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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
`
`
`
`
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`14/768,912
`
`08/19/2015
`
`Masayuki HIGASHI
`
`54949
`
`2818
`
`04’06’2018 —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`CARLEY’ JEFFREY T-
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`ART UNIT
`3729
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`NOTIFICATION DATE
`
`DELIVERY MODE
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`04/06/2018
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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
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`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/768,912 HIGASHI ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`JEFFREY CARLEY [SENS 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
`
`Status
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`1)IZI Responsive to communication(s) filed on 02/23/2018.
`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) L6is/are pending in the application.
`5a) Of the above claim(s) fl is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_4-6 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
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`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
`:/'I’vaIW.usnI‘.0. ovI’ atentS/init events/
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`
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 08/19/2016 is/are: a)IXI 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)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`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.
`
`Attachment(s)
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`1) E Notice of References Cited (PTO-892)
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`3) D Interview Summary (PTO-413)
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`PaperNoISI/Mail Date”—
`PTO/SB/08b
`d/
`PTO/SB/08
`t
`t
`St
`I
`D'
`I'
`2 IZII f
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`)
`SaggTfig‘jQ),,j:°,,°§§{: 0830223,??172/07/2017 aan °r
`4) IZI Other: JP-2009-252925 Miyahara etal ref for 14768912.pdf.
`I
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Part of Paper No./Mai| Date 20180330
`
`Office Action Summary
`
`

`

`Application/Control Number: 14/768,912
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`Page 2
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`Art Unit: 3729
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`The present application is being examined under the pre—AIA first to invent provisions.
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`DETAILED ACTION
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`Election/Restrictions
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`Claims 1—3 have been withdrawn from further consideration pursuant to 37 CFR
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`1.142(b), as being drawn to a nonelected electronic component mounting system, there being no
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`allowable generic or linking claim. Applicant timely traversed the restriction (election)
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`requirement in the reply filed on 02/23/2018.
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`Applicant's election with traverse of group 11, claims 4—6, in the reply filed on 02/28/2018
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`is acknowledged. The traversal is on the ground(s) that because the two inventions share one
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`technical feature, which is not cited in Hidese, there must be unity of invention. This is not
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`found persuasive because the burden for restriction based on lack of unity of invention is not that
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`each and every feature of the two inventions be distinct. Moreover, while Hidese is not cited as
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`disclosing “distributing "two kinds of boards" to the board conveyance mechanisms "based on a
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`baord request signal issued from a most—upstream component mounting unit"” this does not
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`mean that the technical feature is deemed special. The burden for demonstrating lack of unity
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`was properly met in the restriction requirement, and the argument, though not necessarily
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`germane, has been answered herein.
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`The requirement is still deemed proper and is therefore made FINAL.
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`Specification
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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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`The following title is suggested: “Electronic Component Mounting Method”.
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`

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`Application/Control Number: 14/768,912
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`Page 3
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`Art Unit: 3729
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`Applicant is reminded of the proper content of an abstract of the disclosure.
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`A patent abstract is a concise statement of the technical disclosure of the patent and
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`should include that which is new in the art to which the invention pertains. The abstract should
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`not refer to purported merits or speculative applications of the invention and should not compare
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`the invention with the prior art.
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`If the patent is of a basic nature, the entire technical disclosure may be new in the art, and
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`the abstract should be directed to the entire disclosure. If the patent is in the nature of an
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`improvement in an old apparatus, process, product, or composition, the abstract should include
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`the technical disclosure of the improvement. The abstract should also mention by way of
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`example any preferred modifications or alternatives.
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`Where applicable, the abstract should include the following: (1) if a machine or
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`apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical
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`compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
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`Extensive mechanical and design details of an apparatus should not be included in the
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`abstract. The abstract should be in narrative form and generally limited to a single paragraph
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`within the range of 50 to 150 words in length.
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`See MPEP § 608.0l(b) for guidelines for the preparation of patent abstracts.
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`The abstract of the disclosure is objected to because the elected and examined claims are
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`drawn to a method. Contrary to the guidelines for content of the abstract as detailed above, the
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`current abstract does not disclose the steps of the claimed process. Correction is required. See
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`MPEP § 608.0l(b).
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`Application/Control Number: 14/768,912
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`Page 4
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`Art Unit: 3729
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`The disclosure is objected to because of the following informalities: there are several
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`instances of the term “takt time” (pars. 0004, 0033, 0035 and 0037); those recitations appear to
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`be a misspelling of the art recognized term “tact time”. Appropriate correction is required.
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`Claim Objections
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`Claim 6 is objected to because of the following informalities: on line 8 there is disclosed
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`“provided for producing the two kinds of the boards". While not indefinite, the selection of the
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`word “producing” is somewhat confusing. There is nothing in the original disclosure that
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`indicates that the substrate boards were made or produced by the Applicant(s). In this instance,
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`however, the use of the word simply appears to be incidental and should be changed for clarity.
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`Appropriate correction is required.
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`Claim Rejections - 35 USC § 112
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`The following is a quotation of 35 U.S.C. 112(b):
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`(B) CONCLUSION.7The 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.
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`The following is a quotation of 35 U.S.C. 112 (pre—AIA), second paragraph:
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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 4-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
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`subject matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
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`invention.
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`Claim 4 recites the limitation “a component mounting unit” in line 12. There is
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`previously recited: “a component mounting line formed by interconnecting a plurality of
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`component mounting units” (lines 3—4), and further: “each of the component mounting units
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`

