chuck 50” and “an θ-axis compensation motor 87” as stated at col. 5, lines 29-42.
Furthermore, at col. 5, lines the 792 Patent, “a first alignment vision 88 installed on the moving body 83 so as to check the positions of the devices 30 suctioned by the vacuum chuck 50 through the through hole 85a of the alignment jig block 85 and to inform the control unit of coordinate values of the positions.” Furthermore, at col. 7, lines 33-34, the 792 Patent states “the control unit calculates the correction position of devices 30.” Finally, at col. 7, lines 59-62, the 792 Patent states “the control unit controls so that the device 30 is pushed by the set value by the alignment jig 86” and “the position of the device 30 is corrected and then the device 30 is correctly aligned.”
However, Examiners are unable find the specific structures of the control unit. Such a control unit is not shown in any drawings nor do Examiners find a disclosure as to what are its underlying structures. Furthermore, several places in the specification of the 792 Patent explicitly states the control unit is “not shown.” Additionally, Examiners do not find a disclosure of any algorithm or other structure of how this undisclosed control unit “calculates the correct position” or the manner to the control unit “controls” the other structures of the device alignment part 80.
Nevertheless, as noted in 35 U.S.C. §112(f), a limitation invoking this statute will be limited to these corresponding structures and equivalents thereof as disclosed in the specification. Thus, based on the lack of disclosure of corresponding structures, Examiners will interpret FL #2 as merely the general structures of the device alignment part 80 as discussed above, including X and Y axis rails with motors for moving the device in the X and Y directions and an θ-axis motor for rotating the device.
Accordingly, while Examiners are able to find some structures for performing the functions of FL #2, i.e., the noted features of the device alignment part, Examiners are thus unable to clearly link all the functions recited in FIG. #2 with specific structures in the specification of the 792 Patent pertaining to the control unit.
VI.B3. FL #3: step of “detecting…” (Claims 15-22)
A first step-plus-function phrase is recited in claim 15 (and included in each of dependent claims 16-22), which recites a step of “detecting coordinate values…” or hereinafter FL #3. Examiners determine herein that FL #3 meets the test of Seal-Flex3 and thus will be interpreted as a step-plus-function limitation under 35 U.S.C. §112(f).
The Examiners find that FL #3 in claim 15 recites the step of:
detecting coordinate values of the device attached to vacuum chuck by the first vacuum pressure;
(B3)(a) Prong A Analysis – Function Without Acts
As an initial matter, the Examiner finds that FL #3 explicitly uses the format of “step for,” i.e., reciting a step of “detecting” in a method comprising several steps. Second, Examiners find that FL #3 recites nothing more than the underlying function of detecting coordinate values of a device attached to a vacuum chuck, i.e., what FL #3 ultimately accomplishes, rather than how this step is accomplished. For a system to detect coordinate values of a device on a vacuum chuck, Examiners find there would be a plurality of acts necessary to arrive at such coordinate values, i.e., this function would not comprise a single step or act. Examiners further find that no acts are recited in FL #3 in order to obtain these coordinate values, rather FL #3 recites only the intended end result. Accordingly, Examiners find FL #3 falls within §112(f) because it recites only the underlying functional accomplishment of detecting coordinate values without recitation of sufficient acts for performing that function and thus meets invocation Prong (A). See MPEP §2181.
(B3)(b) Prong B Analysis - Function
Based upon a review of FL #3, the Examiner finds that the function associated therewith is “detecting coordinate values of the device attached to vacuum chuck by the first vacuum pressure” as explicitly recited in claim 15. See MPEP §2181. Additionally, the Examiner notes that because nothing in the written description contradicts the plain language describing this function, the function within FL #3 will have its ordinary and accustomed meaning.
(B3)(c) Prong C Analysis – Insufficient Acts for Performing
Based upon a review of the entire FL #3, the Examiner finds that FL #3 does not recite sufficient acts for performing the entire claimed function that is set forth within FL #3. In fact, the Examiner finds that FL #3 recites no acts for performing the claimed function, rather Examiners find claim 15 recites only the underlying function or intended result of detecting coordinate values. Because FL #3 does not contain sufficient acts for performing the entire claimed function, the Examiner concludes that FL #3 meets invocation Prong (C). See MPEP §2181.
