www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`13/950,905
`
`07/25/2013
`
`Eiichi Hachiya
`
`51464
`
`1320
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`09’2””
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`ITSKOVICH MIKHAIL
`
`2483
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/28/2018
`
`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
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`following e—mail address(es):
`
`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`13/950,905
`Examiner
`MIKHAIL ITSKOVICH
`
`Applicant(s)
`Hachiya et al.
`Art Unit
`2483
`
`AIA Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`|f 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).
`
`Status
`
`1). Responsive to communication(s) filed on 05/21/2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) C] This action is non-final.
`
`3)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`11,14 and 17—19 is/are pending in the application.
`
`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) 11,14 and 17—19 is/are rejected.
`
`[:1 Claim(s)
`
`is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. 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
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11)[:] The drawing(s) filed on
`
`is/are: a)D accepted or b)l:] 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):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)D All
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`b)I:J Some”
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`c)C] None of the:
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`1.[:]
`
`Certified copies of the priority documents have been received.
`
`2.[:]
`
`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)
`
`1) C] Notice of References Cited (PTO-892)
`
`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180924
`
`

`

`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
`
`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
`
`1.
`
`Applicant's arguments filed on 05/21/2018 have been fully considered but they
`
`are not persuasive.
`
`2.
`
`Generally, Examiner recommends simplifying the present claims to elements that
`
`are necessary to implement the intended invention, and adding steps that particularly
`
`and non-trivially relate the image processing to the automation of component mounting.
`
`For example, what substantive automation is performed with respect to object
`
`measurement or recognition and/or imaging mode selection?
`
`3.
`
`With respect to section 112, Applicant argues: “As discussed at the January 23,
`
`2018 interview, the limitations "independent devices having different visual fields" apply
`
`to the first imaging element and the second imaging element, not to the three area
`
`cameras. In addition, claims 11 and 18 were amended on January 25, 2018 to further
`
`clarify that: [repeating the rejected claim language]
`
`Accordingly, Applicant
`
`respectfully submits that claim 11 is clear as to the claimed structures and their
`
`relationships.”
`
`Examiner notes that statements during the interview do not limit the claims to
`
`preferred embodiments. Since Applicant argues a particular advantage over
`
`conventional and cited prior art, Applicant should point out the advantageous structures
`
`more clearly.
`
`lndefiniteness remains as to how a single camera can have two different
`
`

`

`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 3
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`fields of view in implementing the intended uses of the claims, or what particular
`
`structure should be evaluated with respect to prior art.
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`4.
`
`With respect to section 101, Applicant argues: “claim 11 is directed to a method
`
`performed by a machine or to a machine. Accordingly, when considering claim 11 as a
`
`whole, the claims are not merely directed to an abstract idea and, therefore, are not
`
`directed to a non-statutory subject matter.”
`
`Examiner notes that this argument ignores the reasons for rejection, particularly
`
`because the method designates modes of operation for a well-established machine.
`
`The machine neither limits the method claims nor provides substantially more than the
`
`abstract subject matter under the guidance of Alice.
`
`5.
`
`Applicant argues:
`
`“A method for mounting an electronic component on a
`
`substrate does not constitute an abstract idea. The PT AB has dictated that claim
`
`limitations that "are sufficiently concrete" are set "outside the broad definition of abstract
`
`idea." Ex parte Wegman 111, Appeal No. 2013-008168 (PTAB 2015), pg. 6.”
`
`Examiner notes that at this level of generality,
`
`this concept is an abstract idea
`
`broadly directed to automating a manual activity.
`
`6.
`
`Applicant argues: “Here, the claims are so concrete because they are
`
`inextricably tied to a particular system (an electronic component mounting apparatus,
`
`electronic components to be mounted on a substrate, a three-dimensional component
`
`imaging device comprising at least three area cameras, each of which having a first
`
`imaging element and a second imaging element,
`
`Examiner notes that the claims are directed to a method of selecting imaging
`
`modes. Reciting apparatus components does not particularly limit the steps of the
`
`

