www.uspto.gov
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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
`
`15/907,923
`
`02/28/2018
`
`Hideaki WATANABE
`
`AOYAl-58872
`
`7415
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`06’26’2020
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`TUGBANG ANTHONYD
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`2896
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`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
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`06/26/2020
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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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`

`

`017/09 A0170” Summary
`
`Application No.
`15/907,923
`Examiner
`A. DEXTER TUGBANG
`
`Applicant(s)
`WATANABE et al.
`Art Unit
`AIA (FITF) Status
`2896
`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
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`1). Responsive to communication(s) filed on 5/11/20.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)[:] 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 Expade 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)
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`flis/are pending in the application.
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`5a) Of the above Claim(s) fl is/are withdrawn from consideration.
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`
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`E] Claim(ss)
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`is/are allowed.
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`Claim(ss)6_Bis/are rejected.
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`1:] Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`C] 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
`
`httpfiwww.”smogovmatentsflnit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
`
`Application Papers
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`10). The specification is objected to by the Examiner.
`
`is/are: a)[:| accepted or b)D objected to by the Examiner.
`11):] The drawing(s) filed on
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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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)C] 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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`SD 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)
`
`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
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20200621
`
`

`

`Application/Control Number: 15/907,923
`Art Unit: 2896
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`Page 2
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`DETAILED ACTION
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`Election/Restrictions
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`Applicants’ election without traverse of the invention of Group II, Claims 6
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`through 8, in the reply filed on May 11, 2020 is acknowledged.
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`Claims 1 through 5 have been withdrawn from further consideration
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`pursuant to 37 CFR1.142(b) as being drawn to a nonelected invention, there being no
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`allowable generic or linking claim. Election was made without traverse in the reply
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`filed on May 11, 2020.
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`Specification
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`Applicant is reminded of the proper content of an abstract of the disclosure.
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`A patent abstract is a concise statement of the technical disclosure of the patent
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`and should include that which is new in the art to which the invention pertains. The
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`abstract should not refer to purported merits or speculative applications of the invention
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`and should not compare the invention with the prior art.
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`If the patent is of a basic nature, the entire technical disclosure may be new in
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`the art, and the abstract should be directed to the entire disclosure. If the patent is in the
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`nature of an improvement in an old apparatus, process, product, or composition, the
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`abstract should include the technical disclosure of the improvement. The abstract
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`should also mention by way of example any preferred modifications or alternatives.
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`Where applicable, the abstract should include the following: (1) if a machine or
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`apparatus, its organization and operation; (2) if an article, its method of making; (3) if a
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
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`Page 3
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`chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a
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`process, the steps.
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`Extensive mechanical and design details of an apparatus should not be included
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`in the abstract. The abstract should be in narrative form and generally limited to a single
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`paragraph within the range of 50 to 150 words in length.
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`See MPEP § 608.01 (b) for guidelines for the preparation of patent abstracts.
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`The abstract of the disclosure is objected to because the content is not directed
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`to the claimed invention, e.g. the process steps of at least Claim 6. Correction is
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`required. See MPEP § 608.01 (b).
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`The title of the invention is not descriptive. A new title is required that is clearly
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`indicative of the invention to which the claims are directed.
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`The following title is suggested: --Method of Mounting Components--.
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`Claim Interpretation
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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:
`
`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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`This application includes one or more claim limitations that use the word “means”
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`or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
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`Page 4
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`U.S.C. 112, sixth paragraph because the claim limitation(s) reciteis) sufficient structure,
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`materials, or acts to entirely perform the recited function.
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`Such claim limitation(s) is/are:
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`In Claim 1:
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`“an approaching step of...the paired clamping members” (lines 21 -24);
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`“a clamping step of...component” (lines 24-25);
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`“a mounting step of...on the substrate” (lines 25-28); and
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`“an interval fixing step of...clamping members” (lines 31 -32);
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`“an inserting step of...ho|ding grooves” (lines 32-35); and
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`“a mounting step of...on the substrate” (lines 36-39).
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`Because this/these claim limitation(s) is/are n_ot being interpreted under 35
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`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are n_ot being
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`interpreted to cover only the corresponding structure, material, or acts described in the
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`specification as performing the claimed function, and equivalents thereof.
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`lf applicant intends to have this/these limitation(s) interpreted under 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
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`(1) amend the claim
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`limitation(s) to remove the structure, materials, or acts that performs the claimed
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`function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite
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`sufficient structure, materials, or acts to perform the claimed function.
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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):
`(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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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
`
`Page 5
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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 6 through 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112
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`(pre-AIA), second paragraph, as being indefinite for failing to particularly point
