www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`14/768,912
`
`08/19/2015
`
`Masayuki HIGASHI
`
`54949
`
`2818
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`”W
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`CARLEY~ JEFFREY T-
`
`3729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/09/2019
`
`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.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0,7709 A0170” Summary
`
`Application No.
`14/768,912
`Examiner
`Jeffrey Carley
`
`Applicant(s)
`HIGASHI et al.
`Art Unit
`3729
`
`AIA (FITF) Status
`No
`
`- 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
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`1). Responsive to communication(s) filed on 02/04/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`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.
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`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.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—5 and 7—8 is/are pending in the application.
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`5a) Of the above claim(s) fl is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) 4—5 and 7—8 is/are rejected.
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`E] Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* 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
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`http://www.uspto.gov/patents/init events/pph/index.'sp 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
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`is/are: a)C] accepted or b)Ej 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)C] 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)C] All
`
`b)C] Some**
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`c)C] None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] 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)
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`1) C] Notice of References Cited (PTO-892)
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`2) D 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)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190429—A
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`

`

`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application is being examined under the pre—AIA first to invent provisions.
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`Continued Examination Under 37 CFR 1.114
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`A request for continued examination under 37 CFR 1.114, including the fee set forth in
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`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is
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`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
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`has been timely paid, the finality of the previous Office action has been withdrawn pursuant to
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`37 CFR 1.114. Applicant's submission filed on 02/09/19 has been entered.
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`Claim Interpretation
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`The following is a quotation of 35 U.S.C. 112(f):
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`(f) Element in Claim for a Combination. , An element in a claim for a combination may be expressed
`as a means or step for performing a specified function without the recital of structure, material, or acts
`in support thereof, and such claim shall be construed to cover the corresponding structure, material, or
`acts described in the specification and equivalents thereof.
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`The following is a quotation of pre—AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing a
`specified function without the recital of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material, or acts described in the specification
`and equivalents thereof.
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`The claims in this application are given their broadest reasonable interpretation using the
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`plain meaning of the claim language in light of the specification as it would be understood by
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`one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 3
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`commonly referred to as a claim limitation) is limited by the description in the specification
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`when 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is invoked.
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`As explained in MPEP § 2181, subsection 1, claim limitations that meet the following
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`three—prong test will be interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
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`paragraph:
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`(A)
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`the claim limitation uses the term “means” or “step” or a term used as a substitute for
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`“means” that is a generic placeholder (also called a nonce term or a non—structural term
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`haVing no specific structural meaning) for performing the claimed function;
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`(B)
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`the term “means” or “step” or the generic placeholder is modified by functional language,
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`typically, but not always linked by the transition word “for” (e. g., “means for”) or another
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`linking word or phrase, such as “configured to” or “so that”; and
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`(C)
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`the term “means” or “step” or the generic placeholder is not modified by sufficient
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`structure, material, or acts for performing the claimed function.
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`Use of the word “means” (or “step”) in a claim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C.
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`112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is
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`interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is rebutted when
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`the claim limitation recites sufficient structure, material, or acts to entirely perform the recited
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`function.
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`Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that
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`the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre—AIA 35
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`U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under
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`35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 4
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`limitation recites function without reciting sufficient structure, material or acts to entirely
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`perform the recited function.
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`Claim limitations in this application that use the word “means” (or “step”) are being
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`interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, except as
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`otherwise indicated in an Office action. Conversely, claim limitations in this application that do
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`not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre—
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`AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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`This application includes one or more claim limitations that do not use the word “means,”
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`but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
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`paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with
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`functional language without reciting sufficient structure to perform the recited function and the
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`generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a
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`first board conveyance mechanism and a second board conveyance mechanism” (line 9), “a
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`board holding unit” (line 10), “a component mounting unit” (line 13), “component feeding unit”
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`(line 14), “a board distribution unit” (line 16) and “a distribution control unit” (line 19) in claim
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`4; and “a first component feeding unit and a second component feeding unit” (lines 3—4) and “a
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`first component mounting mechanism and a second component mounting mechanism” (lines 6—
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`7) in claim 5.
