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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
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`15/644,936
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`07/10/2017
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`MINORU YAMAMOTO
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`PIPMM-57777
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`2215
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`759°
`52°“
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
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`06%”
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`CLEVELAND, OH 44114-3108
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`TRINHMNHN
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`3729
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/21/2019
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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
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`Application No.
`15/644,936
`Examiner
`MINH N TRINH
`
`Applicant(s)
`YAMAMOTO, MINORU
`Art Unit
`AIA (FITF) Status
`3729
`Yes
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`- 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 7/10/17.
`[: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:l Some**
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`c)C] 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_
`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 20190613
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`

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`Application/Control Number: 15/644,936
`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, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 112
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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:
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`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 1-7 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 one of
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`ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly
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`referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f)
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`or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
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`As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong
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`test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth 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 ”means”
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`that is a generic placeholder (also called a nonce term or a non-structural term having no
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`specific structural meaning) for performing the claimed function;
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`

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`Application/Control Number: 15/644,936
`Art Unit: 3729
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`Page 3
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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 linking
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`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 structure,
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`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 rebuttable
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`presumption that the claim limitation is 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 interpreted under 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient
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`structure, material, or acts to entirely perform the recited function.
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`Absence of the word ”means” (or ”step”) in a claim creates a rebuttable presumption that the
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`claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-
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`AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without
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`reciting sufficient structure, material or acts to entirely perform the recited function.
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`Claim limitations in this application that use the word ”means” (or ”step”) are being interpreted
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`under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an
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`Office action. Conversely, claim limitations in this application that do not use the word ”means” (or
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`”step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
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`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,” but
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`are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
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`because the claim limitation(s) uses a generic placeholder that is coupled with functional language
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`without reciting sufficient structure to perform the recited function and the generic placeholder is not
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`

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`Application/Control Number: 15/644,936
`Art Unit: 3729
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`Page 4
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`preceded by a structural modifier. Such claim |imitation(s) is/are: "conversion mechanism" in claim 1,
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`line 18.
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`Because this/these claim |imitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA
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`35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure
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`described in the specification as performing the claimed function, and equivalents thereof.
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`|f applicant does not intend to have this/these |imitation(s) interpreted under 35 U.S.C. 112(f) or
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`pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
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`(1) amend the claim |imitation(s) to avoid it/them
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`being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting
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`sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim
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`|imitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being
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`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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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.
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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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`Claims 1-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as
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`being indefinite for failing to particularly point out and distinctly claim the subject matter which the
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`inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
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`Scope of the claims 1-7 directed to the device, however, claim recites ”the board and connector
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`structural elements” (as indicated in claim 1, about lines 2-7). Which do not further limit the claimed
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`device and made scope of the claim unclear.
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`In formulate the rejection on the merits the Examiner
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`presumes that claims directed to the ” insertion device only" and the claims will be rejected accordingly.
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`

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`Application/Control Number: 15/644,936
`Art Unit: 3729
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`Page 5
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`It is unclear as to exactly what being referring to as ”conversion mechanism”(claim 1, line 18).
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`Please be more specific.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
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`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)(l) 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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`(a)(2) the claimed invention was described in a patent issued under section 151, or in an application
`for patent published or deemed published under section 122(b), in which the patent or application, as
`the case may be, names another inventor and was effectively filed before the effective filing date of
`the claimed invention.
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`Claim(s) 1-7 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Gorman (5265328).
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`Gorman discloses the claimed A board insertion device which inserts a board into a connector,
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`wherein the board has a first end surface on which a terminal is provided, and a second end surface
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`opposite to the first end surface, wherein the connector has an insertion groove into which the board is
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`inserted and an ejector capable of switching between an open position at which insertion of the board
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`into the insertion groove is allowed and a closed position at which the insertion of the board into the
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`insertion groove is prohibited, wherein the board insertion device comprises:
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`a holder 80 holding the board in a state where the first end surface is exposed (see Fig. 7);
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`an insertion guider 104/106 which is slidably provided in the holder in an insertion direction of
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`the board into the connector and includes a distal end portion protruding in the insertion direction from
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`the first end surface of the board held in the holder and abutting against the connector during insertion
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`of the board into the connector (see Figs. 7-8);
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`

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`Application/Control Number: 15/644,936
`Art Unit: 3729
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`Page 6
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`an abutting portion 100/102 abutting against the ejector during the insertion of the board into
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`the connector (see Fig. 7); and
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`
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`

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`Application/Control Number: 15/644,936
`Art Unit: 3729
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`Page 7
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`a conversion mechanism 118/120 converting a change of a relative position between the holder
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`and the insertion guider into a movement of the abutting portion for changing a position of the ejector
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`from the closed position to the open position, and wherein the conversion mechanism is provided in the
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`insertion guider and engaged with the holder or is provided in the holder and engaged with the insertion
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`guider (see Fig. 7).
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`Note that the recites of” .
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`.
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`. .wherein the board has a first end surface on which a terminal
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`is provided, and a second end surface opposite to the first end surface, wherein the connector has an
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`insertion groove into which the board is inserted and an ejector capable of switching between an open
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`position at which insertion of the board into the insertion groove is allowed and a closed position at
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`which the insertion of the board into the insertion groove is prohibited” (in the preamble of claim 1)
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`directed to outside structural elements rather than the claimed ”insertion device ” that made scope of
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`the claims unclear.
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`As applied to claim 4-5, refer to Fig. 7 for the teaching of plurality distal end portions 100, 102,
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`respectively.
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`As applied to claim 6, refer to reference 92 for the teaching of pressing portion 92.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`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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`Claim 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gorman in view of
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`Kelather et al (20120011700).
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`

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`Application/Control Number: 15/644,936
`Art Unit: 3729
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`Page 8
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`Gorman as relied and applied above is lacking of the claimed ”driver” of claim 3. Regarding to
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`this, the Kelather et al teaches such (see Fig. 1, device 100 having driver as 106). Therefore, it would
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`have been obvious to one having an ordinary skill in the art at the time of the effective filing of the
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`present invention was made to employ the Kelather’s teaching as noted above onto the invention of
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`Gorman in order to form the device having above configurations. The motivation for the combination
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`can be obtain by either reference since both invention directed to same endeavor field invention.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to MINH N TRINH whose telephone number is (571)272-4569. The examiner can
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`normally be reached on 4 -10hrs.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Peter Dung Vo can be reached on 5712724690. The fax phone number for the organization where this
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`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
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
`
`