UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`14/629,678
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`02/24/2015
`
`Taisuke MORI
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`54100
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`7598
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`0106/2017 —PEARNE & GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`TRINH’ MINH N
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
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`3729
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`NOTIFICATION DATE
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`DELIVERY MODE
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`04/06/2017
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`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.
` 14/629,678 MORI ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`MINH TRINH $2213 3729
`-- 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
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`Status
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`1)IZI Responsive to communication(s) filed on 2/15/17.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l 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
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) fl is/are pending in the application.
`5a) Of the above claim(s) 1 and2 is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
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`7)|Z| Claim(s)_3 and 4 is/are rejected.
`8)|:| 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
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`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'/\W¢W.LISI>I‘.0. ovI’ atentS/init events/
`
`
`
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
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`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).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)IZl All
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`b)|:l Some” c)I:l None of the:
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`1.IXI 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
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`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.
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`Attachment(s)
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`
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`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E 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 20170331
`
`

`

`Application/Control Number: 14/629,678
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`Page 2
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`Art Unit: 3729
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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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`DETAILED ACTION
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`2.
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`Applicant’s election without traverse of Group II, claims 3-4 in the reply filed on
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`2/15/17 is acknowledged. Thus claims 1-2 are withdrawn from further consideration
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`pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention I, there being no
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`allowable generic or linking claim. Election was made without traverse.
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`Specification
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`3.
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`The title of the invention is not descriptive. A new title is required that is clearly
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`indicative of the invention to which the claims are directed.
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`4.
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`The lengthy specification has not been checked to the extent necessary to
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`determine the presence of all possible minor errors. Applicant’s cooperation is
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`requested in correcting any errors of which applicant may become aware in the
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`specification.
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`Claim Rejections - 35 USC § 1 12
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`5.
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`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:
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`

`

`Application/Control Number: 14/629,678
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`Page 3
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`Art Unit: 3729
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`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.
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`Claims 3-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention.
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`Scope of the claims directed to a method however claims recite structure and its
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`associated elements such as “an electronic mounting system comprising. .
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`.
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`. “ in claim
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`3, lines 3-22 which made scope of the claims unclear.
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`In formulate the rejection on the
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`merits , the Examiner assumes that claims directed to a method invention and the
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`claims will be rejected accordingly.
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`It is also suggest that the term: “comprising" in claim 3, line 2 should be updated
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`to:
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`said electronic component mounting method comprising:—-“
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`“a component line“ in line 3 of claim 3 should be updated and started in line 4 of
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`claim 3 to: --“providing the electronic component mounting system including a
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`component |ine"--.
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`“said electronic component mounting method comprising:” in line 23 of claim 3
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`should be deleted.
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`Note that at this point of time the preamble of claim 3 has not been given any
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`weigh since it directed to a system rather than the method.
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`Whether or not “an upstream side device" claim 4 , line 3 as same as that in line
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`9 of claim 3 or not. Please be precisely.
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`

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`Application/Control Number: 14/629,678
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`Page 4
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`Art Unit: 3729
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`Claim Rejections - 35 USC § 103
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`6.
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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 may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
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`Claim 3 as best understood is/are rejected under 35 U.S.C. 103 as being
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`unpatentable over Maenishi et al (20080154392).
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`Maenishi et al discloses substantially every aspect limitations of the claimed
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`electronic component mounting method for performing a component mounting work on
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`a front surface and a rear surface of boards of a same type in parallel by an electronic
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`component mounting system, said electronic component mounting method comprising:
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`controlling the first component mounting mechanism to pick up an electronic
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`component from the first component supply unit, and to mount the electronic
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`componenton the board held by the board holding unit of each of the first board
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`conveyance mechanism and the second board conveyance mechanism (see Fig.2, step
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`301, 308a); and
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`controlling the second component mounting mechanism to pick up an electronic
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`component from the second component supply unit, and to mount the
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`electronic component on the board held by the board holding unit of each of the first
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`board conveyance mechanism and the second board conveyance mechanism (see Fig.
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`2, steps 301, 308b), respectively.
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`

`

`Application/Control Number: 14/629,678
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`Page 5
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`Art Unit: 3729
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`It is noted that no Art rejections has been applied to claim 4, since there are a
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`great deal of confusion and uncertainly as to the proper interpretation of the limitations
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`of the above claims. Therefore, it would not be proper to reject such claims s on the
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`basis of prior Art. (Refer to MPEP 2173.06).
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`Conclusion
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`7.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MINH TRINH whose telephone number is (571 )272—
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`

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`Application/Control Number: 14/629,678
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`Page 6
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`Art Unit: 3729
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`4569. The examiner can normally be reached on Monday -Thursday 8:00 am to 4:30
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`pm.
`
`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Peter Vo can be reached on (571) 272-4690. The fax phone number for the
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`organization where this application or proceeding is assigned is 571 -273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`
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`
`mt
`
`/MINH TRINH/
`
`Primary Examiner, Art Unit 3729
`
`

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`Application/Control Number: 14/629,678
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`Page 7
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`Art Unit: 3729
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