UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`14/736,817
`
`06/11/2015
`
`HideO MATSUOKA
`
`PIPMM-54594
`
`7454
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`03W”
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OHIO 44114-3108
`UNITED STATES OF AMERICA
`
`EXAM“
`
`CARTER, CHRISTOPHER W
`
`2126
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/28/2018
`
`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
`
`following e—mail address(es):
`
`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`14/736,817
`Examiner
`CHRISTOPHER W CARTER
`
`Applicant(s)
`MATSUOKA, Hideo
`Art Unit
`AIA Status
`2126
`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 2/13/2018.
`[: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)
`
`1 and 3 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) 1 and 3 is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`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 6/11/2015 is/are: a). accepted or b)E] 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). All
`
`b)D Some”
`
`C)D None of the:
`
`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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Datew.
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180321
`
`

`

`Application/Control Number: 14/736,817
`Art Unit: 2126
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined under the first
`
`inventor to file provisions of the AIA.
`
`Response to Amendment
`
`The amendment filed 2/13/2018 has been entered. Claims 1 and 3 remain pending in the
`
`application. Claims 2 and 4 have been cancelled. Applicant’s amendments and arguments with regards
`
`to claims 1 and 3 have not overcome the 35 U.S.C. 101 rejections previously set forth in Non-Final Office
`
`Action mailed on 9/12/2017.
`
`Claim Rejections - 35 USC § 101
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
`matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
`conditions and requirements of this title.
`
`Claims 1 and 3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a
`
`judicial exception (Le, a law of nature, a natural phenomenon, or an abstract idea) without significantly
`
`more. Regarding Claim 1, is directed to an abstract idea. Claim 1 represents an abstract idea of
`
`gathering, analyzing, and transmitting data performed on a general purpose computer which is similar
`
`to the concept courts have deemed abstract, (Electric Power Group, LLC, v. Alstom; 830 F.3d 1350,
`
`119 U.S.P.Q.2d1739 (Fed. Cir. 2016)) the steps of ”creates component data”, ”acquires component
`
`identification information , checks whether or not the component disposed in a predetermined
`
`position in the component supplying unit is a component to be disposed in the predetermined position”,
`
`

`

`Application/Control Number: 14/736,817
`Art Unit: 2126
`
`II
`”transmits the component identification information ,
`
`II
`
`Page 3
`
`request for creation of component data”, and
`
`”creates the component data" do not represent significantly more. It is advised that clarifying that the
`
`component mounting apparatus is controlled based on the data regarding the alternative component
`
`data by amending a control or operating limitation may avoid the classification of the claims as abstract
`
`ideas.
`
`Thus, taken alone, the additional elements do not amount to significantly more than the above-
`
`identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination
`
`adds nothing that is not already present when looking at the elements taken individually. There is no
`
`indication that the combination of elements improves the functioning of a computer or improves any
`
`other technology.
`
`Regarding Claim 3, is directed to an abstract idea. Claim 3 represents an abstract idea of
`
`gathering, analyzing, and transmitting data performed on a general purpose computer which is similar
`
`to the concept courts have deemed abstract, (Electric Power Group, LLC, v. Alstom; 830 F.3d 1350,
`
`119 U.$.P.Q.2d1739 (Fed. Cir. 2016)) the steps of ”creates component data”, ”acquires component
`
`identification information”, ”checks whether or not the component disposed in a predetermined
`
`position in the component supplying unit is a component to be disposed in the predetermined position”,
`
`”acquire identification information”, ”transmit identification information”, and ”create the component
`
`data" do not represent significantly more. It is advised that clarifying that the component mounting
`
`apparatus is controlled based on the data regarding the alternative component data by amending a
`
`control or operating limitation may avoid the classification of the claims as abstract ideas.
`
`Thus, taken alone, the additional elements do not amount to significantly more than the above-
`
`identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination
`
`adds nothing that is not already present when looking at the elements taken individually. There is no
`
`

