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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
`
`
`
`
`
`14/867,079
`
`09/28/2015
`
`Masayuki MANTANI
`
`PIPMM—55108
`
`3312
`
`0mm —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`FERGUSON SAMRETH, MARISSA LIANA
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`ART UNIT
`2854
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/26/2016
`
`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):
`
`patdocket @ pearne.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`itatus
`2854
`MARISSA FERGUSON-
`
`SAM RETH es
`
`Office Action Summary
`
`Applicant(s)
`Application No.
` 14/867,079 MANTANI, MASAYUKI
`
`
`-- 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
`
`1)IZI Responsive to communication(s) filed on 4/13/16.
`
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)|Z| This action is FINAL.
`
`2b)|:l This action is non-final.
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`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) 1,2 and 4-7is/are pending in the application.
`
`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s) 1, 2, and4- 7is/are rejected.
`8)I:I Claim(s)_ is/are objected to.
`
`9)I:I Claim((s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, 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
`
`htt
`://www.us tocov/ atents/init events/
`
`h/Endex.'s orsend an inquiry to PPeredback@ usgtogov.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`11)|:l The drawing(s) filed on
`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)IXI All
`b)I:I Some” c)I:I None of the:
`1.IXI Certified copies of the priority documents have been received.
`2.|:| Certified copies of the priority documents have been received in Application No.
`3.|:l 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)
`
`
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20160712
`
`

`

`Application/Control Number: 14/867,079
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`Page 2
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`Art Unit: 2854
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Election/Restrictions
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`2.
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`Newly submitted claims 8 and 9 are directed to an invention that is independent
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`or distinct from the invention originally claimed for the following reasons:
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`Invention I, Claims 1-7 and Invention ll, Claims 8 and 9 are related as process
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`and apparatus for its practice. The inventions are distinct if it can be shown that either:
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`(1) the process as claimed can be practiced by another and materially different
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`apparatus or by hand, or (2) the apparatus as claimed can be used to practice another
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`and materially different process.
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`(MPEP § 806.05(e)).
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`In this case, the apparatus as
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`claimed can be used to practice another and materially different process such as a
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`process that starts slidably moving the printing head from a first region on a mask.
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`Since applicant has received an action on the merits for the originally presented
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`invention, this invention has been constructively elected by original presentation for
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`prosecution on the merits. Accordingly, claims 8 and 9 withdrawn from consideration as
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`being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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`Claim Rejections - 35 USC § 1 12
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`3.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`IN GEN ERAL.—The specification shall contain a written description of the
`(a)
`invention, and of the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor orjoint inventor of carrying out the invention.
`
`

`

`Application/Control Number: 14/867,079
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`Page 3
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`Art Unit: 2854
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`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
`Claims 1, 2 and 4-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-
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`AIA), first paragraph, as failing to comply with the written description requirement. The
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`claim(s) contains subject matter which was not described in the specification in such a
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`way as to reasonably convey to one skilled in the relevant art that the inventor or a joint
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`inventor, or for pre-AIA the inventor(s), at the time the application was filed, had
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`possession of the claimed invention.
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`With respect to claim 1, “wherein the screen printing apparatus comprises no
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`retainer in which the paste is deposited” appears to be new matter. Specifically, the
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`language does not appear to be supported by the specification and was not previously
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`presented in the original disclosure as filed.
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`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`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 1, 2 and 4-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
`
`AIA), second paragraph, as being indefinite for failing to particularly point out and
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`

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`Application/Control Number: 14/867,079
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`Page 4
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`Art Unit: 2854
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
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`the applicant regards as the invention.
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`Specifically, the recitation “wherein the screen printing apparatus comprises no
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`paste retainer in which the paste is deposited” is indefinite. The language is very broad
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`and does not make sense in the context of the claim. There is no description in the
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`specification that reasonably conveys a clear interpretation of the pertinence of the
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`claim limitation “no paste retainer”. In the broadest interpretation, there has to inherently
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`be some type of a paste retainer (for example, the paste dispenser or part of the frame
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`of the screen) because something has to hold the paste during the process. It is
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`suggested the applicant more clearly define the element that applicant intends to
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`exclude.
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`Claim Rejections - 35 USC § 102
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`4.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`

`

`Application/Control Number: 14/867,079
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`Page 5
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`Art Unit: 2854
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or otherwise available to the public before the effective filing date of the claimed
`invention.
`
`Claims 1, 2, 4, 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being
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`anticipated by Tan (US Patent 5,813,331).
`
`With respect to claim 1, Tan teaches a screen printing apparatus, comprising:
`
`a mask (14’) which has a first opening (142') provided in a first region (refer to marked-
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`up Figure 7), and a second opening (142) provided in a second region (refer to marked-
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`up Figure 7) which is thicker than the first region (Figure 7); and
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`a printing head (16) which fills the first opening (142’) with a paste in a state
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`where a substrate is in contact with the first region (Figure 9), and fills the second
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`opening with the paste in a state where the substrate is in contact with the second
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`region (Figure 11),
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`wherein the printing head comprises at least one squeegee (16) which slidably
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`moves on the mask and fills the first opening and the second opening with the paste
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`(Figures 8-11), and
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`wherein the mask has an intermediate region provided between the first region
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`and the second region on the mask (refer to marked-up Figure 7 in the detailed region),
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`where the squeegee (16) stops after squeegee slidably moves in the first region to fill
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`the first opening with the paste, and initially start moving, and last stops moving (note:
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`the recitation is merely a functional recitation of a desired mode of operation. It has
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`been held that apparatus claims must be structurally distinguishable from the prior art.
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`Particular attention is invited to MPEP 2114(l) which states, "While features of an
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`