(B3)(d) Corresponding Acts
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding acts as described in the specification for performing the recited function. See MPEP §2181(II).
Based on a review of the specific function recited in FL #3, Examiners find the specification of the 792 Patent merely repeats the function and fails to disclose the particular structures for performing this function. For example, col. 5, lines 42-46 of the 792 Patent states “a first alignment vision 88 installed on the moving body 83 so as to check the positions of the devices 30 suctioned by the vacuum chuck 50 through the through hole 85a of the alignment jig block 85 and to inform the control unit of coordinate values of the positions.” However, Examiners do not find the 792 Patent discloses the what an “alignment vision” is or any processing or algorithm how it determines or “detects” coordinate values.
Additionally, Examiners find that some sort of sensing or imaging device is required to obtain data related to position of the device on the vacuum chuck. Further, Examiners find some sort of computer or processor would be required to take this data a calculate coordinate values. Thus, Examiners find FL #3 would be a computer implemented limitation, requiring detection and processing. For a computer-implemented 35 U.S.C. §112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function. See MPEP 2181. However, Examiners are unable to determine from the 792 Patent what device is capturing the data and further are unable to determine how this data is processed to determine the “coordinate values.” Accordingly, Examiners are unable to clearly link the functions of FL #3 with sufficient acts to perform the function.
Nevertheless, as noted in 35 U.S.C. §112(f), a limitation invoking this statute will be limited to these corresponding acts and equivalents thereof as disclosed in the specification. Thus, for purposes of examination, Examiners will interpret FL #3 as disclosed in the specification, as merely a general idea or notion of detecting coordinate values.
VI.C. Conclusion of Claim Interpretation
In view of forgoing findings, Examiners will interpret FL #1, FL #2 and FL #3 in claims 10-22 as provided above. Because the remaining claim limitations in claims 10-22 are not lexicographically defined, Examiners will interpret the remaining claim limitations using the broadest reasonable interpretation.
VII. CLAIM REJECTIONS 35 U.S.C. §112
The following is a quotation of the first paragraph of 35 U.S.C. §112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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.
VII.A. Indefiniteness Rejection of Claims 10-22
Claim limitations FL #1, FL #2 and FL #3 invoke 35 U.S.C. §112(f). However, as discussed above in the claim interpretation section, Examiners find the written description fails to disclose the corresponding structure and material for performing the entire claimed function and to clearly link the structure and material to the functions recited in each of FL #1 and FL #2. Furthermore, Examiners find the written description fails to disclose the corresponding acts for performing the entire claimed function and to clearly link acts to the function recited in each of FL #3. Therefore, claims 10-22 are indefinite and are rejected under 35 U.S.C. §112(b).
VII.B. Written Description Rejection Claims 10-22
Claim 10-22 are rejected under 35 U.S.C. §112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Examiners first find that claims 10-22 are generally directed to a computer implemented invention along with structures for testing a device, i.e., a semiconductor chip, and specifically to providing a proper alignment of the device on a vacuum chuck. For example, the claims, via either the apparatus of claims 10-14 or the method of claims 15-22, require a detection of a position of a device on the vacuum chuck. Furthermore, an alignment section receives this position information (coordinate values) and moves the device in some manner. Examiners thus find some sort of processing unit would be required to first determine the device position and second to control the alignment section to further move the device into some alignment. Thus, Examiners find the invention, while requiring some structural features, would further require a computing device or processor in some manner to calculate/determine position and further to control other structures. For a computer-implemented 35 U.S.C. §112(f) claim limitation or any other computer implemented invention, the specification must disclose an algorithm for performing the claimed specific computer function. However, Examiners are unable to find such a program or algorithm in the 792 Patent. Specifically, as discussed in the claim interpretation section above, Examiners do not any program or algorithm how the “alignment vision” calculates coordinates. Nor do Examiners find any disclosure of the underlying structures of the “alignment vision.” Furthermore, Examiners are unable to find any program or algorithm how the “control unit” uses these calculated coordinates to move the device. Nor do Examiners find a disclosure as to the structure of the “control unit,” rather the 792 Patent explicitly states such control unit is “not shown.”
In view of the forgoing findings, Examiners find that not only does the specification of the 792 insufficiently discloses what structures are required to perfume the recited operations of the claims, i.e., the “alignment vision” and the “control unit,” but the specification further insufficiently discloses the particular program or algorithm these undisclosed structures use to perform the claimed functions. Accordingly, Examiners conclude the claims lack written description support in the 792 Patent.