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`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 4
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`method, and the notion that this method can be adapted to a component mounting
`
`apparatus established in the art does not indicate substantially more than an abstract
`
`idea under Alice. What are the non-trivial method steps for selecting imaging modes?
`
`7.
`
`Applicant argues:
`
`“In other words, the claims do not merely recite the idea of
`
`"automating a mental process of selecting an operation mode based on visual
`
`appearance of the object
`
`,imaging and extracting information at a high level of
`
`abstraction, and selecting profiles for digital image processing
`
`but, rather, an
`
`application of that idea to specific objects and instances.”
`
`Examiner notes that the mere presence of a machine tie or transformation of an
`
`object is not sufficient to render a claim patent eligible. Bilski v. Kappos, 130 S. Ct.
`
`3218, 3232, 561 US 593, 177 L. Ed. 2d 792 (2010). Applicant should address the
`
`specific reasons for rejection as repeated below.
`
`8.
`
`Applicant argues: “An abstract idea, on the other hand,
`
`is one that is set apart
`
`from such objects and instances and is merely theoretical. See Dictionary.com
`
`(abstract), Based on the Random House Dictionary,
`
`http://www.dictionary.com/browse/abstract. Therefore, the claims are not directed to an
`
`abstract idea and are patent eligible.”
`
`Examiner notes that definitions of “abstract idea” pertinent to this examination are
`
`legal precedents which are cited below. While a dictionary may suggest common
`
`language definitions,
`
`it does not override the bases of law cited in the reasons for
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`rejection.
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`

`

`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 5
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`9.
`
`Applicant argues: “The claimed elements are not considered in their entirety, or
`
`their interrelationship with the other recited structures, with respect to the claims as a
`
`whole.”
`
`10.
`
`Examiner notes that (a) claims have been considered as awhole and with
`
`respect to a number of common exceptions, and have been found not eligible, and (b)
`
`Applicant fails to provide any basis for why the claims can become eligible as a whole.
`
`11.
`
`Applicant argues: “Rather, the claims narrow, confine, and tie down the recited
`
`elements so that they do not cover the fully recited abstract ideas. Specifically, claim 11
`
`recites the steps of "picking up and holding, by at least one of a plurality of nozzles of
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`the electronic component mounting apparatus, the electronic component having a
`
`second surface held by the at least one of the plurality of nozzles and a first surface
`
`opposite to the second surface which is one side of the component", "imaging the first
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`surface and the second surface of the electronic component by the first imaging
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`element and the second imaging element of the electronic component mounting
`II ”
`
`apparatus ,
`
`Examiner notes that Applicant argues for patentability of apparatus components
`
`where only a method is being claimed. Application of an abstract idea to an example
`
`application or to a field of use does not limit the claims to a patentable subject matter.
`
`For one, the number of nozzles or the particularities of the cameras in the suggested
`
`apparatus do not substantively limit the method steps being performed.
`
`12.
`
`Applicant argues: “The claims further recite how the relationship among the
`
`executed steps of the electronic component mounting method is used to recognize the
`
`

`

`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 6
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`electronic components to be mounted on the substrate fast and with high accuracy,
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`regardless of the size of the electronic components.”
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`2.
`
`Examiner notes that the notion that Applicant expects an advantage does not
`
`limit the claims to a particular method or patentable subject matter. The fact that
`
`applicant has recognized another advantage which would flow naturally from following
`
`the suggestion of the prior art cannot be the basis for patentability when the differences
`
`would otherwise be obvious. See Exparte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. &
`
`lnter. 1985).
`
`13.
`
`Applicant argues: “Further, improvements to atechnology or technical field are
`
`sufficient to qualify as significantly more regardless of whether the claims are directed to
`
`an abstract idea. The Office action did not consider such improvements. The present
`
`claims are directed to an electronic component mounting method.”
`
`Examiner notes that this standard requires specific eligible improvements to
`
`specific patentable subject matter. The standard also requires objective evidence on
`
`the record to support such an argument. Applicant provides a personal opinion that the
`
`claims are eligible but does not cite either a particular legal basis or objective evidence
`
`to support this argument.
`
`14.
`
`Regarding Claim construction, Applicant argues: “The Office action notes that
`
`claim limitations following the recitations "wherein", "for", "such that", etc., have been
`
`disregarded as allegedly not limiting the claims to a particular structure.”
`
`Examiner notes that this is not an accurate restatement of the bases for claim
`
`construction. See details below.
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`In particular, where Applicant claims his invention by
`
`