`

`Application/Control Number: 14/736,817
`Art Unit: 2126
`
`Page 4
`
`indication that the combination of elements improves the functioning of a computer or improves any
`
`other technology.
`
`Claim Rejections - 35 USC § 103
`
`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.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
`
`set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is
`not identically disclosed as set forth in section 102, if the differences between the claimed invention
`and the prior art are such that the claimed invention as a whole would have been obvious before the
`effective filing date of the claimed invention to a person having ordinary skill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`The factual inquiries set forth in Graham v. John Deere C0,, 383 U.S. 1, 148 USPQ 459 (1966),
`
`that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are
`
`summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over |shimoto (US Patent
`
`8,849,442) in View of Elhanan et al. (US PGPUB 20070250201).
`
`

`

`Application/Control Number: 14/736,817
`Art Unit: 2126
`
`Page 5
`
`Regarding Claim 1; Ishimoto teaches; A component mounting system comprising: (Title, Fig. 2;
`
`disclose a component mounting system)
`
`a component mounting apparatus which mounts components supplied from a component
`
`supply member disposed in a component supplying unit on a substrate; (Fig. 2; column 5, lines 36-59;
`
`discloses a component mounting device (4) including a plurality of tape feeders (component supply
`
`member) and which mounts components using mounting head (12) (component supplying unit) on a
`
`substrate)
`
`a data creating apparatus which creates component data, which is a control parameter set for
`
`mounting the component on the substrate by the component mounting apparatus, for each
`
`component; (Column 2, lines 30-40; disclose a data creation unit (data creating apparatus which
`
`includes: code reader (18), mounting control unit (21), input unit (26), and component supply state
`
`detector (28); column 7, lines 33-51) for creating component data regarding substitute components
`
`to be used by the mounting device and which includes information specifying the substrate on which the
`
`substitute components are to be mounted on and mounting positions (control parameters) for each
`
`component)
`
`and a component arranging operation supporting apparatus which includes an identification
`
`information acquiring unit that acquires component identification information given to the
`
`component supplying member, (Fig. 4; column 6, lines 15-34; discloses a component mounting device
`
`control device (20) component arranging operation supporting apparatus) which includes a code
`
`reader (18) (identification information acquiring unit) that acquires component information regarding
`
`substrates and information regarding components to be arranged on the substrate)
`
`and a control unit which checks whether or not the component disposed in a predetermined
`
`position in the component supplying unit is a component to be disposed in the predetermined
`
`position based on the component identification information acquired by the identification
`
`

`

`Application/Control Number: 14/736,817
`Art Unit: 2126
`
`Page 6
`
`information acquiring unit, (Fig. 4; column 6, lines 15-46; discloses a mounting control unit (21) (control
`
`unit) which utilizes information from the scanned substrate using the code reader (18)
`
`(component information acquiring unit) which provides substrate information (component identification
`
`information) to the control unit. The mounting control unit (21) then uses the NC program (23) stored in
`
`storage unit (22) to sequentially mount predetermined types of components at defined positions on the
`
`substrate (i.e. checks whether components in the component supplying unit is a component to be
`
`disposed in a predetermined position))
`
`wherein the control unit of the component arranging operation supporting apparatus includes
`
`a component data creation requesting unit that transmits the component identification information
`
`acquired by the identification information acquiring unit and identification information related to an
`
`alternative component to the data creating apparatus and performs a request for a creation
`
`of component data regarding the alternative component, (Fig. 4 and 7; discloses, during the mounting
`
`of component operation as described in Fig. 7, at step ST4, if it is determined that a substitute
`
`component is being used, a request is made to update the control sequence with new data (component
`
`data creation requesting unit) and where the transmitted data includes identification of the substitute
`
`component (column 10, lines 31-36) (alternative component information) and substrate component
`
`information (column 10, lines 37-40) (component identification information))
`
`and the data creating apparatus receives the request from the component data creation
`
`requesting unit and creates the component data regarding the alternative component. (Figs. 4 and 7;
`
`column 10, lines 37-44); discloses step STS where the mounting control unit (21) (part of the data
`
`creating apparatus) creates substitute (alternative) component data)
`
`|shimoto appears to be silent on; ...acquiring identification information related to an
`
`alternative component that is used as an alternative to the component...
`
`

