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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`13/950,905
`
`07/25/2013
`
`Eiichi Hachiya
`
`51464
`
`1320
`
`01’0”” —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`ITSKOVICHa MIKHAIL
`SUITE 1200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`ART UNIT
`2483
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/09/2017
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time 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):
`
`patdocket @ pearne.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 13/950,905 HACHIYA ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`MIKHAIL ITSKOVICH $2215 2483
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from 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) MONTHS from 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, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 11/09/2016.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:| 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 Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 1-3 5-8 and 10-16 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)I:I Claim(s)
`is/are allowed.
`
`7)|Z| Claim(s) 1 -3 5-8 and 10- 16is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'/\W¢W.LISI>I‘.0. ovI’ atentS/init events/
`
`
`
`h/index.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I 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)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some” c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in 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)
`
`
`
`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20161231
`
`

`

`Application/Control Number: 13/950,905
`
`Page 2
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`Art Unit: 2483
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
`
`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 Arguments
`
`2.
`
`Applicant's arguments filed on 11/09/2016 have been fully considered but they
`
`are not persuasive.
`
`3.
`
`Examiner noticed that some amended language was not underlined. Applicant is
`
`reminded to underline amended text in the claims, because amendments that are not
`
`properly marked may not be entered.
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`4.
`
`Generally, Examiner recommends identifying the specific features that Applicant
`
`regards to be inventive and particularly claiming the structures and algorithms that
`
`implement those features. Rephrasing previously rejected limitations, elaborating on
`
`elements known in the art, describing an intended use, or reciting extra solutions direct
`
`examination away from the invention and do not meaningfully advance prosecution.
`
`5.
`
`Regarding Claims 11 and 14, Applicant argues: “With respect to process claims,
`
`"[35 U.S.C. 112, sixth paragraph] is implicated only when steps plus function without
`
`acts are present .
`
`.
`
`.
`
`.
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`Examiner notes, and Applicant is well aware, that this is not an accurate
`
`restatement of the current law. The absence of the word “means” (or “step for”) in a
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`claim creates a rebuttable presumption that the claim element is not to be treated in
`
`accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The
`
`

`

`Application/Control Number: 13/950,905
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`Page 3
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`Art Unit: 2483
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`presumption is rebutted when the claim element recites function but fails to recite
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`sufficiently definite structure, material or acts to perform that function. M.P.E.P. 2181 (l),
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348, 115 USPQ2d 1105, 1111 (Fed.
`
`Cir. 2015) (en banc) (quoting Watts v. XL Systems, Inc, 232 F.3d 877, 880 (Fed. Cir.
`
`2000); Personalized Media Communications, LLC v. International Trade Commission,
`
`161 F. 3d 696, 704 (Fed. Cir. 1998). Examiner also encourages Applicant to clarify the
`
`purpose of reciting these structures in the method claims.
`
`6.
`
`Applicant argues: “Further, the Office action contends that the Specification fails
`
`to disclose the structures corresponding to the "component supply device" and the
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`"imaging device", for example. Applicant respectfully submits that the Specification
`
`provides ample disclosure of the possible structures recited in the claims. For example,
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`the "component supply device" recited in claims 1, 6 and 11 corresponds to a feeder
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`unit 103 or a tray supply unit 105 (Specification, page 13, lines 7-11). The feeder unit
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`103 supplies a relatively small electronic component, while the tray supply unit 105
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`supplies a relatively large electronic component (Specification, page 13, lines 14-15).
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`These structures are shown in Figs. 1-2.”
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`Examiner notes that neither the claim nor Specification define the component
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`supply device as a feeder unit 103 or a tray supply unit 105, and even Applicant can not
`
`point out which one of these units is to provide limitation for the claim.
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`7.
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`Applicant argues: “Further, the holding device, the movement mechanism, and
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`the component imaging device recited in claims 1, 6 and 11 correspond to a head unit
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`107 having nozzles 119, a belt 117, and a three dimensional sensor ("3D sensor") 113
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`