`

`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 7
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`statements of intended results, the statements are not equivalent to limitations that
`
`would have described particular method steps for accomplishing the same result.
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`15.
`
`Applicant argues: “First, none of the cited references teaches "athree-
`
`dimensional component imaging device".”
`
`Examiner notes that since Applicant has blurred the claimed definition of "a
`
`three-dimensional component imaging device" to a point of indefiniteness, the claims
`
`are not clearly eligible over the prior art or over section 112.
`
`16.
`
`Applicant argues: “The recognizing means 8 disclosed in Hachiya is a camera
`
`which images a two-dimensional image, and which is not capable of imaging a three-
`
`dimensional image. Also, the recognizing means 8 disclosed in Hachiya does not
`
`comprise at least three area cameras.”
`
`Examiner notes that since the method claims “generate” 3D images by
`
`processing images and use area cameras (not 3D cameras), they are not directed to a
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`structure of a particular 3D camera, and they do not clearly distinguish over the
`
`methods of the prior art that capture and process images in the same manner. See
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`reasons for rejection below.
`
`17.
`
`Applicant argues: “Fourth, the Office action acknowledges that Hachiya,
`
`Jansson, and Yamazaki do not teach "generating a three-dimensional image of the
`
`electronic component by processing the images of the first surface and the second
`
`surface of the electronic component". Instead, Skunes and the Applicant' s Admitted
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`Prior Art ("AAPA") are cited for teaching these limitations.”
`
`Examiner notes that one cannot show nonobviousness by attacking references
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`individually where the rejections are based on combinations of references. See In re
`
`

`

`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 8
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`Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck& 00., 800 F.2d 1091,
`
`231 USPQ 375 (Fed. Cir. 1986). Examiner notes that a disclosure of a single prior art
`
`document naturally concentrates on the prior art knowledge narrowly tailored to their
`
`specific application and thus does not cover the state of the art as a whole, therefore
`
`citation of multiple prior art references is appropriate to cover both the scope and the
`
`detail of the claimed invention. 35 U.S.C. 103 authorizes a rejection where, to meet the
`
`claim, it is necessary to modify a single reference or to combine it with one or more
`
`other references. M.P.E.P. 706.02(j).
`
`18.
`
`Applicant argues:
`
`“In addition, the Office action contends that the Applicant' s
`
`Admitted Prior Art ("AAPA") mentioned on page 3, first paragraph of the Specification,
`
`discloses both means for twodimensional and three-dimensional imaging (see Office
`
`action, page 17, #j). The Specification mentions three-dimensional
`
`imaging, but in the
`
`context of describing the issues with the use of such three-dimensional
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`imaging in view
`
`of the costand the ability to recogmze electronic components with different sizes. The
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`claimed electronic component mounting method solves these issues and the solution is
`
`not described or suggested in any way in the cited references or in the alleged
`
`Applicant' s Admitted Prior Art.”
`
`Examiner notes that Applicant’s mere intention to claim an invention that
`
`improves on prior art neither explains what the improvement is nor particularly limits the
`
`claims to such an improvement.
`
`Claim Rejections - 35 USC § 112
`
`1.
`
`The following is a quotation of 35 U.S.C. 112(b):
`
`

