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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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`15/866,841
`
`01/10/2018
`
`TAKAHIRO YAMAMOTO
`
`PIPMM-58616
`
`3471
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`07/25/2019
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`FERGUSON SAMRETH, MARISSA LIANA
`
`2854
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`07/25/2019
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
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`

`

`Application No.
`15/866,841
`
`Applicant(s)
`YAMAMOTO et al.
`
`Office Act/'0” Summary
`
`Examiner
`MARISSA L FERGUSON
`SAMRETH
`
`Art Unit
`2854
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 1/17/18.
`C] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`2a)D This action is FINAL.
`2b)
`This action is non-final.
`
`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)l:j 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.
`
`
`
`Disposition of Claims*
`5)
`Claim(s)
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`1—13 is/are pending in the application.
`
`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`[:1 Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`C] Claim(s)
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`is/are objected to.
`
`) ) )
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`are subject to restriction and/or election requirement
`[j Claim(s)
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 1/10/18 is/are: a). accepted or b)[j 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). 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
`
`b)|:] Some”
`
`c)CI None of the:
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`1.. Certified copies of the priority documents have been received.
`
`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)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1)
`
`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 1/10/18 and 2/11/19.
`U.S. Patent and Trademark Office
`
`3) [3 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 20190623
`
`

`

`Application/Control Number: 15/866,841
`Art Unit: 2854
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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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`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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`Claim Rejections - 35 USC § 102
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`2.
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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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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or othenNise available to the public before the effective filing date of the claimed
`invention.
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`Claims 1, 2, 5, 6, 10, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being
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`anticipated by Kim (US Publication 2011/0192296).
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`With respect to claim 1, Kim teaches a screen printing apparatus comprising:
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`a mask guide (310) that is provided with a mask standby position (Mode 1 or
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`Mode 2, paragraph 0067, Figure 58), a printing-job performing position (area between
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`Mode 1 and Mode 2, Figure 5A, Paragraph 0065), and a mask shelter position (Mode 3
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`

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`Application/Control Number: 15/866,841
`Art Unit: 2854
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`Page 3
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`or Mode 4) in this order from a first end to a second end of the mask guide (Paragraph
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`0068, Figure 5C);
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`a mask moving mechanism (300) that moves a mask inserted from the first end
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`of the mask guide and positioned at the mask standby position to the printing-job
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`performing position (Paragraphs 0034, 0046, 0047, 0050); and
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`a squeegeeing mechanism that has a first squeegee and causes the first
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`squeegee to slide on the mask positioned at the printing-job performing position such
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`that paste is applied on a board under the mask (Paragraphs 0035, 0037),
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`wherein the mask moving mechanism moves the used mask positioned at the
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`printing-job performing position to the mask shelter position such that it is possible to
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`pick up the used mask from the second end of the mask guide (Paragraphs 0034, 0046,
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`0069, 0070).
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`With respect to claim 2, note the limitation, wherein, when the mask moving
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`mechanism moves the mask positioned at the mask standby position to the printing-job
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`performing position, the mask which is moved from the mask standby position to the
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`printing-job performing position pushes a used mask positioned at the printing-job
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`performing position such that the used mask is moved to the mask shelter position,
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`appears to be a functional recitation of a desired mode of operation and does not add
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`any additional structure. Note that MPEP 2114 (1) states, "While features of an
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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
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`than function. " Furthermore, MPEP 2114 (ll) states, "A claim containing a 'recitation
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`with respect to the manner in which a claimed apparatus is intended to be
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`

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`Application/Control Number: 15/866,841
`Art Unit: 2854
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`Page 4
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`employed does not differentiate the claimed apparatus from a prior art apparatus'
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`if the prior art apparatus teaches all the structural limitations of the claim. "
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`Therefore, since Kim teaches all of the structure as positively recited, it is capable of
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`being used in the manner as recited and meets the claim language).
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`With respect to claim 5, Kim teaches a cover member (200, Figure 1) that is
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`provided to cover the mask guide (310), and
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`is provided with a mask inserting opening (210’) that is open on a side of the
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`mask standby position of the mask guide and
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`a mask picking-up opening (210”) that is open on a side of the mask shelter
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`position of the mask guide (Figures 48, 4C).
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`With respect to claims 6 and 10, Kim teaches an oscillating body (400) that
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`droops down in the vicinity of the second end (Figure 2) in a state in which an upper
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`edge of the oscillating body is hinged (410, Paragraphs 0040, 0041 and Figure 2),
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`wherein the mask has a rectangular mask frame formed of a pair of cross frames
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`and a pair of perpendicular frames, (refer to marked-up Figure 5A in the detailed
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`action),
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`and when the used mask positioned at the printing-job performing position is
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`moved to the mask shelter position the oscillating body (400) oscillates by being pushed
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`by the cross frames of the mask frame of the used mask, the cross frames pass
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`immediately below the oscillating body, and then the push by the cross frames is
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`removed such that the oscillating body returns to a drooping-down position (Paragraphs
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`0039 and 0042-0044).
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`