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`Application/Control Number: 13/950,905
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`Page 4
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`Art Unit: 2483
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`including a plurality of cameras 151C, 151 L and 151R, respectively (Specification, page
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`13, lines 7-12; 24-25; page 14, lines 1-25).”
`
`Examiner notes that Specification does not define the claimed means as these
`
`elements in the specification, and further, limitations from the specification are not read
`
`into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir.
`
`1993).
`
`8.
`
`Applicant argues: “The component recognition unit 137 includes an image data
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`l/F unit 211, a video memory 213, and an image processing unit 215 (Specification,
`
`page 18, lines 10-12). The image data l/F unit 211 receives the data of the image that is
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`imaged by the imaging elements of each camera of the 3D sensor 113 (Specification,
`
`page 18, lines 12-13). The image data received by the image data l/F unit 211 is stored
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`in the video memory 213 (Specification, page 18, lines 13-15). These structures are
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`shown in Fig. 8 (although Fig. 8 is a diagram showing a relationship between the control
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`unit 135 and the component recognition unit 137), and the structures of the two imaging
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`elements 165a and 165b are shown in Figs. 4-7.”
`
`In response to applicant's argument that the references fail to show certain
`
`features of applicant’s invention, it is noted that the features upon which applicant relies
`
`are not recited in the rejected claims. Although the claims are interpreted in light of the
`
`specification, limitations from the specification are not read into the claims. See In re
`
`Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
`
`9.
`
`Applicant argues: “In addition, Applicant respectfully submits that it is not
`
`necessary to use in claims the same terminologies as those recited in the Specification.
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`

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`Application/Control Number: 13/950,905
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`Page 5
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`Art Unit: 2483
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`According to MPEP §2181, disclosure of structure corresponding to a means-plus-
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`function limitation may be implicit in the written description if it would have been clear to
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`those skilled in the art what structure must perform the function recited in the means-
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`plus-function limitation.”
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`Examiner notes that if Applicant relies on the terms of Specification to provide
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`limitations to the claims, then there is absolutely no reason why Applicant should not
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`reference those terms exactly. Use of different terms in the claims indicates that the
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`scope of the claims is different, unless Applicant can present objective evidence to
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`indicate that a person of skill in the art would always construe them as identical.
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`10.
`
`Regarding Claims 1 and 11, Applicant argues: “First, none of the cited
`
`references teaches "a three-dimensional component imaging device". Instead, both
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`Hachiya and Jansson describe one-dimensional and two-dimensional imagmg.”
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`Examiner notes that regardless of how Applicant wants to name a device or how
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`many dimensions there are in a component, the limitations of this device are rejected by
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`the citations below.
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`If Applicant's device has other distinguishing structures, they should
`
`be claimed explicitly.
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`11.
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`Applicant argues: “Skunes does not describe a three-dimensional component
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`imaging device which comprises at least three area cameras, each comprising a first
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`imaging element and a second imaging element oriented in a substantially same
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`direction, such that a visual field of each first imaging element and a visual field of each
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`second imaging element are different from each other and each configured to image the
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`electronic component, and the visual fields of all first imaging elements and the visual
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`

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`Application/Control Number: 13/950,905
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`Page 6
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`Art Unit: 2483
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`fields of all second imaging elements are common to each other regardless of the area
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`cameras. For at least the above reasons, the combination of Hachiya and Jansson fails
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`to teach every limitation found in amended claim 1, as required to maintain a rejection of
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`this claim under 35 U. S. C. §103(a).”
`
`Examiner notes that any lack of coverage in Skunes does not reflect on the
`
`argued coverage of Hachiya and Jansson. Further, one cannot show nonobviousness
`
`by attacking references individually where the rejections are based on combinations of
`
`references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck &
`
`Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
`
`12.
`
`Applicant argues: “Furthermore, a person of ordinary skill in the art would not
`
`have been motivated to combine Hachiya and Jansson to achieve the electronic
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`component mounting apparatus recited in claim 1, and there would have been no
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`reasonable expectation of success from any such combination.”
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`In response to applicant’s argument that there is no teaching, suggestion, or
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`motivation to combine the references, the examiner recognizes that obviousness may
`
`be established by combining or modifying the teachings of the prior art to produce the
`
`claimed invention where there is some teaching, suggestion, or motivation to do so
`
`found either in the references themselves or in the knowledge generally available to one
`
`of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir.
`
`1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR
`
`International Co. v. Te/ef/eX, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See
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`statements of motivation in the rejections below.
`
`