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`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 9
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`(b) CONCLUSION—The specification shall concludewith one or more claims particularly
`pointing out and distinctlyclaiming the subject matterwhich the inventoror a jo int inventor
`regards as the invention.
`
`The following is aquotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specificationshall conclude with one or more claims particularfypointing outand distinctly
`claiming thesubjectmatterwhich the applicant regards as his invention.
`
`2.
`
`Claims 11, 14, 17-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
`
`AlA), second paragraph, as being indefinite for failing to particularly point out and
`
`distinctly claim the subject matter which the inventor or ajoint inventor, or for pre-AlA
`
`the applicant regards as the invention.
`
`3.
`
`A broad range or limitation together with a narrow range or limitation that falls
`
`within the broad range or limitation (in the same claim) is considered indefinite, since
`
`the resulting claim does not clearly set forth the metes and bounds of the patent
`
`protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board
`
`of Patent Appeals and lnterferences in Ex parte Wu, 10 USPQZd 2031, 2033 (Bd. Pat.
`
`App. & Inter. 1989), as to where broad language is followed by "such as" and then
`
`narrow language. The Board stated that this can render a claim indefinite by raising a
`
`question or doubt as to whether the feature introduced by such language is (a) merely
`
`exemplary of the remainder of the claim, and therefore not required, or (b) a required
`
`feature of the claims. Note also, for example, the decisions of Ex parte Sfeigewald, 131
`
`USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte
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`Hasche, 86 USPQ 481 (Bd. App. 1949).
`
`4.
`
`Claim 11 recites: “the at least three area cameras comprising a first imaging
`
`element and a second imaging element,
`
`the first imaging element and the
`
`second imaging element each being independent devices having differentvisual
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`

`

`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 10
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`fields,
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`imaging the first surface and the second surface of the electronic
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`component by the first imaging element and the second imaging element of the
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`electronic component mounting apparatus,” which raises a questions as to the
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`scope of the claimed cameras:
`
`Is the first/second imaging element an area camera, or
`
`does each area camera comprise a first and second imaging element (in which case
`
`how are these elements independent
`
`if they make up the same camera structure); how
`
`does having different visual fields form an area camera which by definition images an
`
`area which is one visual field; how does the claim orient a single area camera to take
`
`images of opposing surfaces; what is the relevance of having three area cameras in the
`
`claim directed to imaging elements? The claim language is entirely unclear as to what
`
`structure, combination of structure, or structural relationships limit the claims.
`
`Also, since it is unclear as to what imaging is performed it is also unclear as to
`
`the limitation of “generating a three-dimensional image of the electronic
`
`component by processing the images of the first surface and the second surface
`
`of the electronic component,” in Claim 11.
`
`Examiner suggests selecting just one category of imaging
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`elements/cameras/devices and particularly pointing out their structural and functional
`
`relationships to other elements in the claim.
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`5.
`
`6.
`
`Claims 14, 17-19 are rejected as dependent on Claim 11.
`
`Also Claim 18 recites: “wherein the forth imaging mode is a form recognizing
`
`based on a three-dimensional
`
`image imaged by all of the at least three area cameras,”
`
`which is indefinite because it is unclear how all area cameras (such as wide angle
`
`

