www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/449,729
`
`10/01/2021
`
`DodgieReigh M.Calpito
`
`0210-152001
`
`2647
`
`06/14/2023
`7590
`53666
`BRAKE HUGHES BELLERMANN LLP
`Mark Bellermann
`P.O. Box 1077
`Middletown, MD 21769
`
`EXAMINER
`
`AKRAM, IMRAN
`
`ART UNIT
`1725
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`06/14/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`docketing @ brakehughes.com
`uspto @brakehughes.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230608
`
`Application No.
`Applicant(s)
`17/449 ,729
`Calpito et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`IMRAN AKRAM
`1725
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1) Responsive to communication(s) filed on 21 October 2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)() This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on__; the restriction requirement and election have been incorporatedinto this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-22 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`= Claim(s
`s)__is/are rejected.
`() Claim(s)
`is/are objected to.
`Claim(s) 1-22 are subject to restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
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`

`

`Application/Control Number: 17/449,729
`Art Unit: 1725
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Election/Restriction
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`2.
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
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`|. Claims 1-13, drawn to an electrical apparatus, classified in HO1M 50/528.
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`Il. Claims 14-22, drawn to a method of forming a wedge bond, classified in B23K
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`20/10.
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`The inventions are independent or distinct, each from the other because:
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`3.
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`Inventions | and Il are related as process of making and product made. The
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`inventions are distinct if either or both of the following can be shown: (1) that the
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`process as claimed can be used to make another and materially different product or (2)
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`that the product as claimed can be made by another and materially different process
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`(MPEP § 806.05(f)).
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`In the instant case the method can produce an apparatus that
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`does not havea first and second electrical contact surface. The method only requires a
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`singular electrical contact surface.
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`4.
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`Restriction for examination purposes as indicated is proper becauseall the
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`inventions listed in this action are independent or distinct for the reasons given above
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`and there would be a serious search and/or examination burden if restriction were not
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`required because one or more of the following reasons apply:
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`

`

`Application/Control Number: 17/449,729
`Art Unit: 1725
`
`Page 3
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`The inventions have acquired a separate status in the art in view oftheir different
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`classification.
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`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of an invention to be examined even though the requirement
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`may be traversed (37 CFR 1.143) and(ii) identification of the claims encompassing
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`the elected invention.
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`The election of an invention may be made with or without traverse. To reserve a
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`right to petition, the election must be made with traverse. If the reply does notdistinctly
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`and specifically point out supposederrors in the restriction requirement, the election
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`shall be treated as an election without traverse. Traversal must be presentedat the time
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`of election in order to be considered timely. Failure to timely traverse the requirement
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`will result in the loss of right to petition under 37 CFR 1.144. If claims are added after
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`the election, applicant must indicate which of these claims are readable upon the
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`elected invention.
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`Should applicant traverse on the ground that the inventions are not patentably
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`distinct, applicant should submit evidence or identify such evidence nowof record
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`showing the inventions to be obvious variants or clearly admit on the record thatthis is
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`the case. In either instance, if the examiner finds one of the inventions unpatentable
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`overthe prior art, the evidence or admission maybe usedin a rejection under 35 U.S.C.
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`103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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`5.
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`A telephone call was madeto Paul Churilla on 5/30/23 to request an oral election
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`to the aboverestriction requirement, but did not result in an election being made.
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`

`

`Application/Control Number: 17/449,729
`Art Unit: 1725
`
`Page 4
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`6.
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`Applicant is reminded that upon the cancelation of claims to a non-elected
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`invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. A request to correct inventorship under 37 CFR 1.48(a)
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`must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that
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`identifies each inventor by his or her legal name and by the processing fee required
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`under 37 CFR 1.17(i).
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`7.
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`The examiner has required restriction between product or apparatus claims and
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`process claims. Where applicant elects claims directed to the product/apparatus, and all
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`product/apparatus claims are subsequently found allowable, withdrawn process claims
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`that include all the limitations of the allowable product/apparatus claims should be
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`considered for rejoinder. All claims directed to a nonelected process invention must
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`include all the limitations of an allowable product/apparatus claim for that process
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`invention to be rejoined.
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`In the event of rejoinder, the requirement for restriction between the
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`product/apparatus claims and the rejoined process claims will be withdrawn, and the
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`rejoined processclaims will be fully examined for patentability in accordance with 37
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`CFR 1.104. Thus, to be allowable, the rejoined claims must meetall criteria for
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`patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all
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`claims to the elected product/apparatus are found allowable, an otherwise proper
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`restriction requirement between product/apparatus claims and process claims may be
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`maintained. Withdrawn processclaims that are not commensurate in scope with an
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`allowable product/apparatus claim will not be rejoined. See MPEP § 821.04.
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`

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`Application/Control Number: 17/449,729
`Art Unit: 1725
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`Page 5
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`Additionally, in order for rejoinder to occur, applicant is advised that the process claims
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`should be amended during prosecution to require the limitations of the
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`product/apparatus claims. Failure to do so mayresult in no rejoinder. Further, note
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`that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply
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`wherethe restriction requirement is withdrawn by the examiner before the patent
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`issues. See MPEP § 804.01.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to IMRAN AKRAM whosetelephone number is (571)270-
`
`3241. The examiner can normally be reached M-F 8a-6p.
`
`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:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Basia Ridley can be reached on 571-272-1453. The fax phone number for
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`the organization wherethis application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of published or unpublished applications may be
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`obtained from Patent Center. Unpublished application information in Patent Center is
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
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`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
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`

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`Application/Control Number: 17/449,729
`Art Unit: 1725
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`Page 6
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`(toll-free). If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/[IMRAN AKRAM/
`Primary Examiner, Art Unit 1725
`
`