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`Each of the above limitations has been subjected to the “3—prong analysis” per MPEP
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`2181. First, each limitation uses a replacement for “means for” In these instances, though the
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`term “means for” is absent, it is replaced by “mechanism” and “unit” which are equally broad
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`and without inherent structure. One can easily replace each instance of mechanism or unit with
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`“means” without changing the apparent meaning of the claims. Secondly, the “mechanism” and
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 5
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`“unit” language is modified by functional language: first and second board conveyance
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`mechanisms and board holding unit “which conveys”; component mounting unit, and first and
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`second component mounting mechanism “which executes the component mounting work”; “fed
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`by” a component feeding unit and first and second component feeding units; a board distribution
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`unit “which receives... and distributes”; a distribution control unit “which controls”. Third, none
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`of the above mechanisms or units are modified by any structure for achieving the specified
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`function: are the conveyance mechanisms human operators, or belts, or turrets, or robotic arms,
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`etc.? How does one draw or construct a “unit” or a “mechanism”? What structures are
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`necessary to hold or mount components? Does the controller have memory? Is it a strictly
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`mechanical, i.e. analog, controller, or is there computer control as well as mechanical control
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`means? Accordingly, the three—prong analysis for each of the above limitations has been met.
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`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or
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`pre—AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the
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`corresponding structure described in the specification as performing the claimed function, and
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`equivalents thereof.
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`If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C.
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`112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, applicant may:
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`(1) amend the claim
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`limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112,
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`sixth paragraph (e. g., by reciting sufficient structure to perform the claimed function); or (2)
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`present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform
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`the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre—AIA
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`35 U.S.C. 112, sixth paragraph.
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 6
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`Claim Rejections - 35 US C § 112
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`The following is a quotation of 35 U.S.C. 112(b):
`(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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`Claims 4-5 and 7-8 are rejected under 35 U.S.C. 112(b), as being indefinite for failing
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`to particularly point out and distinctly claim the subject matter which the inventor or a joint
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`inventor, or for pre—AIA the applicant regards as the invention.
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`Claim 4 discloses: “recognizing a recognition mark formed in each of the two kinds of
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`the boards to thereby identify the kind of the board’. This limitation is indefinite because one
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`cannot possibly know which board is being modified by the italicized language. Two marks are
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`purportedly being recognized on two boards, however only one board is identified? There is “a”
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`(i.e. one) recognition mark claimed as being recognized, but it is claimed as being recognized in
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`two boards, which makes no logical sense. Moreover, if one is recognizing two boards, then one
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`cannot know which board is expected to be “the board” that was identified. When the claim is
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`read in light of the specification, it appears that the intent was something akin to “recognizing a
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`recognition mark formed in each of the two kinds of the boards to thereby identify the kinds of
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`the boards”. Accordingly, the claim has been examined, as best understood, however, as it is
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`improper to import limitations from the Specification into the claims, one cannot be sure if this
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`interpretation correlates to that which was intended.
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`Claims 5 and 7-8 are also rejected as indefinite, so rendered by virtue of their
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`dependency upon the indefinite subject matter of claim 4.
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 7
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`Claim Rejections - 35 US C § 103
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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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 4-5 and 7-8 are rejected under 35 U.S.C. 103(3) as being unpatentable over
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`Kawase et al. (US 2012/0272511 A1), in View of Jy0k0 (US 5317802).
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`Regarding claim 4, as best understood, Kawase discloses an electronic component
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`mounting method performed by an electronic component mounting system that comprises: a
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`component mounting line (1) formed by interconnecting a plurality of component mounting
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`apparatuses (M2, M3) concurrently performing component mounting work to mount an
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`electronic component (component) on at least two kinds of boards (13) including a first kind of
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`boards (carrying S2 or S3) and a second kind of boards (carrying S1 or S4) (Title; Abstract; figs.
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`1—3 and 6B; pars. 0018, 0021—0024, and 0031—0035), wherein each of the component mounting
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`apparatuses comprises: a first board conveyance mechanism (6A) and a second board
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`conveyance mechanism (6B), each of which comprises a board holding unit (12) which conveys
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`the board delivered from an upstream—side (left side) apparatus (M1) in a board conveyance
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`direction (“a”: left—to—right) and positions and holds the conveyed board (figs. 1—3; pars. 0022—
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`0025); a component mounting unit (23) which executes the component mounting work by
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`picking up the electronic component fed by a component feeding unit (20) and transfers and
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`mounts the picked—up electronic component onto the board held by the board holding unit (fig. 2;
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`pars. 0023—0028); a board distribution unit (M3B) which receives the board from the upstream—
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`side apparatus (M1) and distributes the received board to either the first board conveyance
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 8
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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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`component mounting method comprising: distributing at least one of the first kind of boards (S3)
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`and at least one of the second kind of boards (S l) to the first board conveyance mechanism (6A)
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`and distributing at least another one of the first kind of boards (S2) and another one of the second
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`kind of boards (S4) to the second board conveyance mechanism (figs. 6A and 6B) based on a
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`board request signal issued from a most—upstream component mounting unit in the component
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`mounting line (Abstract; figs. 2—7(b); pars. 0024, 0030 and 0033—0041), wherein said electronic
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`component mounting method further comprises: recognizing a recognition mark (S l—S4) formed
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`in each of the two kinds of the boards to thereby identify the kind of the board (fig. 2; pars. 0023—
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`0024); and changing over first mounting data and second mounting data from one to the other
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`based on an identification result of the board to thereby control the component mounting unit, the
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`first mounting data and the second mounting data being stored in a storage unit (32) and being
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`provided for mounting the electronic component on the two kinds of the boards, respectively
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`(pars. 0030—0033 and 0037—0042). Kawase, however, does not explicitly disclose that the two
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`kinds of the boards are different in mounting workload.