`

`Application/Control Number: 13/950,905
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`Page 7
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`Art Unit: 2483
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`13.
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`Applicant argues: “Nothing in Hachiya indicates that the two cameras can be
`
`used at the same time. Because Hachiya describes selecting only one of the two
`
`cameras, the reference cannot possibly teach or suggest generating an image "by
`
`combining the image imaged by the first imaging element with the image imaged by the
`
`second imaging element", as recited in claim 1.”
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`Examiner notes the reasons for rejection citing to Jansson below.
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`14.
`
`Applicant argues: “Moreover, the Office action appears to only reach its
`
`conclusions based on unsupported inferences and impermissible hindsight. Indeed, the
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`Office action appears to rely on information gleaned solely from Applicant's description
`
`and the present claims. MPEP § 2142 clearly states that "impermissible hindsight must
`
`be avoided and the legal conclusion must be reached on the basis of the facts gleaned
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`from the prior art" (Emphasis added).”
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`Examiner notes that Applicant expedient belief of impropriety is not objective
`
`evidence of an improper hindsight.
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`In response to applicant's argument that the
`
`examiner's conclusion of obviousness is based upon improper hindsight reasoning, it
`
`must be recognized that any judgment on obviousness is in a sense necessarily a
`
`reconstruction based upon hindsight reasoning. But so long as it takes into account
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`only knowledge which was within the level of ordinary skill at the time the claimed
`
`invention was made, and does not include knowledge gleaned only from the applicant's
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`disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170
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`USPQ 209 (CCPA 1971).
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`

`

`Application/Control Number: 13/950,905
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`Page 8
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`Art Unit: 2483
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`15.
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`Applicant argues: “In the present case, the Office action relies on a purported
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`simultaneous use of the two cameras of Hachiya to support the combination of Hachiya
`
`and Jansson. However, such simultaneous use of the two cameras is absent from
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`Hachiya's disclosure and is only present in Applicant's description on page 23, lines 9-
`
`25).”
`
`Examiner notes that this feature is also present in Jansson as stated in the
`
`rejections below.
`
`Claim Rejections - 35 USC § 1 12
`
`16.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`IN GEN ERAL.—The specification shall contain a written description of the
`(a)
`invention, and of the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor orjoint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
`17.
`
`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.
`
`18.
`
`Use of the word “means” (or “step for”) in a claim with functional language
`
`creates a rebuttable presumption that the claim element is to be treated in accordance
`
`

`

`Application/Control Number: 13/950,905
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`Page 9
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`Art Unit: 2483
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`with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that
`
`35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when
`
`the function is recited with sufficient structure, material, or acts within the claim itself to
`
`entirely perform the recited function.
`
`Absence of the word “means” (or “step for”) in a claim creates a rebuttable
`
`presumption that the claim element is not to be treated in accordance with 35 U.S.C.
`
`112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f)
`
`(pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim
`
`element recites function but fails to recite sufficiently definite structure, material or acts
`
`to perform that function. M.P.E.P. 2181(l), Williamson v. Citrix Online, LLC, 792 F.3d
`
`1339, 1348, 115 USPQ2d 1105, 1111 (Fed. Cir. 2015) (en banc) (quoting Watts v. XL
`
`Systems, Inc, 232 F.3d 877, 880 (Fed. Cir. 2000); Personalized Media
`
`Communications, LLC v. International Trade Commission, 161 F. 3d 696, 704 (Fed. Cir.
`
`1998). A substitute term acts as a generic placeholder for the term "means" and would
`
`not be recognized by one of ordinary skill in the art as being sufficiently definite
`
`structure for performing the claimed function. "The standard is whether the words of the
`
`claim are understood by persons of ordinary skill in the art to have a sufficiently definite
`
`meaning as the name for structure." Williamson, 792 F.3d at 1349, 115 USPQ2d at
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`1111; see also Greenberg v. Ethicon Endo-Surgery, Inc, 91 F.3d 1580, 1583 (Fed. Cir.
`
`1996).
`
`1.
`
`Claims 1-3, 5-8, and 10-16 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
`
`