`

`Application/Control Number: 14/736,817
`Art Unit: 2126
`
`Page 7
`
`...creates the component data regarding the alternative component by cogzing the comgonent data
`
`regarding the comgonent that is reg/aced with the alternative comgonent
`
`However, Elhanan et al. teaches; ...acquiring identification information related to an
`
`alternative component that is used as an alternative to the component... (Elhanan et al.; Figs. 21 and 22,
`
`paragraph [0318]; discloses where parameters of the original component are compared to that of the
`
`substitute and the substitute component data is updated based on any discrepancies between the
`
`two components.)
`
`...creates the component data regarding the alternative component by cogzing the comgonent data
`
`regarding the comgonent that is reg/aced with the alternative comgonent (Elhanan et al.; paragraphs
`
`[0071]-[0073]; disclose where generic geometric parameters are copied from a specific component to be
`
`used in the manufacturing process and where a substitute (alternative) component is chosen based on a
`
`match of a copy of the generic geometric parameters, thus the substitute (alternative) component is a
`
`copy of the specific component)
`
`Ishimoto and Elhanan et al. are analogous art because they are from the same field of endeavor
`
`or similar problem solving area, component mounting systems.
`
`It would have been obvious to one of ordinary skill in the art prior to the effective filing date of
`
`the disclosed invention to have combined the teachings of Elhanan et al. with the disclosed invention of
`
`Ishimoto of utilizing primary component data when creating alternative component data. Including this
`
`information in the creation of the alternative component data would guarantee that the alternative
`
`component is utilized properly and placed in the correct spaces on the substrate. KSR, 550 U.S. 398
`
`(2007), 82 USPQ2d at 1396; MPEP 2143(0).
`
`Regarding Claim 3; Ishimoto teaches; A component data creation method of a component
`
`mounting system that includes (Abstract; Fig. 2)
`
`

`

`

`

`Application/Control Number: 14/736,817
`Art Unit: 2126
`
`Page 9
`
`information) to the control unit. The mounting control unit (21) then uses the NC program (23) stored in
`
`storage unit (22) to sequentially mount predetermined types of components at defined positions on the
`
`substrate (i.e. checks whether components in the component supplying unit is a component to be
`
`disposed in a predetermined position))
`
`the method comprising:
`
`causing the identification information acquiring unit to acquire identification information
`
`related to the component and identification information related to an alternative component; causing
`
`the component arranging operation supporting apparatus to transmit both of the identification
`
`information related to the component and the alternative component acquired by the
`
`identification information acquiring unit to the data creating apparatus; (Fig. 4 and 7; discloses, during
`
`the mounting of component operation as described in Fig. 7, at step ST4, if it is determined that a
`
`substitute component is being used, a request is made to update the control sequence with new data
`
`(component data creation requesting unit) and where the transmitted data includes identification of the
`
`substitute component (column 10, lines 31-36) (alternative component information) and substrate
`
`component information (column 10, lines 37-40) (component identification information))
`
`and causing the data creating apparatus to create component data regarding the alternative
`
`component received from the component arranging operation supporting apparatus. (Figs. 4 and 7;
`
`column 10, lines 37-44); discloses step STS where the mounting control unit (21) (part of the data
`
`creating apparatus) creates substitute (alternative) component data)
`
`|shimoto appears to be silent on; causing the identification information acquiring unit to
`
`acquire identification information related to the component and identification information related to
`
`an alternative component that is used as an alternative to the component
`
`

