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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
`
`
`
`
`
`15/204,016
`
`07/07/2016
`
`Ryouji EGUCHI
`
`PIPMM—56471
`
`3195
`
`WOW)” —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`KOCH, GEORGE R
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`ART UNIT
`1745
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/07/2017
`
`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)
`
`

`

`
`
`Applicant(s)
`Application No.
` 15/204,016 EGUCHI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`George Koch $22” 1745
`
`-- 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)|:I Responsive to communication(s) filed on
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`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
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 149 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| CIaim(s)_1-9is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'I’vaIW.usnI‘.0. ovI’ atentS/init events/
`
`
`
`iindex.‘s or send an inquiry to PPI-iieedback{®usgto.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`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
`
`b)|:l Some” c)I:l None of the:
`
`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
`
`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) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20171016
`
`

`

`Application/Control Number: 15/204,016
`
`Page 2
`
`Art Unit: 1745
`
`DETAILED ACTION
`
`Notice of Pre-AIA 0r AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the
`
`first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 102
`
`2.
`
`In the event the determination of the status of the application as subject to AIA 35 USC.
`
`102 and 103 (or as subject to pre—AIA 35 USC. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same under either status.
`
`3.
`
`The following is a quotation of the appropriate paragraphs of 35 USC. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless ,
`
`(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.
`
`4.
`
`Claim(s) 1—4 and 6—9 is/are rejected under 35 USC. 102a1 as being anticipated by JP
`
`2012-104635 A.
`
`As to claim 1, JP 2012—104635 A discloses a component supply system (see paragraphs
`
`0024—52), comprising: a component supply unit automatically transfers a first carrier tape which
`
`stores components and is covered with a cover tape, exposes the components from the first
`
`carrier tape using a component exposing unit, and supplies the components which are exposed
`
`from the first carrier tape (see especially Figure 1 and 2 and paragraphs 0024—3 1);
`
`

`

`Application/Control Number: 15/204,016
`
`Page 3
`
`Art Unit: 1745
`
`a joining determination unit (control device 60) which determines whether or not a
`
`joining which joins a second carrier tape positioned behind the first carrier tape to the first carrier
`
`tape is present (see paragraph 0037); and
`
`a controller (control deVice 60) which controls transferring of the first carrier tape by the
`
`component supply unit (see paragraphs 0038—42), wherein
`
`the controller restricts the transferring of the first carrier tape in a case in which the
`
`joining determination unit determines that the joining is present (see paragraph 0037, disclosing
`
`that control deVice 60 judges whether a reel is an error and displays an error message).
`
`As to claim 2, JP 2012—104635 A discloses a reader (reading part 83, see paragraphs
`
`0035—36) which reads identification information attached to a reel which stores the first carrier
`
`tape;
`
`a storage which associates and stores the identification information attached to the reel
`
`with presence or absence of the joining (see Table T and ROM 62, paragraphs 0032—33); and
`
`a notification unit (display unit 81 functions as a notification unit) which performs
`
`notification of an occurrence of an abnormality (see especially paragraph 0044, disclosing that
`
`the invention of JP 2012—104635 A “displays production stoppage instructions on the display
`
`part 81”),
`
`wherein the joining determination unit determines whether or not the joining is present
`
`based on the identification information which is read by the reader and information stored in the
`
`storage, and wherein the controller causes the notification unit to perform notification of a
`
`warning in a case in which the joining determination unit determines that the joining is present
`
`(see especially paragraphs 0037—38 and 0043—44).
`
`

`

`Application/Control Number: 15/204,016
`
`Page 4
`
`Art Unit: 1745
`
`As to claim 3, JP 2012—104635 A discloses that the component supply unit includes a
`
`sensor (see detector 31, paragraph 0049) which detects the joining midway down a transfer path
`
`of the first carrier tape at a position in front of the component exposing unit, wherein the joining
`
`determination unit determines whether or not the joining is present based on detection
`
`information of the sensor, and wherein the controller stops transferring of the first carrier tape at
`
`a position at which the joining is in front of the component exposing unit in a case in which the
`
`joining determination unit determines that the joining is present.
`
`As to claim 4, JP 2012—104635 A discloses that the joining is transferred to a Visible
`
`position in a case in which the joining determination unit determines that the joining is present.
`
`See paragraphs 0049—52, and especially paragraph 0050, which discloses that the “worker reads
`
`the identification information of the bar code 32 of the wearing reel 23”, which reads on a Visible
`
`position as claimed.
`
`As to claim 6, JP 2012—104635 A discloses a component supply method (see paragraphs
`
`0024—52) in a component supply system including a component supply unit automatically
`
`transfers a first carrier tape which stores components and is covered with a cover tape, exposes
`
`the components from the first carrier tape using a component exposing unit, and supplies the
`
`components which are exposed from the first carrier tape (see especially Figure 1 and 2 and
`
`paragraphs 0024—3 1), the method comprising:
`
`