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`Application/Control Number: 13/950,905
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`Page 10
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`Art Unit: 2483
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
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`the applicant regards as the invention.
`
`2.
`
`Claims 1-3, 5-8, and 10-16 are similarly rejected under 35 U.S.C. 112(a) or
`
`35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description
`
`requirement. The claim(s) contains subject matter which was not described in the
`
`specification in such a way as to reasonably convey to one skilled in the relevant art that
`
`the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application
`
`was filed, had possession of the claimed invention.
`
`3.
`
`Claims 1, 6, and 11 recite “such that a visual field of each first imaging
`
`element and a visual field of each second imaging element are different from each
`
`
`other
`
`and the visual fields of all first imaging elements and the visual fields of
`
`all second imaging elements are common to each other regardless of the area
`
`cameras;” which includes a contradiction that renders the claims indefinite.
`
`4.
`
`Claims 1, 6, and 11 recite “a component supply device configured to store
`
`and supply
`
`a movement mechanism which moves
`
`controller, performed by
`
`the processor, configured to
`
`a first imaging element and a second imaging
`
`element
`
`generic terms modified by functional language but not modified by structure
`
`or a structural term and not naming a structure readily recognized by persons of skill in
`
`the art. The limitations invoke 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA), sixth
`
`paragraph, and shall be construed to cover the corresponding structure described in the
`
`specification and equivalents thereof. However, the written description fails to disclose
`
`the corresponding structure, material, or acts for each claimed function.
`
`

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`Application/Control Number: 13/950,905
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`Page 11
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`Art Unit: 2483
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`In particular, Specification is unclear as to the definition of the imaging element
`
`terms as they are used in the claims. See multiple uses in Specification, Page 2.
`
`Further, stating that a device is “performed by the processor” or “executable by
`
`hardware or by software executed by the processor” describes an intended property of
`
`the element but does not limit the structure of the device element itself. Similarly
`
`describing a "device in which an electronic component having a first surface and a
`
`second surface opposite to the first surface is stored" describes the intended use of a
`
`device without limiting the claimed scope to a particular structure.
`
`5.
`
`Claims 1-3, 5-8, and 10-16 are rejected as dependent on Claims 1 and 6 and 11.
`
`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 35 U.S.C. 112 (pre-AlA), sixth paragraph; or
`
`(b)
`
`Amend the written description of the specification such that it expressly
`
`recites what structure, material, or acts perform the claimed function, without introducing
`
`any new matter (35 U.S.C. 132(a)).
`
`lf applicant is of the opinion that the written description of the specification
`
`already implicitly or inherently discloses the corresponding structure, material, or acts 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
`
`