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`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 11
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`cameras or cameras with completely different fields of view) can produce a three-
`
`dimensional image (without limitation or possession of specialized processing).
`
`Claim Rejections - 35 USC § 101
`
`1.
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers anynew and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvementthereof, mayobtain a patent
`therefor, subject to the conditions and requirements ofthis title.
`
`3.
`
`Claims directed to a statutory category, may nonetheless be ineligible for a
`
`patent if the broadest reasonable interpretation of the claims includes judicial
`
`exceptions, such as “laws of nature, natural phenomena, and abstract ideas.”
`
`Association for Molecular Pathology v. Myriad Genetics, Inc, 569 U.S. 133 S.Ct. 2107,
`
`2116, 186 L.Ed.2d 124 (2013), MPEP 2106(ll).
`
`“The machine-or-transformation testis
`
`a useful and important clue, an investigative tool, for determining whether some claimed
`
`inventions are processes under § 101
`
`however,
`
`the mere presence of a machine tie or
`
`transformation of an object is not sufficient to render a claim patent eligible. Bilski v.
`
`Kappos, 130 S. Ct. 3218, 3232, 561 US 593, 177 L. Ed. 2d 792 (2010). The relevant
`
`question is whether the claimed elements, when considered individually and in
`
`combination, do significantly more than apply the judicial exception to well-understood,
`
`routine, and conventional activities commonly used in industry. Alice Corp. Pty. Ltd. v.
`
`CLS Bank lntern., 134 S. Ct. 2347, 2359, 573 U.S., 189 L. Ed. 2d 296 (2014).
`
`However, patent eligibility under § 101 may not “depend simply on the draftsman's art.”
`
`Id. at 2360 (quoting Flock, 437 U.S., at 593, 98 S.Ct. 2522); MPE 2106(ll).
`
`In this
`
`regard, a recitation of generic or purely functional components configured to apply the
`
`judicial exception are not regarded to be substantially more than the judicial exception
`
`

`

`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 12
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`itself, because the phrasing does not offer “a meaningful limitation beyond generally
`
`linking the use of the judicial exception to a particular technological environment.”
`
`Id.
`
`(quoting Bilski at 610).
`
`4.
`
`Claims 11, 14, 17-19, directed to statutory categories of methods, are rejected as
`
`being directed toward patent ineligible subject matter. Based upon analysis of the
`
`present claims, the claims appear to be directed toward abstract ideas, a combination of
`
`(a) automating a manual activity in picking up and mounting electronic components and
`
`(b) obtaining and analyzing images and outputting analysis results (in form of imaging
`
`modes) in the context of a component mounting apparatus indicated to be common in
`
`the art. See, In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (Broadly
`
`providing an automatic or mechanical means to replace a manual activity which
`
`accomplishes the same result is not sufficient to distinguish the claims over prior art);
`
`Electric Power Group, LLC v. ALSTOM SA, 830 F. 3d 1350 (Fed. Cir. 2016) (Selecting
`
`information for collection by content or source, analyzing it, and displaying results of
`
`collection and analysis are not eligible either separately or in combination). And note
`
`that the claimed “picking up and holding the electronic component, mounting at least
`
`one of the recognized first electronic component” correspond to either admitted prior art
`
`or to well-established functions of component mounting apparatuses as described in
`
`Specification, Page 1.
`
`The elements of the present claims, when considered individually and in
`
`combination, are not directed toward significantly more than an abstract idea itself; i.e.
`
`computing is applied at a high level of generality and without meaningful relation to
`
`

`

`Application/Control Number: 13/950,905
`Art Unit: 2483
`
`Page 13
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`automation or physical transformation (imaging the first surface and the second surface,
`
`generating a three-dimensional image; setting, by the controller, the imaging form,
`
`recognizing, when the imaging form is set to the first imaging mode; recognizing, when
`
`the imaging form is set to the second imaging mode;); claims are presented by
`
`statements of intended results (recognizing, when the imaging form is set to the first
`
`imaging mode
`
`based on an image that is imaged, recognizing, when the imaging
`
`form is set to the second imaging mode
`
`based on the generated three-dimensional
`
`image); without limitation to specialized computer features or hardware; applying well-
`
`understood, routine, and conventional activities commonly used in industry (picking up
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`and holding the electronic component, mounting at least one of the recognized first
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`electronic component
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`corresponding to well-established function of component
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`mounting apparatuses as in Specification, Page 1); amounting to no more than mere
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`instruction to implement an abstract idea in the context of what is well-established in the
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`field (taking and processing images in the context of picking up and mounting a
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`component).
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`Such subject matter is not considered patent eligible according to In re Venner,
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`262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (Broadly providing an automatic or
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`mechanical means to replace a manual activity which accomplishes the same result is
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`not sufficient to distinguish the claims over prior art); Electric Power Group, LLC v.
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`ALSTOM SA, 830 F. 3d 1350 (Fed. Cir. 2016) (Selecting information for collection by
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`content or source, analyzing it, and displaying results of collection and analysis are not
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`eligible either separately or in combination); Gotfschalk v. Benson, 409 US. 63, 175
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`U.S.P.Q. 673 (1972) (recitation of common computing elements for use in conversion of
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`

