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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-9, drawn to an apparatus, classified in B23K20/106.
II. Claims 19-30, drawn to a process, classified in B23k20/10.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the apparatus can be used to bond chips, wires, studs, or rivets.
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:
the inventions have acquired a separate status in the art in view of their different classification.
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.
Claims 1 and 9 are generic to the following disclosed patentably distinct species:
The alignment mechanism shown in figures 2A-4.
The alignment mechanism shown in figures 5A-C.
The alignment mechanism shown in figures 6A-10C.
The species are independent or distinct because the figures of the different species clearly depict mutually exclusive characteristics of each species. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve 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 election of species 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 on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species 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 species 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 species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Chris Spletzer on 6/9/26 a provisional election was made without traverse to prosecute the Invention I, species iii, claims 1-9. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19-30 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “aperture” of claim 2 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses 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. Such claim limitation(s) is/are: “a mating feature configured to mate” in claims 1 and 9 and “a support structure configured for supporting” in claim 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 9 is 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.
Claim 9 limitation “support structure configured for supporting” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is insufficient because it is devoid of any structure that performs the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 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.
Claims 1-7 and 9 are rejected under 35 U.S.C. 102a1 as being anticipated by Copperthite et al. (US 2021/0379690 A1).
Regarding claim 1, Copperthite discloses:
A sonotrode [sonotrode (202, 602a); figures 1 and 6] for ultrasonically welding a conductive pin to a workpiece, the sonotrode comprising:
a body portion [mid portion of the sonotrode] configured to be coupled to an ultrasonic converter [ultrasonic converter (112b)], the body portion terminating at a tip portion [lower portion of the sonotrode], the tip portion defining a mating feature [key feature (602a1d)] configured to mate with a corresponding mating feature of a base portion of the conductive pin,
wherein the conductive pin is oriented in a predetermined configuration by mating of the mating feature defined by the tip portion with the corresponding mating feature of the base portion.
Concerning any claimed results, materials, and/or functions:
Since the prior art apparatus, i.e. the apparatus based on the prior art reference(s) above, is structurally identical to the claimed apparatus, it is the examiner’s position that the prior art apparatus is capable of achieving any claimed function with any claimed material to achieve any claimed result; such as welding a conductive pin and mating with the corresponding mating feature of the base portion. This reasoning applies to any claim below where functional language, material worked upon, and/or a result is claimed.
Regarding claim 2, Copperthite discloses:
wherein the mating feature defined by the tip portion includes an aperture [key feature (602a1d)] configured to mate with a shape of the corresponding mating feature of the base portion.
Regarding claims 3-5, these claims are drawn to material worked upon and do not further limit the claimed apparatus structurally.
Regarding claims 6 and 7, Copperthite discloses:
wherein the sonotrode is configured to weld the conductive pin to a workpiece using torsional/linear motion [0025].
Regarding claim 9, Copperthite discloses:
An ultrasonic welding system [ultrasonic welding system (100a); figure 1] including:
a support structure [support structure (106)] configured for supporting a workpiece;
a weld head assembly [weld head assembly (112)] including an ultrasonic converter [ultrasonic converter (112b)]; and
a sonotrode [sonotrode (202, 602a); figures 1 and 6] carried by the ultrasonic converter, the sonotrode including a tip portion [lower portion of the sonotrode], the tip portion defining a mating feature [key feature (602a1d)] configured to mate with a corresponding mating feature of a base portion of the conductive pin, wherein the conductive pin is oriented in a predetermined configuration by mating of the mating feature with the corresponding feature of the base portion.
Claims 1-5, 8, and 9 are rejected under 35 U.S.C. 102a1 as being anticipated by Urlaub et al. (US 2003/0062110 A1).
Regarding claim 1, Urlaub discloses:
A sonotrode [horn (25); figures 2 and 5] for ultrasonically welding a conductive pin to a workpiece, the sonotrode comprising:
a body portion [mid portion of the horn] configured to be coupled to an ultrasonic converter [transducer (12)], the body portion terminating at a tip portion [tip (29)], the tip portion defining a mating feature [recess (21)] configured to mate with a corresponding mating feature of a base portion of the conductive pin,
wherein the conductive pin is oriented in a predetermined configuration by mating of the mating feature defined by the tip portion with the corresponding mating feature of the base portion.
Concerning any claimed results, materials, and/or functions:
Since the prior art apparatus, i.e. the apparatus based on the prior art reference(s) above, is structurally identical to the claimed apparatus, it is the examiner’s position that the prior art apparatus is capable of achieving any claimed function with any claimed material to achieve any claimed result; such as mating with the corresponding mating feature of the base portion. This reasoning applies to any claim below where functional language, material worked upon, and/or a result is claimed.