`

`Application/Control Number: 15/204,016
`
`Page 5
`
`Art Unit: 1745
`
`determining whether or not a joining which joins a second carrier tape positioned behind
`
`the first carrier tape to the first carrier tape is present (performed by control deVice 60, see for
`
`example paragraph 0037); and
`
`restricting transferring of the first carrier tape in a case in which the joining is determined
`
`to be present (see especially paragraphs 0037—38 and 0043—44).
`
`As to claim 7, JP 2012—104635 A discloses that the component supply system further
`
`includes a reader which reads identification information attached to a reel which stores the first
`
`carrier tape (reading part 83, see paragraphs 0035—36),
`
`a storage which associates and stores the identification information of the reel with
`
`presence or absence of the joining (see Table T and ROM 62, paragraphs 0032—33), and
`
`a notification unit (display unit 81 functions as a notification unit) which performs
`
`notification of a warning, wherein it is determined whether or not the joining is present based on
`
`the identification information which is read by the reader and information stored in the storage
`
`(see especially paragraphs 0037—38 and 0043—44), and wherein the notification unit performs
`
`notification of the warning in a case in which the joining is determined to be present (see
`
`especially paragraph 0044, disclosing that the invention of JP 2012—104635 A “displays
`
`production stoppage instructions on the display part 81”).
`
`As to claim 8, JP 2012—104635 A discloses that the component supply unit includes a
`
`sensor (see detector 31, paragraph 0049) which detects the joining midway down a transfer path
`
`of the first carrier tape at a position in front of the component exposing unit, wherein it is
`
`determined whether or not the joining is present based on detection information of the sensor,
`
`

`

`Application/Control Number: 15/204,016
`
`Page 6
`
`Art Unit: 1745
`
`and wherein transferring of the first carrier tape is stopped at a position at which the joining is in
`
`front of the component exposing unit in a case in which the joining is determined to be present.
`
`As to claim 9, JP 2012—104635 A discloses that the joining is transferred to a visible
`
`position in a case in which the joining is determined to be present. See paragraphs 0049—52, and
`
`especially paragraph 0050, which discloses that the “worker reads the identification information
`
`of the bar code 32 of the wearing reel 23”, which reads on a visible position as claimed.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`In the event the determination of the status of the application as subject to AIA 35 USC.
`
`102 and 103 (or as subject to pre—AIA 35 USC. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same under either status.
`
`6.
`
`The following is a quotation of 35 USC. 103 which forms the basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not
`identically disclosed as set forth in section 102, if the differences between the claimed invention and the
`prior art are such that the claimed invention as a whole would have been obvious before the effective
`filing date of the claimed invention to a person having ordinary skill in the art to which the claimed
`invention pertains. Patentability shall not be negated by the manner in which the invention was made.
`
`7.
`
`The factual inquiries set forth in Graham v. John Deere C0., 383 US. l, 148 USPQ 459
`
`(1966), that are applied for establishing a background for determining obviousness under 35
`
`USC. 103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`

`

`Application/Control Number: 15/204,016
`
`Page 7
`
`Art Unit: 1745
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`8.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was commonly
`
`owned as of the effective filing date of the claimed invention(s) absent any evidence to the
`
`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
`
`effective filing dates of each claim that was not commonly owned as of the effective filing date
`
`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
`
`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
`
`9.
`
`Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2012—104635
`
`A) as applied to claims 1—4 and 6—9 above.
`
`As to claim 5, JP 2012—104635 A discloses that the sensor is an ON/OFF sensor of a
`
`contact process or a non contact type. See paragraph 0049.
`
`However, JP 2012—104635 does not further disclose that the sensor is a transmitting
`
`sensor which detects a light blocking state of the first carrier tape, wherein the component supply
`
`unit further includes a computer which computes a light blocking length in a case in which the
`
`light blocking state is detected by the sensor, and wherein the joining determination unit
`
`determines that the joining is present in a case in which the light blocking length exceeds a
`
`threshold.
`
`However, official notice is taken that it is well known and conventional to select a
`
`transmitting sensor which detects a light blocking state of the first carrier tape such that the
`
`

`

`Application/Control Number: 15/204,016
`
`Page 8
`
`Art Unit: 1745
`
`component supply unit further includes a computer which computes a light blocking length in a
`
`case in which the light blocking state is detected by the sensor, and wherein the joining
`
`determination unit determines that the joining is present in a case in which the light blocking
`
`length exceeds a threshold as the non—contact sensor type to be used in JP 2012—2104635 A.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to George Koch whose telephone number is (571)272—1230 (TDD
`
`only). If the applicant cannot make a direct TDD—to—TDD call, the applicant can communicate by
`
`calling the Federal Relay Service at 1—866—377—8642 and giving the operator the above TDD
`
`number. The examiner can also be reached by E—mail at george.koch@uspto.gov if the applicant
`
`grants written authorization for e—mails. Authorization can be granted by filling out the USPTO
`
`Automated Interview Request (AIR) Form which is available at:
`
`http://www.uspto.gov/patent/uspto—automated—interview—request—air—form.html
`
`The examiner can normally be reached on M—F 10—6.
`
`Examiner interviews are available via telephone, in—person, and video conferencing using
`
`a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Philip Tucker can be reached on (571) 272—1095. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571—273—8300.
`
`

`

`Application/Control Number: 15/204,016
`
`Page 9
`
`Art Unit: 1745
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`GRK
`
`/George Koch/
`Primary Examiner, Art Unit 1745
`
`

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