DETAILED ACTION
The communication dated 8/27/2024 has been entered and fully considered.
Claims 1-20 are pending with claims 1-14 withdrawn from further consideration.
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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-14, drawn to a process, classified in H10F 39/107.
II. Claims 15-20, drawn to a process, classified in H10W 90/00.
The inventions are independent or distinct, each from the other because:
Inventions Group I and Group II are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination does not require the marks to be overlapping in the top view direction of the carrier. The subcombination has separate utility such as aligning the parts more accurately.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions required a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Attorney Floyd Canfield on 9/11/2026 a provisional election was made with traverse to prosecute the invention of Group II, claims 15-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim(s) 15-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CHANG et al. (U.S. PGPUB 2024/0043264), hereinafter CHANG.
Regarding claim 15, CHANG teaches: A method for manufacturing an electronic device (CHANG teaches a method for manufacturing an electronic device [Abstract].), comprising the following steps: providing a carrier and a circuit substrate (CHANG teaches providing a carrier and a circuit substrate [Abstract; Fig. 8; 0037].), wherein the carrier comprises a plurality of first marks (CHANG teaches the carrier comprises a plurality of first marks [0037-0038; 0058].), the circuit substrate comprises a plurality of second marks and a plurality of electronic units (CHANG teaches the circuit substrate comprises a plurality of second marks and a plurality of electronic units [0038; 0041-0045].), the plurality of second marks and the plurality of electronic units are separated from each other in a top view direction of the carrier (CHANG teaches the plurality of second marks and the plurality of electronic units are separated from each other in a top view of the carrier [0049].), and the plurality of electronic units are detected and determined to be normal or defective (CHANG teaches identifying defective components [0076].); providing a plurality of cover units on the carrier (CHANG teaches in some embodiments, an electronic component includes a cover [0085].); disposing the circuit substrate on the plurality of cover units so that the plurality of first marks of the carrier and the plurality of second marks of the circuit substrate are overlapped in the top view direction of the carrier (CHANG teaches a carrier (202) [0036; Figs. 2A-2C]. CHANG teaches components are positioned on carrier (220) and the components correspond to covers [0044], which can be in the top view direction of the carrier [Figs. 2A-2C]. CHANG teaches grooves can be added to the materials for alignment [0049].), wherein the plurality of cover units correspond to the plurality of electronic units determined to be normal (CHANG teaches disposing the circuit substrates with the cover units with the carriers and the marks overlap in the top view direction of the carrier [0076-0085; Fig. 8].); vacuuming the circuit substrate and the plurality of cover units (CHANG teaches vacuuming the components [0043].); and pressing the plurality of cover units and the circuit substrate to fix the plurality of cover units and the circuit substrate to each other (CHANG teaches pressing the components together by using a different force [0049].).
Regarding claim 16, CHANG teaches: wherein the carrier further comprises a plurality of limiting portions corresponding to the plurality of cover units (CHANG shows limiting portions corresponding to the plurality of cover units [Figs. 2A-2C; 0043-0044].).
Regarding claim 17, CHANG teaches: wherein the plurality of first marks and the limiting portions are not overlapped and the plurality of second marks and the plurality of electronic units are not overlapped in the top view direction of the carrier (CHANG shows the plurality of first marks and the limiting portions are not overlapped and the second marks (grooves) of the electronic units are not overlapped on the carrier [Figs. 2A-2F].).
Regarding claim 18, CHANG teaches: wherein the plurality of cover units are not disposed corresponding to the plurality of electronic units determined to be defective (CHANG teaches the components correspond to covers in the plurality of MEMS devices [0044; 0081-0083].).
Regarding claim 19, CHANG teaches: wherein the step of detecting the plurality of electronic units comprises checking appearances and electrical properties of the plurality of electronic units (CHANG teaches testing the electromechanical components and testing could include, for example, identifying a broken hinge, optical profilometry, and resonance frequency measurements. Mechanical testing can be performed using visual inspection tools [0080].).
Regarding claim 20, CHANG teaches: wherein the carrier comprises a carrier portion (CHANG teaches the carrier comprises a carrier portion [Figs. 2A-2C; 0036].), the plurality of cover units are disposed on the carrier (CHANG teaches the plurality of cover units are disposed on the carrier [Figs. 2A-2F; 0044].), and the carrier portion of the carrier and the circuit substrate are respectively rectangular (CHANG teaches the carrier portion and the circuit substrate are respectively rectangular [Figs. 2A-2F, 3A, 3C-3D].).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLINE BEHA whose telephone number is (571)272-2529. The examiner can normally be reached MONDAY - FRIDAY 9:00 A.M. - 5:00 P.M.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ABBAS RASHID can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.B./Examiner, Art Unit 1748
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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