`

`Application/Control Number: 14/736,817
`Art Unit: 2126
`
`Page 10
`
`and causing the data creating apparatus to create component data regarding the alternative
`
`component based on both of the identification information related to the component and the alternative
`
`component received from the component arranging operation supporting apparatus.
`
`Wherein the component data regarding the alternative component is created by copying the
`
`component data regarding the component which is replaced with the alternative component.
`
`However, Elhanan et al. teaches; causing the identification information acquiring unit to
`
`acquire identification information related to the component and identification information related to
`
`an alternative component that is used as an alternative to the component
`
`and causing the data creating apparatus to create component data regarding the alternative
`
`component based on both of the identification information related to the component and the alternative
`
`component received from the component arranging operation supporting apparatus. (Figs. 21 and 22,
`
`paragraph [0318]) discloses where parameters of the original component are compared to that of the
`
`substitute and the substitute component data is updated based on any discrepancies between the
`
`two components.
`
`Wherein the component data regarding the alternative component is created by copying the
`
`component data regarding the component which is replaced with the alternative component.
`
`(Elhanan et al.; paragraphs [0071]-[0073]; disclose where generic geometric parameters are copied from
`
`a specific component to be used in the manufacturing process and where a substitute (alternative)
`
`component is chosen based on a match of a copy of the generic geometric parameters, thus the
`
`substitute (alternative) component is a copy of the specific component)
`
`Ishimoto and Elhanan et al. are analogous art because they are from the same field of endeavor
`
`or similar problem solving area, component mounting systems.
`
`It would have been obvious to one of ordinary skill in the art prior to the effective filing date of
`
`the disclosed invention to have combined the teachings of Elhanan et al. with the disclosed invention of
`
`

`

`Application/Control Number: 14/736,817
`Art Unit: 2126
`
`Page 11
`
`Ishimoto of utilizing primary component data when creating alternative component data. Including this
`
`information in the creation of the alternative component data would guarantee that the alternative
`
`component is utilized properly and placed in the correct spaces on the substrate. KSR, 550 U.S. 398
`
`(2007), 82 USPQ2d at 1396; MPEP 2143(0).
`
`Response to Arguments
`
`Applicant's arguments filed 2/13/2018 have been fully considered but they are not persuasive.
`
`Regarding the 35 U.S.C. 101 argument, the applicant points to paragraph [0001] of the
`
`specification to point out the system is directed to a system and method of mounting components on a
`
`substrate and thus should be considered significantly more as the invention is not merely directed to
`
`gathering, analyzing, and transmitting data.
`
`The office understands the applicant’s intent, however, within the scope of a claim, it merely
`
`specifies first that there is a component mounting apparatus which is capable of mounting components
`
`on a substrate. The subsequent limitations merely specifies creating component control data as well as
`
`creating component control data relating to an identified alternative component. Though the intent is
`
`that the alternative component data will be used by the component mounting system to place the
`
`component on a substrate, it is not currently expressed explicitly. Thus, having a component mounting
`
`system and also having data that can be utilized is not considered significantly more because the
`
`component mounting system as currently claimed does not necessarily use the data.
`
`The office recommends, as highlighted above, that including a limitation in the claims that
`
`explicitly states that the component mounting system uses the alternative component data generated
`
`to place the alternative component on a substrate, that would constitute as significantly more and thus
`
`overcome the current rejection.
`
`

`

`Application/Control Number: 14/736,817
`Art Unit: 2126
`
`Page 12
`
`With regards to the added limitation, the office has reviewed the current prior art of rejection
`
`and has shown where the prior art teaches the new concept of record.
`
`Conclusion
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth
`
`in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
`
`the mailing date of this action.
`
`In the event a first reply is filed within TWO MONTHS of the mailing date
`
`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
`
`shortened statutory period, then the shortened statutory period will expire on the date the advisory
`
`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
`
`date of the advisory action.
`
`In no event, however, will the statutory period for reply expire later than
`
`SIX MONTHS from the mailing date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to CHRISTOPHER W CARTER whose telephone number is (469)295-9262. The
`
`examiner can normally be reached on 9-6:30.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Robert Fennema can be reached on 571-272-2748. The fax phone number for the organization where
`
`this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 14/736,817
`Art Unit: 2126
`
`Page 13
`
`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for 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 you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer
`
`Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
`
`CANADA) or 571-272-1000.
`
`/CHRISTOPHER W CARTER/
`Examiner, Art Unit 2126
`
`/ROBERT E FENNEMA/
`
`Supervisory Patent Examiner, Art Unit 2126
`
`