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`Application/Control Number: 14/768,912
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`Page 5
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`Art Unit: 3729
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`comprises:” (line 7). These prior recitations (lines 3—4) render the component mounting unit of
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`line 12 indefinite because it is impossible to determine if the newly disclosed unit is one of the
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`previously disclosed units or if it is a new unit entirely. Moreover, based upon the second cited
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`portion (line 7), all of the remainder of the structure language in the claim is directed to being a
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`portion of the claimed mounting units, because "each of the component mounting units
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`comprisesz" is followed by the remainder of the structure and also includes the line 12 recitation
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`of a component mounting unit. Which is to say, as best understood, the claim appears to require
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`that: each of the component mounting units comprises... a component mounting unit”. Such a
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`recitation causes a circular logic loop and is indefinite as a result.
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`Claim 4 is further rejected as indefinite, because the claim recites: “two kinds of the
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`boards”. There is insufficient antecedent basis for this limitation in the claim. Previously there
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`was recited: “a board”. It appears that the prior limitation of “a board” should instead read: “a
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`plurality of boards” or for greater clarity, “at least two types of boards, different in workload,” or
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`the like.
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`Claims 5 and 6 are rejected by virtue of their dependency upon the indefinite subject
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`matter of independent claim 4. The claims have been examined as best understood.
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`Claim 5 is further rejected as indefinite, as the claim recites: “the component mounting
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`unit comprises...” It is impossible to determine which of the above discussed mounting units is
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`actually being recited in the claim. As such the claim is rendered indefinite.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 USC. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`

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`Application/Control Number: 14/768,912
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`Page 6
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`Art Unit: 3729
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
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`Claims 4-6 are rejected under 35 U.S.C. 103(3) as being unpatentable over Kawase
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`et al. (US 2012/0272511 A1), in View of Miyahara et 31. (JP 2009—252925).
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`Regarding claim 4, Kawase discloses an electronic component mounting method
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`performed by an electronic component mounting system that comprises: a component mounting
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`line (1) formed by interconnecting a plurality of component mounting units (M2, M3)
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`performing component mounting work to mount an electronic component (component) on a
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`board (13) and which concurrently performs the component mounting work on two of the boards
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`(Title; Abstract; figs. 1—3; pars. 18 and 21—24), wherein each of the component mounting units
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`comprises: a first board conveyance mechanism (6A) and a second board conveyance
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`mechanism (6B), each of which comprises a board holding unit (12) which conveys the board
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`delivered from an upstream—side (left side) apparatus (M1) in a board conveyance direction (“a”:
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`left—to—right) and positions and holds the conveyed board (figs. 1—3; pars. 0022—0025); a
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`component mounting [sub?]unit (23) which executes the component mounting work by picking
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`up the electronic component fed by a component feeding unit (20) and transfers and mounts the
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`picked—up electronic component onto the board held by the board holding unit (fig. 2; pars. 0023—
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`0028); a board distribution unit (M3B) which receives the board from the upstream—side
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`apparatus (M1) and distributes the received board to either the first board conveyance
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`mechanism or the second board conveyance mechanism (figs. 1—3; pars. 0029—0030); and a
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`distribution control unit (30) which controls the first board conveyance mechanism, the second
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`board conveyance mechanism and the board distribution unit (pars. 0029—0033), said electronic
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`

