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 .
Claim Interpretation
As noted in previous office action, present claims are drawn to an apparatus. "Apparatus 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). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (MPEP 2114). Furthermore, examiner notes that, “inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” (MPEP 2115). A recitation with respect to the material intended to be worked upon by an apparatus does not impose any structural limitations upon the claimed apparatus. For example, “a first component and a second component of a product“, and “a welding area and a non-welding area of the product” (claim 21) are workpiece materials which do not structurally limit the claimed welding device.
Claim Rejections - 35 USC § 112
The following is a quotation of the fourth paragraph of 35 U.S.C. 112:
Subject to the [fifth paragraph of 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 15-20 are rejected under 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to specify the subject matter of the claim upon which it depends. Claim 15 depends on claim 21, which is a subsequent claim that has not yet been recited. Applicant should amend the claim(s) to place the claim(s) 15-20 in proper dependent form so as to depend from any previous claim to comply with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claims 21-22 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Brunner et al. (US 11389893, hereafter “Brunner”) in view of Asahi et al. (US 2015/0050778, hereafter “Asahi”).
Regarding claim 21, Brunner discloses a welding device, comprising: a damping element 22 (abstract); and an ultrasonic welding machine including an ultrasonic welding head 28 (sonotrode) welding a first component 8/10 and a second component 2 of a product/workpiece (fig. 2) together, the damping element is pressed against the product by the ultrasonic welding head and covers a welding area and a non-welding area of the product (figs. 8-10), the damping element absorbs a vibration energy located in the non-welding area to prevent the vibration energy from being concentrated in the welding area of the workpiece (col. 2, lines 30-41). Brunner discloses a clamping device 16 & 30 (holding arm & device- figs. 4, 8) clamping and fixing the product (fig. 10). Examiner notes that any structure that holds the product in place meets clamping & fixing feature.
Brunner discloses a damping element 22 but is silent with respect to a thin film. However, such feature is known in the bonding art. Asahi discloses a bonding device for a semiconductor device [0001], the bonding device including a heating tool/head 1 and a thin protective film 2 disposed between the head 1 and a chip workpiece 3, wherein the protective film 2 is supplied in a reel-to-reel manner to prevent contamination of the tool head (see fig. 3, [0053-0054]). The protective film 2 covers both joining area 7/8 as well as non-joining area on the workpiece (fig. 3). Given the damping element, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to supply protective film between the ultrasonic welding head and the workpiece in Brunner because doing so would provide dampening effect and prevent contamination of the tool head, as suggested by Asahi. It is noted that a welding area and a non-welding area concerns workpiece features and do not structurally limit the welding device.
As to claim 22, Brunner shows that the clamping device 30 (holding arm) includes an extending rod clamping the product inserted into a positioning slot (U-shaped recess- fig. 4) of the clamping device 16 (fig. 10). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to utilize any suitable movement cylinder having a telescoping rod in the apparatus of Brunner in order to press and clamp the product in desired position for welding.
As to claim 15, Brunner discloses the clamping device part 16 includes a positioning block having a positioning slot (U-shaped recess) positioning the product and a pair of holes 20 communicated with the positioning slot (fig. 4; col. 10, lines 37-51).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Brunner et al. (US 11389893) in view of Asahi et al. (US 2015/0050778), and further in view of Higashi et al. (US 2001/0013532, “Higashi”).
Regarding claim 23, Brunner discloses a welding device, comprising: a damping element 22 (abstract); and an ultrasonic welding machine including an ultrasonic welding head 28 (sonotrode) welding a first component 8/10 and a second component 2 of a product/workpiece (fig. 2) together, the damping element is pressed against the product by the ultrasonic welding head and covers a welding area and a non-welding area of the product (figs. 8-10), the damping element absorbs a vibration energy located in the non-welding area to prevent the vibration energy from being concentrated in the welding area of the workpiece (col. 2, lines 30-41). Brunner discloses a clamping device 16 & 30 (holding arm & device- figs. 4, 8) clamping and fixing the product and including a positioning block 16 (fig. 10). Examiner notes that any structure that holds the product in place meets clamping & fixing feature.
Brunner discloses a damping element 22 but is silent with respect to a thin film. However, such feature is known in the bonding art. Asahi discloses a bonding device for a semiconductor device [0001], the bonding device including a heating tool/head 1 and a thin protective film 2 disposed between the head 1 and a chip workpiece 3, wherein the protective film 2 is supplied in a reel-to-reel manner to prevent contamination of the tool head (see fig. 3, [0053-0054]). The protective film 2 covers both joining area 7/8 as well as non-joining area on the workpiece (fig. 3). Given the damping element, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to supply protective film between the ultrasonic welding head and the workpiece in Brunner because doing so would provide dampening effect and prevent contamination of the tool head, as suggested by Asahi. Moreover, examiner notes that a welding area and a non-welding area concerns workpiece features and do not structurally limit the welding device.
Brunner discloses pusher elements that move linearly to secure the flat part/product (col. 4, lines 30-45) that are comparable to a moving device, but is silent with respect to the positioning block. In any event, such movement mechanism is known in the art. Higashi is directed to positioning apparatus during the production of a semiconductor device ([0004], abstract) and discloses positioning a thin plate [0020, 0038]. Analogous to Brunner, Kotatao teaches a positioning block formed by four pusher members 30, which are sliding adjustable to move the semiconductor element 10 (product) into correct position on a stage 22 (figs. 1-3, [0043-0045]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate a moving mechanism (such as pusher) for moving the positioning block 16 in Brunner in order to place the product into correct position for welding. Thus, Brunner as modified by Higashi includes a moving device in the ultrasonic welding machine.
Allowable Subject Matter
Claims 1-2, 4, 7-8 and 10-13 are allowable over prior art.
Claims 16-20 and 24-25 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 amended to correct 112 rejection noted above.
Response to Amendment and Arguments
Applicant’s arguments with respect to new claim(s) 21 and 23 have been considered but are moot in light of new grounds of 103 rejections set forth above. Examiner also notes that dependency of claims 15-20 should be corrected.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVANG R PATEL whose telephone number is (571) 270-3636. The examiner can normally be reached on Monday-Friday 8am-5pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached on 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVANG R PATEL/
Primary Examiner, AU 1735