VII.C. Written Description Rejection Claims 12, 14, 21 and 22
Claims 12, 14, 21 and 22 are rejected under 35 U.S.C. §112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claim 12 recites that the vacuum chuck “moves” the device, which Examiners find lacks a written description and thus is new matter in the 792 Patent. Examiners find the vacuum chuck 50 described in the 792 Patent uses a vacuum or section force to hold the devices on its surface, not move. Furthermore, the “moving” of the device is perform by the device alignment section which “moves” the device with respect to the chuck while the device is minimally suctioned to the upper surface of the vacuum chuck.
Claim 14 recites the device alignment section is “located on the upper surface of the vacuum chuck” and claims 21 and 22 recite “an alignment jig that is located on the upper surface of the vacuum chuck,” which Examiners find lacks a written description and thus is new matter in the 792 Patent. Examiners find the 792 Patent generally discloses the device alignment section (jig) located opposing the upper surface of the chuck to allow for the device alignment section (jig) to laterally and rotationally move devices vacuum mounted on the upper surface of the vacuum chuck.
VIII. CLAIM REJECTIONS – 35 U.S.C. §251
The following is a quotation of the appropriate paragraphs of 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 10-22 and this application as a whole are rejected under 35 U.S.C. §251 because Applicant has introduced new matter in this reissue application. The nature of the new matter is discussed above in the new matter rejection under 35 U.S.C. §112 above.
IX. COMPACT PROSECUTION
The Examiners find that because claims 10-22 are indefinite under 35 U.S.C. §112(b) as outlined above, it is impossible to properly construe claim scope at this time. See Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). However, in accordance with MPEP §2173.06 and the USPTO’s policy of trying to advance prosecution by providing art rejections even though these claims are indefinite, the claims are construed and the art is applied as much as practically possible in the following art rejections. Thus, the rejections are merely provided below for compact prosecution and as a guide to the general state of the art.
X. CLAIM REJECTIONS – 35 U.S.C. §102
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.
X.A. Anticipation Rejections Applying Kikuchi
Claims 10, 11, 13, 15, 16, 17, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 2011/0254945 to Aritomo Kikuchi et al. (hereinafter “Kikuchi”).
Regarding claim 10, Kikuchi discloses:
10. (New) A device alignment apparatus, comprising:
See Kikuchi FIG. 2, reprinted below showing the testing system and FIG. 11, reprinted below, showing the alignment section.
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a vacuum chuck including vacuum holes respectively formed at seating points of a device loaded on an upper surface of the vacuum chuck to be tested, the vacuum chuck applying a first vacuum pressure to the loaded device to finely move the loaded device: and
See Kikuchi FIGS. 2 and 11 above, vacuum chuck 317/319 which uses suction/vacuum hold device under test as shown in FIG. 37, reprinted below.
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a detecting unit configured to detect a position of the device placed on the vacuum chuck; and
See claim interpretation above wherein this feature, FL #1, is interpreted under 35 U.S.C. §112f as “any structures that detect a position of a device place on a vacuum chuck.” Thus, see FIGS. 2 and 11 above, CCD camera 327 which is used to determine the position of the device 100 placed on the vacuum chuck 319.
a device alignment section configured to align the device attached to the vacuum chuck by the first vacuum pressure in X, y, and Θ directions according to a notification from the detecting unit.
See claim interpretation above wherein this feature, FL #2, is interpreted under 35 U.S.C. §112f as “the general structures of the device alignment part 80 as discussed above, including X and Y axis rails with motors for moving the device in the X and Y directions and an θ-axis motor for rotating the device.” Thus see Kikuchi FIGS. 2 and 11 above and ¶0159 wherein “the lock-and-free mechanism 318 comes into the non-locked status, the alignment movable part driving apparatus 322 is enabled to cause a planar movement of the holding-side contact arm 317 in the X-axis and the Y-axis directions and of θ rotation around the Z-axis.
Regarding claim 11, Kikuchi discloses the apparatus of claim 10 and further wherein:
11. (New) The device alignment apparatus according to claim 10, wherein the device alignment section surrounds the device and finely moves the device to alignment.