`

`Application/Control Number: 13/950,905
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`Page 12
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`Art Unit: 2483
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`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 § 103
`
`1.
`
`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 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.
`
`2.
`
`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 of this title, 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.
`
`3.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`Application/Control Number: 13/950,905
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`Page 13
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`Art Unit: 2483
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`4.
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`Claim scope is not limited by claim language that suggests or makes optional but
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`does not require steps to be performed, or by claim language that does not limit a claim
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`to a particular structure. However, examples of claim language, although not
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`exhaustive, that may raise a question as to the limiting effect of the language in a claim
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`are:
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`(A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby”
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`clauses. M.P.E.P. 2111.04. The clause is given weight when it provides "meaning and
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`purpose” to the claimed invention but not when “it simply expresses the intended result”
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`of the invention.
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`In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481,
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`1483 (Fed. Cir. 2005).
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`Where Applicant recites optional claim language, such as optional claim
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`language following the term(s) “wherein ..., for ..., such that
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`such claim language
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`does not limit the claims. While substantive rejection of such language is provided
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`below for purposes of compact prosecution, Examiner suggests rephrasing such claim
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`language to recite limitations corresponding to the subject matter of the claim.
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`5.
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`Claims 1-3 5-8 10-14 and 16 are rejected under 35 U.S.C. 103 as being
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`unpatentable over US 6211958 to Hachiya (“Hachiya”) in view of US 20040156539 to
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`Jansson (“Jansson”) and further in view of US 6538244 to Skunes (“Skunes”).
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`Application/Control Number: 13/950,905
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`Art Unit: 2483
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`6.
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`Regarding Claim 1: “An electronic component mounting apparatus
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`comprising:
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`a.
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`a component supply device configured to store and supply an
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`electronic component having a first surface and a second surface opposite
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`to the first surface;
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`(“and a tray on which the electronic components 2 are
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`stored” Hachiya, Column 3, lines 51-52.)
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`b.
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`a holding unit device which picks up the electronic component
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`stored in the component supply device and which holds the electronic
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`component picked up from the component supply device;
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`(“a mounting
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`head 7 for picking up by suction the electronic components 55 2 from the tray 3”
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`Hachiya, Column 3, lines 51-52.)
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`c.
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`a movement mechanism which moves the holding device;
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`(“moving
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`means 5 for moving the mounting head 7” Hachiya, Column 3, lines 57-60.)
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`d.
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`a three-dimensional component imaging device which comprises [at
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`least three] area cameras, each having a first imaging element and a
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`second imaging element oriented in a substantially same direction, (“The
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`recognizing means 8 is constructed as shown in FIG. 2, in which a line camera
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`11 and a shutter camera [area camera] 12 are disposed.” Hachiya, Column 4,
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`lines 5-7.)
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`e.
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`such that a visual field of each first imaging element and a visual
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`field of each second imaging element are different from each other and
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`each configured to image the electronic component, and the visual fields of
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`all first imaging elements and the visual fields of all second imaging
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`elements are common to each other regardless of the area cameras;
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`(“The
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`recognizing means 8 is constructed as shown in FIG. 2, in which a line camera
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`11 and a shutter camera 12 are disposed” each having a different but
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`overlapping field of view. Hachiya, Column 4, lines 5-7 and Fig. 2.)
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`f.
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`a component recognition device which recognizes the electronic
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`component based on the images (“A recognizing means 8 is provided for
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`recognizing the position and the shape of the electronic components.” Hachiya,
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`Column 4, lines 61-63.)
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`g.
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`controller, performed by the processor, configured to set an imaging
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`form of the component imaging device; and (“The control circuit for the
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`recognizing means 8” that sets imaging and processing parameters. Hachiya,
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`Column 4, lines 61-62.)
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`h.
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`to a first imaging mode if a whole part of the first surface of the
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`electronic component held by the holding device falls within the visual field
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`of one of the first imaging element and the second imaging element, and to
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`a second imaging mode, if only a part of the first surface of the electronic
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`component held by the holding device falls within the visual field of the
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`first imaging element and the remaining part of the first surface of the
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`electronic component held by the holding device falls within the visual field
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`of the second imaging element, (“a selecting means for selecting either the line
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`Art Unit: 2483
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`camera or the shutter camera depending on the size or shape of the electronic
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`component” Hachiya, Column 2, lines 20-21.)
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`i.
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`Hachiya does not teach the suggested embodiment: “wherein: when the
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`imaging form is set to the first imaging mode, the component recognition
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`device recognizes a first electronic component held by the holding device,
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`based on an image that is imaged by the first imaging element, and
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`recognizes a second electronic component that is held together with the
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`first electronic component by the holding unit, based on an image that is
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`imaged by the second imaging element, and
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`when the imaging form is set to the second imaging mode, the
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`component recognition device recognizes the electronic component that is
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`held by the holding device, based on a generated image which includes a
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`whole part of the first surface of the electronic component, and the
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`generated image is produced by combining the image imaged by the fir_st
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`imaging element with the image imaged by the second imaging element.”
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`Under the broadest reasonable interpretation consistent with the instant
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`specification and ordinary skill in the art, in the first imaging mode multiple
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`smaller components can be imaged by individual imagers, and in the second
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`imaging mode a single large component can be imaged simultaneously by
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`multiple imagers, such as when imagers have offset positions.
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`Jansson teaches the above claim capability in the context of optical
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`inspection of electronic components: “apparatus for inspecting an array of
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`electronic components, comprising a scanning device adapted to capture images
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`of at least one surface of each of the respective components” where “the first
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`camera 222 is preferably vertically-offset from the viewing position of the second
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`camera 224,” and “multiple images of strips of light taken at various positions
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`using particular lighting effects can be compiled and assembled to form a single
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`representation comprising the whole surface area of the substrate 216 during
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`processing.”
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`Jansson, Paragraphs 7 and 67. Thus two offset imagers can be
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`used simultaneously to image an array of electronic components, and the
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`multiple image results can be used individually or combined to produce claimed
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`effects. Further Jansson teaches: “multiple images of strips of light taken at
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`various positions using particular lighting effects can be compiled and assembled
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`to form a single representation comprising the whole surface area of the
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`substrate 216 during processing.” Jansson, Paragraph 67.
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`Therefore, before the effective filing date of the claimed invention, it would
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`have been obvious to one of ordinary skill in the art to modify Hachiya to
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`recognize a first electronic component held by the holding unit, based on an
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`image that is imaged by the first imaging element, and recognize a second
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`electronic component that is held together with the first electronic component by
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`the holding unit, based on an image that is imaged by the second imaging
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`element, and recognize the electronic component that is held by the holding unit,
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`based on an image in which the image that is imaged by the first imaging
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`element is combined with the image that is imaged by the second imaging
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`Application/Con