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`J yoko teaches that it is well known to perform a related method (Abstract; figs. 1A and 2;
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`col. 1, lines 7—l3), including the first kind of boards and the second kind of boards having
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`different mounting workloads (each board is a different kind by the nature of having a specified
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`mounting requirements for different individual components: fig. 2; col. 3, lines 40—62).
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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 Jyoko. It is
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 9
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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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`Regarding claim 5, as best understood, the modified Kawase teaches the method of claim
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`4 as detailed above, and Kawase further discloses that the component feeding unit comprises a
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`first component feeding unit (20A) and a second component feeding unit (20B) which are
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`disposed on outer sides (top and bottom as viewed) of the first board conveyance mechanism and
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`the second board conveyance mechanism, respectively, and wherein the component mounting
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`unit 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
`Art Unit: 3729
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`Page 10
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`Regarding claim 7, as best understood, the modified Kawase in view of Jyoko teaches
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`the method of claim 4 as detailed above, and Kawase further discloses that it is known to that the
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`at least one of the first kind of boards and the at least one of the second kind of boards are
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`alternately conveyed to the first board conveyance mechanism, and the at least another one of the
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`first kind of boards and the at least another one of the second kind of boards are alternately
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`conveyed to the second board conveyance mechanism (fig. 6B; pars. 0030—0034).
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`Regarding claim 8, as best understood, the modified Kawase in view of J yoko teaches
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`the method of claim 4 as detailed above, and J yoko further teaches that it is well known to
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`perform the method wherein the first kind of boards and the second kind of boards are different
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`in component mounting density (each board is a different kind by the nature of having a
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`specified mounting requirements for different individual components: fig. 2; col. 3, lines 40—62).
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`Response to Arguments
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`Applicant's arguments filed 02/04/19 have been fully considered but they are not
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`persuasive. Applicant has argued that the method of Kawase does not disclose recognition
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`marks formed in the boards, because the marks S 1—84 are sensors, and are purportedly not
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`formed “in” the boards. Respectfully, the Examiner disagrees with these assertions. Initially it is
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`noted that the Applicant relies on figure 6A for the argument that the marks are not formed in the
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`boards. This conveniently ignores figure 6B, wherein it is clear that the marks are within (i.e.
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`“in”) the circuit board. Moreover, it is clear from the original disclosure of the instant
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`application, that the claimed marks are not formed “inside” of the boards, but are simply on the
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`surfaces, in the exact same manner as in Kawase (instant specification: par. 0011). Nothing in
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`the specification requires anything further. Moreover, the claimed “recognizing” is very broad.
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page ll
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`It seems evident that the Applicant is importing limitations into the claims which are simply not
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`recited. There is no structure, machine or device claimed for performing the “recognizing” step,
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`which apparently could even be performed by an operator using his or her eyes. Further, there is
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`no structure for the marks in the claims either. It is evident that the marks (S 1—84) are “in” the
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`boards to at least the same extent as that which is actually claimed and provided for.
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`Additionally it is clear that the marks are recognized by a device. It is not relevant if the
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`recognition was “visual” or not, as nothing in the claims is drawn to the means or mechanism for
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`recognition. As such, these very broad limitations have been met by the prior art rejections
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`above. Regarding the arguments to Jyoko, that reference is not used in teaching the argued
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`limitations. Accordingly, all actually claimed limitations have been taught by the prior art as
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`shown above, and all arguments answered herein.
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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 Carley whose telephone number is (571)270—5609. The
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`examiner can normally be reached on Monday — Friday, 9:00 am — 5:00 pm.
`
`Examiner interviews are available via telephone, in—person, and video conferencing using
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`a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`
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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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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
`
`Page 12
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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
`
`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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`
`/JEFFREY T CARLEY/
`
`Examiner, Art Unit 3729
`
`/A. DEXTER TUGBANG/
`
`Primary Examiner
`Art Unit 3729
`
`