See Kikuchi FIG. 11 wherein when in use to determine position of the device 100 on the vacuum chuck 319 and to appropriate move the device, the device alignment section components 318, 319 and 320 surrounds the device 100.
Regarding claim 13, Kikuchi discloses the apparatus of claim 11 and further wherein:
13. (New) The device alignment apparatus according to claim 11, wherein the device alignment section finely moves the device while it is spaced apart from the upper surface of the vacuum chuck.
See Kikuchi FIG. 11 above, note device the lock-and-free mechanism 318 is spaced from the device 100, which is provided on the vacuum chuck 317.
Regarding claim 15, Kikuchi discloses
15. (New) A device alignment method comprising:
loading a device onto an upper surface of a vacuum chuck including a vacuum hole; applying, by the vacuum chuck, a first vacuum pressure that allows for fine movement to the loaded device;
See FIGS. 2, 11 and 37 above, note device is loaded onto vacuum chuck 317/319 using vacuum hole 317c.
detecting coordinate values of the device attached to vacuum chuck by the first vacuum pressure; and
See claim interpretation section above wherein this limitation FL #3 invokes 35 U.S.C. §112(f) and is interpreted as merely a general idea or notion of detecting coordinate values. Thus, see FIGS. 2 and 11 above, CCD camera 327 which is used to determine the position of the device 100 placed on the vacuum chuck 319.
moving the device attached to the vacuum chuck by the first vacuum pressure in X, Y, and Θ directions to align a position of the device according to the detected coordinate values.
See Kikuchi FIGS. 2 and 11 above and ¶0159 wherein “the lock-and-free mechanism 318 comes into the non-locked status, the alignment movable part driving apparatus 322 is enabled to cause a planar movement of the holding-side contact arm 317 in the X-axis and the Y-axis directions and of θ rotation around the Z-axis.
Regarding claim 16, Kikuchi discloses the method of claim 15 and further wherein:
16. (New) The device alignment method according to claim 15, further comprising: aligning the position of the device using an alignment jig.
See Kikuchi FIG. 7, reprinted below, wherein the devices are initially aligned using the alignment jig 502a before they are attached to the vacuum chuck 317/319.
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Regarding claim 17, Kikuchi discloses the method of claim 15 and further wherein:
17. (New) The device alignment method according to claim 15, further comprising: aligning the position of the device by moving the device so that two surfaces of the device are in contact with an inner surface of an alignment jig.
See Kikuchi FIG. 7 above wherein the devices 100 are initially aligned using four sides of the alignment jig 502a before they are attached to the vacuum chuck 317/319.
Regarding claim 19, Kikuchi discloses the method of claim 16 and further wherein:
19. (New) The device alignment method according to claim 16, further comprising: aligning the position of the device using an alignment jig that is spaced apart from the upper surface of the vacuum chuck.
See Kikuchi FIG. 7 above wherein the devices 100 are initially aligned using four sides of the alignment jig 502a before they are attached to the vacuum chuck 317/319 and moved by the device alignment section.
Regarding claim 20, Kikuchi discloses the apparatus of claim 17 and further wherein:
20. (New) The device alignment method according to claim 17, further comprising: aligning the position of the device using an alignment jig that is spaced apart from the upper surface of the vacuum chuck.
See Kikuchi FIG. 11 above, note device the lock-and-free mechanism 318 is spaced from the device 100, which is provided on the vacuum chuck 317, and thus the movement occurs spaced apart.
XI. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 792 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
XII. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
XIII. CONCLUSION
Claims 10-22 are rejected.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571) 272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/MY TRANG TON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 Forum US Inc. v. Flow Valve LLC, 926 F.3d 1346 (Fed. Cir. 2019).
2 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014)
3 See Seal-Flex, Inc. v. Athletic Track and Court Construction, 50 USPQ2d 1225, 1234 (Fed. Cir. 1999) (Rader, J., concurring) (“Claim elements without express step-plus-function language may nevertheless fall within Section 112, Para. 6 if they merely claim the underlying function without recitation of acts for performing that function…. In general terms, the ‘underlying function’ of a method claim element corresponds to what that element ultimately accomplishes in relationship to what the other elements of the claim and the claim as a whole accomplish. ‘Acts,’ on the other hand, correspond to how the function is accomplished….”)