DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment dated 07/30/2024, in which claims 1-16 were cancelled, claims 17-32 were added, has been entered.
Abstract
The amendment to the Abstract received on 07/30/2024 has been entered.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) to foreign application DE102022102364.8 filed on 02/01/2022. The foreign application is not in English. The certified copy of the foreign priority application DE102022102364.8 has been received.
Filing Dates for the Claims — All Claims Not Entitled to Priority Date
To be entitled to the filing date of the foreign priority application DE102022102364.8 that is not in English, an English translation of the non-English language foreign application DE102022102364.8 and a statement that the translation is accurate in accordance with 37 CFR 1.55 is required to perfect the claim for priority under 35 U.S.C. 119 (a)-(d). The foreign application must adequately support the claimed subject matter, meaning satisfy the written description and enablement requirements of 35 U.S.C. 112(a). See MPEP §§ 215 and 216. 37 C.F.R. 1.55(g)(3)(ii)-(iii). To demonstrate compliance with 35 U.S.C. 112(a), applicant should point to support for their claimed subject matter in their translations.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 17-32 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 17, claim 17 recites “the contact surfaces”. There is insufficient antecedent basis for this limitation in the claim. Further, it is unclear if “the contact surfaces” refer to contact surface of the semiconductor component or contact surface on the target substrate or another different contact surface.
Regarding claim 17, claim 17 recites “at least one lighting device configured to: emit a first light pulse onto the semiconductor component to release it from the carrier substrate and to move it towards the target substrate, the semiconductor component comprising at least one contact surface, which corresponds to at least one contact surface on the target substrate and at least one of the contact surfaces comprising a solder material; and emit a second light pulse after the first light pulse, the second light pulse configured to melt the solder material on the at least one of the contact surfaces before the semiconductor component reaches the target substrate”. However, the claim does not recite any structural limitations of the lighting device to achieve the above intended use of the light device. Therefore, the claim language is ambiguous because (1) there is not a clear cut indication of the scope of the subject matter covered by the claim; (2) the language does not set forth well-defined boundaries of the invention and only states a problem solved or a result obtained; and one of ordinary skill in the art would not know from the claim terms what structure or steps are encompassed by the claim. “the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008). Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). See also Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342, 75 USPQ2d 1801 (Fed. Cir. 2005) where a claim directed to a software based system for creating a customized computer interface screen recited that the screen be "aesthetically pleasing," which is an intended result and does not provide a clear cut indication of scope because it imposed no structural limits on the screen”… MPEP 2173.05 (g).
Regarding claims 18-21, 24, claims 18-21, 24 only recites intended function of the claimed lighting device and does not recite any structural limitations of the lighting device. Therefore, the claim language is ambiguous because (1) there is not a clearcut indication of the scope of the subject matter covered by the claim; (2) the language does not set forth well-defined boundaries of the invention and only states a problem solved or a result obtained; and one of ordinary skill in the art would not know from the claim terms what structure or steps are encompassed by the claim. “the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008). Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). See also Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342, 75 USPQ2d 1801 (Fed. Cir. 2005) where a claim directed to a software based system for creating a customized computer interface screen recited that the screen be "aesthetically pleasing," which is an intended result and does not provide a clear cut indication of scope because it imposed no structural limits on the screen.” MPEP 2173.05 (g).
Regarding claims 22 and 25, claim 22 recites “the side of the semiconductor component comprises a roughening or a patterning” and claim 25 recites “wherein the at least one contact surface of the semiconductor component is covered with the solder material.” However, the semiconductor component is not a structure of the claimed device or lightning. It is unclear whether the claim directs to a device for transferring the semiconductor component or directs to the semiconductor component. Thus, the scope is unclear and undefine.
Regarding claim 23, claim 23 recites “wherein the semiconductor component is attached to the carrier substrate via a retaining layer, which is detachable by the first light pulse.” However, neither semiconductor component nor carrier substrate nor retaining layer is a structure of the claimed device or lighting device. Thus, the scope is unclear and undefine. Further, “is detachable by the first light pulse” directs to method of using the claimed device. “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).” MPEP2173.05 (p)
Regarding claim 26, claim 26 recites “wherein the solder material is melted when it reaches the target substrate” which directs to method of transferring and bonding a semiconductor component to a target substrate using the claimed device. Further, neither semiconductor component nor solder material nor target substrate is a structure of the claimed device. “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).” MPEP2173.05 (p).
Regarding claim 27, claim 27 recites “the contact surfaces”. There is insufficient antecedent basis for this limitation in the claim. Further, it is unclear if “one of the contact surfaces” refer to contact surface of the semiconductor component or contact surface on the target substrate or another different contact surface.
Regarding claim 32, claim 32 recites “a contact surface of the semiconductor component”. It is unclear if “a contact surface of the semiconductor component” recited in claim 32 is the same or different from contact surface recited in the limitation “the semiconductor component comprises at least one contact surface” of claim 27. If they are different then which element in drawing is contact surface in claim 32 and which element in drawing is contact surface in claim 27.
Claims depending from the rejected claims noted above are rejected at least on the same basis as the claim(s) from which the dependent claims depend.
Appropriate correction is required.
Conclusion
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/SOPHIA T NGUYEN/ Primary Examiner, Art Unit 2893
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