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`Application/Control Number: 15/866,841
`Art Unit: 2854
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`Page 5
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`Cross Frames
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`
`
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`Perpendicular Frames
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`With respect to the method in claims 12 and 13, the steps are deemed to be
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`apparently taught in view of the functions of the apparatus as discussed above. When
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`the apparatus is operated in the intended manner, the recited steps are necessarily
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`performed.
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`Claim Rejections - 35 USC § 103
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`3.
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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, 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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`Claims 3, 4, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable
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`over Kim in view of Mikashima (JP04-107146).
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`With respect to claim 3, Kim teaches the claimed invention with the exception of
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`the mask moving mechanism has a protrusion, and when the mask pushes the used
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`

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`Application/Control Number: 15/866,841
`Art Unit: 2854
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`Page 6
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`mask, the protrusion moves the mask. Mikashima teaches a mask moving mechanism
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`has a protrusion (16, 17 and Constitution), and when the mask (2, 3) pushes the used
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`mask, the protrusion moves the mask (Constitution).
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`It would have been obvious to one of ordinary skill in the art before the present
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`invention to modify the invention of Kim to provide a moving mechanism with a
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`protrusion as taught by Mikashima for the purpose providing a simpler and cost effective
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`automatic replacement device and method.
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`With respect to claim 4, Kim, as modified by Mikshima teaches the protrusion
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`(16, 17) is a second squeegee.
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`With respect to claim 8, Kim as modified by Mikashima teaches the squeegeeing
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`mechanism (13) and the mask moving mechanism (16, 17) are integrally formed (Figure
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`1).
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`With respect to claim 9, note the limitation, after the used mask is moved to the
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`mask shelter position, the mask that pushes the used mask is moved to the printing-job
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`performing position by the first squeegee, appears to be a functional recitation of a
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`desired mode of operation and does not add any additional structure. Note that MPEP
`
`2114 (1) states, "While features of an apparatus may be recited either structurally or
`
`functionally, claims directed to an apparatus must be distinguished from the prior art in
`
`terms of structure rather than function." Furthermore, MPEP 2114 (ll) states, "A claim
`
`containing a 'recitation with respect to the manner in which a claimed apparatus is
`
`intended to be employed does not differentiate the claimed apparatus from a prior art
`
`apparatus' if the prior art apparatus teaches all the structural limitations of the claim."
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`Therefore, since Kim in view of Mikashima teaches all of the structure as positively
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`

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`Application/Control Number: 15/866,841
`Art Unit: 2854
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`Page 7
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`recited, it is capable of being used in the manner as recited and meets the claim
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`language)
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`4.
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`Claims 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Kim in view of Kawabe et al. (US Publication 2009/0059087).
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`With respect to claims 7 and 11, Kim teaches claimed invention including an
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`oscillating body (400), however does not explicitly the oscillating body is provided with a
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`protrusion that protrudes to a side of the printing-job performing position, and the cross
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`frames of the mask frame of the used mask moved from the printing- job performing
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`position to the mask shelter position abut on the protrusion, and a lower end of the
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`oscillating body oscillates without coming into contact with the cross frames. Kawabe et
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`al. teaches an oscillating body (12) that is provided with a protrusion (14) that protrudes
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`to a side of the printing-job performing position (Figure 17), and the medium of the
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`printed medium moved from the printing- job performing position (Figure 17) to the
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`mask shelter position abut on the protrusion (Paragraph 0065), and a lower end of the
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`oscillating body oscillates without coming into contact with the medium (Paragraph
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`0065).
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`It would have been obvious to one of ordinary skill in the art before the present
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`invention to modify the oscillating body of Kim to provide a protrusion on the oscillating
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`body as taught by Kawabe et al. for the purpose of securely holding the medium in
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`place during conveyance of the medium.
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`

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`Application/Control Number: 15/866,841
`Art Unit: 2854
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`Page 8
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`Conclusion
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`5.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure.
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`a.
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`Hirukawa et al. (US Publication 2018/0162118) and Komura (JP 2014-
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`107365) teaches screen printing apparatuses.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MARISSA LIANA FERGUSON SAMRETH whose
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`telephone number is (571)272-2163. The examiner can normally be reached on M-F 8
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`a.m.-5 p.m.
`
`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, 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.
`
`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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`you have questions on access to the Private PAIR system, contact the Electronic
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`

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`Application/Control Number: 15/866,841
`Art Unit: 2854
`
`Page 9
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
`
`/Marissa Ferguson-Samreth/
`Examiner, Art Unit 2854
`
`/MATTHEW G MARINI/
`
`Primary Examiner, Art Unit 2854
`
`