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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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
`www.uspto.gov
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`15/644,275
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`07/07/2017
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`ATSUTO SHIMADA
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`PIPMM-57758
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`3503
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`759°
`52°“
`PEARNE & GORDON LLP
`
`03/22/2019
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`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
`
`MAL THIEN T
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`2887
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`03/22/2019
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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
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`following e—mail address(es):
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`patdoeket@pearne.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
`
`Application No.
`15/644,275
`Examiner
`THIEN MAI
`
`Applicant(s)
`SHIMADA, ATSUTO
`Art Unit
`AIA (FITF) Status
`2887
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`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).
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`Status
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`1). Responsive to communication(s) filed on 7/07/17.
`[: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*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`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) fl is/are rejected.
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`[:1 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
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. 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.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
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`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).
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`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)I:I Some**
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`c)CI None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`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)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date m.
`U.S. Patent and Trademark Office
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`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 20190313
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`1.
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`35 U.S.C. 101 reads as follows:
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`Claim Rejections - 35 USC § 101
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`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
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`Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed
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`to a judicial exception (Le, a law of nature, a natural phenomenon, or an abstract idea) without
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`significantly more.
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`Based on Alice v. CLS Corp (US 2014), the claim(s) are analyzed, based on the new
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`2019 Guidelines, to determine whether the subject matter is directed to a judicial exception.
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`Step 1: Is the claim directed to a process, machine, manufacture, or composition of
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`matter? Yes.
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`Step 2A: Is the claim directed to a law of nature, a natural phenomenon, or an abstract
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`idea?
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`Claims 1 and 5 are directed to a method in which each of the identification codes on a
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`reel is recognized and decoded to reveal information and then stored in a storage unit. These
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`limitations, as drafted, are directed to a process that, under its broadest reasonable
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`interpretation, covers performance of the limitations in the mind but for the recitation of generic
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`computer components. That is, other than reciting “recognizer,” “decoder”, “storage unit”
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`nothing in the claim element precludes the step from practically being performed in the mind.
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`For instance, other than generic computer components such as “recognizer,” “decoder”,
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`“storage unit”, the codes can be scanned by a person such that that it can be seen and
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
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`Page 3
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`information can be obtained. The mere nominal recitations of generic computing components do
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`not take the claim limitation out of the mental processes grouping. Thus, the claim recites a
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`mental process.
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`Step 2A - Prong 2: Integrated into a Practical Application?
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`The claims additionally recite the multiple codes are placed on the reel, each of which is
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`scanned and decoded by a recognizer and decoder. Code recognizer and decoder are generic
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`devices capable of reading and decoding optical codes including those that can be recognize by
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`humans. These generic devices are recited at a high level of generality, i.e., as a generic device
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`performing a generic computer function of processing data (capturing authentication data from
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`an optical code and processing captured data). The recitation of generic device components is
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`no more than mere instructions to apply the exception using a generic device component.
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`Accordingly, this additional element does not integrate the abstract idea into a practical
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`application because it does not impose any meaningful limits on practicing the abstract idea.
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`The claim is directed to the abstract idea.
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`Step 28. Does the Claim as a Whole Amount to Significantly More than the Judicial
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`Exception?
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`As discussed, the claim recites additional limitations including “recognizer,” “decoder”,
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`“storage unit”. However, the recognizer and decoder means recited are merely used in obtaining
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`data, which are generic devices that performs routine and conventional data collection well
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`known in the field, such as barcode reader, RFID scanner, and short-range reader.
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`The recitation of computer components is akin to adding the words “apply it” in conjunction with
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`the abstract idea. Such a limitation is not enough to qualify as significantly more. Generic
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`computers performing generic computer functions, alone, do not amount to significantly more
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`than the abstract idea. See Secured Mail (Fed. Cir. 2017) and Content Extraction &
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`Transmission v. Wells Fargo (“there is no “inventive concept” in usingm scanner and
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`computer to perform well understood, routine, and conventional activities commonly used in
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
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`Page 4
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`industry
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`extracting, recognizing and storing data
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`recognition and storage is indisputably
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`well-known, in that humans have always performed these functions”). See also Epic Tech v.
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`Fitnow (DC Utah 2015, “recitation of a generic “computing device” and conventional “bar
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`code[s]” is insufficient for transforming the abstract idea into something that is patent eligible”).
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`Judging the claims as a whole, the claim(s) does/do not include additional elements that
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`are sufficient to amount to significantly more than the judicial exception because although
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`the claims recite additional generic computer elements, i.e. recognizer means, they do not add
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`a meaningful limitation to the abstract idea because they do not transform the abstract idea
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`of data encoding and communication into something else more meaningful or different. As
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`noted in the Secured Mail court, the claims do not improve any functionality of the computing
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`device or scanner and the claims are not directed to a new form of barcode or a new camera.