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`Application/Control Number: 14/867,079
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`Page 6
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`Art Unit: 2854
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`apparatus may be recited either structurally or functionally, claims directed to an
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`apparatus must be distinguished from the prior art in terms of structure rather than
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`function, In re Schreiber, 128 F.3d 1473. 1477-78.44 USPO.2d 1429, 1431- 32 (Fed.
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`Cir. 1997)." Furthermore, MPEP 2114 (11) states, "A claim containing a 'recitation with
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`respect to the manner in which a claimed apparatus is intended to be employed does
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`not differentiate the claimed apparatus from a prior art apparatus' if the prior art
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`apparatus teaches all the structural limitations of the claim. " Therefore, there is no
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`controller system that controls the squeegee and since Tan et al. teaches all of the
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`structure as recited, Tan et al. is capable of being used in the manner recited and meets
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`the claim language), and
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`wherein the screen printing apparatus comprises no paste retainer in which the
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`paste is deposited (refer to 112, 151 and 2nd rejections above).
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`Intermediate region; inclination surface
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`With respect to claim 2, Tan teaches wherein the printing head fills the second
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`opening with the paste in a state where the substrate is in contact with the second
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`region (Figure 11) after filling the first opening with the paste in a state where the
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`
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`Lower
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`surface
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`of the
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`first
`
`region
`isflush
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`with a
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`lower
`
`surface
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`of the
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`second
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`region
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`

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`Application/Control Number: 14/867,079
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`Page 7
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`Art Unit: 2854
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`substrate is in contact with the first region (Figure 9 and Column 3, Line 60-Column 4,
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`Line 23).
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`With respect to claim 4, Tan teaches a lower surface of the first region is flush
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`with a lower surface of the second region (refer to marked-up Figure 7).
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`With respect to claim 6, Tan teaches the claimed invention with the exception of
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`an upper surface of the first region is flush with an upper surface of the second region
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`(note: in the broadest interpretation, depending on how the screen is positioned in the
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`printing device the 1st lower region/2nd lower region can be turned upside down and
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`therefore would become the 1st upper region/2nd upper region and therefore both
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`regions upper regions would be flush with respect to each other).
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`With respect to claim 7, Tan et al. teaches a component mounting line,
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`comprising: the screen printing apparatus (100) according to claim 1; and
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`a component mounting apparatus which mounts a component onto a substrate on
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`which the paste is printed by the screen printing apparatus (Column 2, Lines 60-67).
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`Claim Rejections - 35 USC § 103
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`5.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`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 of this title, 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
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`

`

`Application/Control Number: 14/867,079
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`Page 8
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`Art Unit: 2854
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`having ordinary skill in the art to which the claimed invention pertains. Patentability shall not
`be negated by the manner in which the invention was made.
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`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tan in view
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`of Nakatsuji (US Publication 2015/0163925).
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`With respect to claim 5, Tan teaches the claimed invention including a lower
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`surface of the first region is flush with a lower surface of the second region (refer to
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`marked-up Figure 7), however does not explicitly disclose an intermediate region
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`comprises an inclination surface except for an inclination angle of substantial 90 degree.
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`Nakatsuji et al. teaches a mask with an intermediate region comprises an inclination
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`surface except for an inclination angle of substantial 90 degree (Figure 10A).
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`It would have been obvious to one of ordinary skill in the art before the time of
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`filing of the present application to modify the screen printing apparatus to provide a
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`mask with an intermediate region with an inclination surface except for an inclination
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`angle of substantial 90 degree as taught by Nakatsuji et al. as it would require obvious
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`substitution of one known mask with another mask for the purpose of providing versatile
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`apparatus that can compensate for different pastes.
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR1.136(a).
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`

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`Application/Control Number: 14/867,079
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`Page 9
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`Art Unit: 2854
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MARISSA FERGUSON-SAMRETH whose telephone
`
`number is (571)272—2163. The examiner can normally be reached on 8:00am-6:00pm.
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`lf attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Judy Nguyen can be reached on 571-272—2258. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
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`

`

`Application/Control Number: 14/867,079
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`Page 10
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`Art Unit: 2854
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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 applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
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`
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`
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`
`/MARISSA FERGUSON-SAMRETH/
`
`Examiner, Art Unit 2854
`
`/Jill Culler/
`
`Primary Examiner, Art Unit 2854
`
`