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`Application/Control Number: 13/950,905
`Art Unit: 2483
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`Page 14
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`numerical information does not render the claims eligible);
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`in view of Alice Corp. Pty.
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`Ltd. v. CLS Bank lntern., 134 S. Ct. 2347, 573 U.S., 189 L. Ed. 2d 296 (2014)
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`(Application of the judicial exception to well-understood, routine, and conventional
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`activities commonly used in industry does not render the claims eligible).
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`Further, there are no limitations directed toward judicially recognized
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`improvements to another technology or technical field; improvements to the structure of
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`the computer itself; or meaningful limitations beyond generally linking the use of an
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`abstract idea to a particular technological environment,
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`i.e. there are no limitations to a
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`transformation of an object or specialized computer features or hardware; component
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`processing apparatus is not transformed by the image processing (which is performed
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`and applied substantially independently of component mounting) but rather provides a
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`field of use for the image processing.
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`The claims should be amended to include meaningful limitations within the
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`technical field. Examiner suggests particularly pointing out any meaningful automation
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`which connects the image processing to the component mounting.
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`Claim Construction
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`7.
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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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`

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`Application/Control Number: 13/950,905
`Art Unit: 2483
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`Page 15
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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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`8.
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`Claim scope is not limited by claim language directed to content of a signal (such
`
`as an image or a mode number) but does not require steps to be performed, or by claim
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`language that does not limit a claim to a particular structure, and thus does not require a
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`separate reason for rejection.
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`See, In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d
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`1031, 1035 (Fed. Cir. 1994);
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`In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864
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`(Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir.
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`1983). Where the claimed and prior art products are identical or substantially identical
`
`in structure or composition, or the claimed and prior art methods are identical or
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`substantially identical processes, a prima facie case of either anticipation or
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`obviousness has been established.
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`In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
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`433 (CCPA 1977); M.P.E.P. 2112.01. While substantive rejection of such language is
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`provided below for purposes of compact prosecution, Examiner suggests rephrasing
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`such claim language to recite limitations corresponding to the subject matter of the
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`claim.
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`Application/Control Number: 13/950,905
`Art Unit: 2483
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`Page 16
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`Machine limitations should make clear that the use of the machine in the claimed
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`process imposes a meaningful
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`limitation on the claim’s scope. See MPEP 2106.01;
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`Alice Corporation Pty. Ltd. v. CLS Bank International, el al, 134 S. Ct. 2347, 573 (2014);
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`In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (A mental
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`process rejection under 35 U.S.C. 101, for claiming a process of analyzing data
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`generated by mass spectrographic analysis of a gas by selecting the data to be
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`analyzed and by subjecting the data to a mathematical manipulation.)
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`Claim Rejections - 35 USC § 103
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`1.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`2.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`A patent for a claimed invention maynotbe obtained, notwithstanding that the claimed
`invention is not identicallydisclosed as set forth in section 102 of this title, if the differences
`between the claimed invention and the priorartare such that the claimed invention as awhole
`would have been obvious before the effective filing date of the claimed invention to a person
`having ordinaryskill in the art to which the claimed invention pertains. Patentabilityshall not
`be negated by the manner in which the invention was made.
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`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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`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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`This paragraph describes the treatment of admitted prior art. A statement by an
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`applicant in the specification or made during prosecution identifying the work of another
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`as “prior art” is an admission which can be relied upon for both anticipation and
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`obviousness determinations, regardless of whether the admitted prior art would
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`otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood
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`Int ’I Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQZd 1331, 1337 (Fed.
`
`Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570,