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`The use of the conventional elements (i.e. barcode, camera) is merely as tools to carry out the
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`abstract idea.
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`Dependent claims recite different types of parameters to be recognized and decoded,
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`collating, and cancel scanning. However, these limitations fail to contain a significance over
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`the abstract idea addressed above. These features do not improve the underlying technology.
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`As noted in the Secured Mail court, the claims do not improve any functionality of the
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`computing device or scanner and the claims are not directed to a new form of barcode or a new
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`camera. Although different data encoded in the optical code are used for different purposes or
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`meanings, they are merely intangible data used for processes directed to an abstract idea.
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`See Electric Power Grp (we have treated collecting information, including when limited to
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`particular content (which does not change its character as information), as within the realm of
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`abstract idea). Therefore these features are still directed to an abstract idea.
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`Claim Rejections - 35 USC § 1 12
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`The following is a quotation of 35 U.S.C. 112(b):
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
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`Page 5
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`(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.
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`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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`Claim 1 line 4: the phrase “which is” appears to be grammatically incorrect.
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`Claim 1 line 13, 14: “the information” lacks antecedent basis as it is unclear whether this
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`information is the component information (line 1) or information of item name, order,
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`1.
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`2.
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`serial number,
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`(lines 9-11)
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`Claim Rejections - 35 USC § 102
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`1.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`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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`(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.
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`2.
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`Claim(s) 1, 3-4, 5, 7-8 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by
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`Tani (US 20040094630 A1)
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`Tani teaches
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`1. A management system which manages component information from identification
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`codes which are attached to a component reel which houses electronic components,
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`comprising:
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`a recognizer (i.e. reader 12, 101 B) which scans each of the identification codes (i.e.
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`identification codes 7, 101 B, par. 32, 74, 84) which is attached to the component reel and
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`recognizes a code which is recorded in each of the identification codes;
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`an information decoder (identifier 120) that decodes at least any one of information of
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`item name information, order information, serial number, number of components, and vendor
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`information from the code which is recognized (Fig. 13, par. 74-80, 130-107); and
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
`
`Page 6
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`a storage unit which stores each of the information which is decoded, wherein in a case
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`in which each of the information is divided into the identification codes and recorded on the
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`component reel (Fig. 13, par. 74-80, 130-107: information regarding the reel and components
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`are divided and stored in the identification codes),when the information of the component reel is
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`stored, each of the information which is decoded from all of the identification codes is
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`associated with the identification codes and stored in the storage unit (Fig. 13, par. 1, 4, 11, 17-
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`56,102—110).
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`3. The management system of claim 1, wherein when collating the stored component
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`reel, the recognizer does not cancel scanning until a specified identification code among the
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`identification codes which are stored is recognized (once the code is scanned, recognized, and
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`stored, the code has been scanned therefore scanning is not cancelled).
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`4. The management system of claim 1, wherein when collating the registered component
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`reel, in a case in which the recognizer recognizes an identification code which is different from
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`the identification codes which are stored in the storage unit, number of components is decoded
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`from a code which is recorded in the identification code, and stored (par. 104-107).
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`Re claims 5, 7-8, see discussion regarding claims above.
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`Claim Rejections - 35 USC § 103
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`1.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`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.
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`1.
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`Claim(s) 2, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tani(US
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`20040094630 A1 )
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
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`Page 7
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`Re claims 2, 6, Tani teaches that there are different types of codes including slanted,
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`parallel, barcode, dotcode,... and digits can be allocated to each information (Fig. 3, 5, par. 31)
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`and type of digit characters can be encoded in the component id tag (par. 86)
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`Tani is silent to the reel id including these type of code, digits,
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`However, it is considered an obvious extension of Tanis teachings as Tani has
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`mentioned and also well known in the art that different types of optical code including barcodes
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`and dot-codes are capable of storing different types of data including alphanumeric characters.
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`One of ordinary skill in the art would be encouraged to encode these data types and character
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`types so as to assign different types of environment, manufacturing processes, chip types,...
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to Thien T. Mai whose telephone number is 571 -272—8283. The examiner
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`can normally be reached on M-F 8:00-5:00pm.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Steve S. Paik can be reached at 572-272-2404. 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
`
`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
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
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`would like assistance from a USPTO Customer Service Representative or access to the
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`automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/Thien T Mai/
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`Primary Examiner, Art Unit 2887
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`