Regarding claim 2, Urlaub discloses:
wherein the mating feature defined by the tip portion includes an aperture [recess (21)] configured to mate with a shape of the corresponding mating feature of the base portion.
Regarding claims 3-5, these claims are drawn to material worked upon and do not further limit the claimed apparatus structurally.
Regarding claim 8, Urlaub discloses:
wherein the mating feature defined by the tip portion includes a chamfered portion configured to guide the conductive pin to an aligned position with respect to the sonotrode [see figure 5].
Regarding claim 9, Urlaub discloses:
An ultrasonic welding system [ultrasonic welding system (10); figure 1] including:
a support structure [carousel (46)] configured for supporting a workpiece;
a weld head assembly [ultrasonic welding head (20); figure 2] including an ultrasonic converter [transducer (12)]; and
a sonotrode [horn (25); figures 2 and 5] carried by the ultrasonic converter, the sonotrode including a tip portion [tip (29)], the tip portion defining a mating feature [recess (21)] configured to mate with a corresponding mating feature of a base portion of the conductive pin, wherein the conductive pin is oriented in a predetermined configuration by mating of the mating feature with the corresponding feature of the base portion.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Copperthite et al. (US 2021/0379690 A1) in view of Urlaub et al. (US 2003/0062110 A1).
Regarding claims 1 and 8, Copperthite teaches:
A sonotrode [sonotrode (202, 602a); figures 1 and 6] for ultrasonically welding a conductive pin to a workpiece, the sonotrode comprising:
a body portion [mid portion of the sonotrode] configured to be coupled to an ultrasonic converter [ultrasonic converter (112b)], the body portion terminating at a tip portion [lower portion of the sonotrode].
Copperthite does not teach:
the tip portion defining a mating feature configured to mate with a corresponding mating feature of a base portion of the conductive pin,
wherein the conductive pin is oriented in a predetermined configuration by mating of the mating feature defined by the tip portion with the corresponding mating feature of the base portion; and
wherein the mating feature defined by the tip portion includes a chamfered portion configured to guide the conductive pin to an aligned position with respect to the sonotrode.
Urlaub teaches ultrasonic welding system (10) which comprises horn (25) wherein tip (29) has chamfered recess (21); figures 1, 2, and 5.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate the Urlaub recess into Copperthite to further assist the alignment of the workpiece or to allow the sonotrode to be used with different types of workpieces.
Regarding claim 2, Copperthite does not teach:
wherein the mating feature defined by the tip portion includes an aperture configured to mate with a shape of the corresponding mating feature of the base portion.
However, the incorporation of the Urlaub recess meets this claim.
Regarding claims 3-5, these claims are drawn to material worked upon and do not further limit the claimed apparatus structurally.
Regarding claims 6 and 7, Copperthite teaches:
wherein the sonotrode is configured to weld the conductive pin to a workpiece using torsional/linear motion [0025].
Regarding claim 9, should the applicant prove the Copperthite does not disclose the mating feature then the following applies, Copperthite teaches:
An ultrasonic welding system [ultrasonic welding system (100a); figure 1] including:
a support structure [support structure (106)] configured for supporting a workpiece;
a weld head assembly [weld head assembly (112)] including an ultrasonic converter [ultrasonic converter (112b)]; and
a sonotrode [sonotrode (202, 602a); figures 1 and 6] carried by the ultrasonic converter, the sonotrode including a tip portion [lower portion of the sonotrode].
Copperthite does not teach:
the tip portion defining a mating feature configured to mate with a corresponding mating feature of a base portion of the conductive pin, wherein the conductive pin is oriented in a predetermined configuration by mating of the mating feature with the corresponding feature of the base portion.
Urlaub teaches ultrasonic welding system (10) which comprises horn (25) wherein tip (29) has chamfered recess (21); figures 1, 2, and 5.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate the Urlaub recess into Copperthite to further assist the alignment of the workpiece or to allow the sonotrode to be used with different types of workpieces.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Urlaub et al. (US 2003/0062110 A1) as applied to claim 1 above, and further in view of Copperthite et al. (US 2021/0379690 A1).
Regarding claims 6 and 7, Urlaub does not teach:
wherein the sonotrode is configured to weld the conductive pin to a workpiece using torsional/linear motion.
Copperthite teaches sonotrodes may use linear or torsional motion to weld; 0025.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate linear or torsional motion into Urlaub in order to weld and/or because they are known motions for welding, minus any unexpected results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure; see PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS J GAMINO whose telephone number is (571)270-5826. The examiner can normally be reached M-F 9-6.
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, Keith Walker can be reached at 5712723458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARLOS J GAMINO/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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