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`Application/Control Number: 14/768,912
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`Page 7
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`Art Unit: 3729
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`component mounting method comprising: mixedly distributing the two kinds of the boards to
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`each of the first board conveyance mechanism and the second board conveyance mechanism
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`based on a board request signal issued from a most—upstream component mounting unit in the
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`component mounting line (Abstract; figs. 2—7(b); pars. 0024, 0030 and 0033—0041). Kawase,
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`however, does not explicitly disclose using two kinds of the boards which are different in
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`mounting workload.
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`Miyahara teaches that it is well known to perform an analogous method (Abstract; figs. 1,
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`2 and 7; pars. 0011—0017), including using two kinds (different kinds of substrates) of the boards
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`which are different in mounting workload (Abstract; pars. 0005, 0013 and 0035).
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`It would have been obvious to one of ordinary skill in the art to have modified the current
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`invention of Kawase to incorporate the different types of workload substrates of Miyahara. It is
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`considered well known that efficiency and precise production are of great importance in
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`manufacturing circuit boards. Moreover, it is common to manufacture a number of different
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`types (shape, size, weight, mounting architecture, etc.) of boards and to mount varying
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`components upon those boards, in the same manufacturing facility. One of ordinary skill would
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`have known that the recognition devices of each of the prior art references could be used to
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`detect and supply more than one type of circuit board substrate for component mounting. The
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`obvious advantages include predictably increasing productivity throughput, thus decreasing
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`overall manufacturing costs.
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`Note: The Applicant(s) is respectfully reminded that the elected claims are statutorily
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`drawn to a method: "An electronic component mounting method..." and "the method
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`comprising..." (claim 4). In this case, for claim 4, the preamble of the claim extends from line 1
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`

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`Application/Control Number: 14/768,912
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`Page 8
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`Art Unit: 3729
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`through line 20. Based upon guidance from MPEP 2100, only those limitations in the preamble
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`which breathe life and meaning into the body (claim 4, lines 21—25) of the claim are considered
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`to carry patentable weight. In this instance, only the first and second board conveyance
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`mechanisms, a most upstream component mounting unit are positively required by the claimed
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`method. The remainder of the claimed apparatus structures have been demonstrated as being
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`disclosed, for clarity in prosecution, however they are not required by the method of at least
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`claim 4.
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`Regarding claim 5, the modified Kawase teaches the method of claim 4 as detailed
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`above, and Kawase further discloses that the component feeding Mcomprises a first
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`component feeding unit (20A) and a second component feeding unit (20B) which are disposed
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`on outer sides (top and bottom as viewed) of the first board conveyance mechanism and the
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`second board conveyance mechanism, respectively, and wherein the component mounting unit
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`comprises a first component mounting mechanism (23A) and a second component mounting
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`mechanism (23B) which are provided correspondingly to the first board conveyance mechanism
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`and the second board conveyance mechanism (fig. 2; pars. 0025—0028), respectively, said
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`electronic component mounting method comprising: causing the first component mounting
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`mechanism to pick up the electronic component from the first component feeding unit, and
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`mount the electronic component on the board positioned by the first board conveyance
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`mechanism, and causing the second component mounting mechanism to pick up the electronic
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`components from the second component feeding unit, and mount the electronic component on
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`the board positioned by the second board conveyance mechanism (figs. 2 and 6(a)—7(b); pars.
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`0025—0030).
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`

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`Application/Control Number: 14/768,912
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`Page 9
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`Art Unit: 3729
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`Regarding claim 6, the modified Kawase teaches the method of claim 4 as detailed
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`above, and Kawase further discloses: recognizing a recognition mark (Sl—S4) formed in each of
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`the two kinds of the boards to thereby identify the kind of the board (fig. 2; pars. 0023—0024; and
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`changing over first mounting data and second mounting data from one to the other based on an
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`identification result of the board to thereby control the component mounting unit, the first
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`mounting data and the second mounting data being stored in a storage unit (32) and being
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`provided for producing the two kinds of the boards, respectively (pars. 0030—0033 and 0037—
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`0042).
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to JEFFREY T. CARLEY whose telephone number is (571)270—
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`5609. The examiner can normally be reached Monday through Friday 8:30am—5:00pm.
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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.
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`

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`Application/Control Number: 14/768,912
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`Page 10
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`Art Unit: 3729
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/JEFFREY T CARLEY/
`
`Examiner, Art Unit 3729
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`/PETER VO/
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`Supervisory Patent Examiner, Art Unit 3729
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`