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`out and distinctly claim the subject matter which the inventor or a joint inventor,
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`or for pre-AIA the applicant regards as the invention.
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`In Claim 6, the latter recitation of “a mounting step” raises confusion and renders
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`the claim as indefinite. To use the latter recitation of a “a mounting step” for the second
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`component (lines 36-39) that is identical to the earlier recitation of “a mounting step” for
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`the first component (lines 25-28) is misleading because the step is carried out for two
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`different components. The suggestion here would be to change the latter recitation to --
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`--a second mounting step--, or —another mounting step--, to avoid this rejection.
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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
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`obviousness 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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`Claims 6 through 8 are rejected under 35 U.S.C. 103 as being unpatentable
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`over U.S. Patent 4,822,091 to Vermeer et al (hereinafter “Vermeer”) in view of U.S.
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`Patent 4,789,292 to Holcomb (hereinafter “Holcomb”).
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
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`Page 6
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`Claim 6: Vermeer discloses a method of mounting a component by using a
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`component mounting device (Figures 1 to 3) for mounting a component (6) on a
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`substrate (e.g. col. 1, lines 1-16),
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`wherein the component mounting device includes a pair of clamping members
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`(e.g. 4, 5) pinching and clamping the component; and a pusher (e.g. 15, 21, 12, 13, 14)
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`pushing the component pinched by the clamping members toward the substrate,
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`wherein the pair of clamping members is able to clamp both a first component
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`including a first body (e.g. of 6) and a first lead (e.g. one of 7) and a second component
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`(6) including a second body (e.g. of 6) and a second lead (e.g. the other, or opposite 7),
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`wherein the pair of clamping members has facing portions provided with
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`a clamping surface [see Vermeer’s annotated Fig. 1 below] contacting the first
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`body of the first component [see Fig. 2], and
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`a holding groove [see Vermeer’s annotated Fig. 1 below] formed at the clamping
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`surface and holding the second lead of the second component (see Fig. 2),
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
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`Page 7
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`wherein the component mounting device further includes a drive mechanism
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`(e.g. fluid pressure operating means) moving the pair of clamping members in
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`approaching and separating directions (e.g. col. 3, lines 10-15), and
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`wherein when the clamping members mount the first component on the
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`substrate, the method comprises:
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`an approaching step of causing the pair of clamping members to approach each
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`other with the first body of the first component disposed between the paired clamping
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`members (e.g. sequence of Figs. 1 to 2),
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`a clamping step of clamping the first component (e.g. Fig. 2), and
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`a mounting step of moving the pair of clamping members clamping the first
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`component to the substrate and pressing out the first component clamped by the pair
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`of clamping members with the pusher for mounting on the substrate (e.g. col. 4, lines
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`26-64), and
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`wherein when the clamping members mount the second component on the
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`substrate, the method [further] comprises:
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`an interval fixing step of fixing an interval of the pair of clamping members
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`[position of 4, 5 in Fig. 2],
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`an inserting step of inserting the second component between the paired
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`clamping members at the fixed interval with the second leads of the second component
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`disposed along the holding grooves [e.g. in Fig. 2], and
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`a second mounting step of moving the pair of clamping members clamping the
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`inserted second component to the substrate and pressing out the second component
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
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`Page 8
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`clamped by the pair of clamping members with the pusher for mounting on the substrate
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`(e.g. col. 4, lines 26-64).
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`In reading the entire document of Vermeer, it is understood, or obvious, that all of
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`the steps of approaching, clamping, mounting, interval fixing, inserting, and second
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`mounting [above] are performed for a plurality of components (first, second, third, etc.)
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`as the intent of Vermeer is to repeat all of these steps to mount various components of
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`different sizes or widths to a substrate.
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`Claims 7 and 8: Vermeer further discloses that within the clamping step and the
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`interval fixing step, the first component would have a [first] pair of leads (7), the second
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`component has a second pair of leads (7), and a third component would have a third
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`pair of leads, etc., respectively.
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`Within the component mounting device of Vermeer, there is no mentioning of any
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`control part controlling the drive mechanism [as reguired by Claim 6], that the control
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`part also manages a clamping force at which the pair of clamping members clamps the
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`first component [as reguired by Claim 7|, or that the control part manages an interval of
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`the pair of clamping members so as to fix an interval of a pair of the second leads held
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`in the holding grooves of the pair of clamping members [as reguired by Claim 8].
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`Holcomb is analogous art in disclosing a mounting method that includes an art-
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`recognized equivalent mounting device (e.g. Fig. 1). Part of Holcomb’s mounting device
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`includes a pair of clamping members (e.g. 410, 420, in Fig. 5) to clamp a component
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`with a drive mechanism. An example of the drive mechanism in Holcomb to clamp the
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`components is a pressurized air cylinder (430) with a series of valves (e.g. 530, 535,
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`etc.) and a control part (500) to control the drive mechanism (e.g. col. 9, lines 43+).
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
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`Page 9
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`Holcomb explicitly states that the control part allows programming to automate the
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`sequence and movements of the mounting device (e.g. col. 8, lines 17-29).
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`Regarding Claims 7 and 8, Holcomb further discloses that at least a sensor (e.g.
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`585) is also included to manage a clamping force and an interval of the clamping
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`members (e.g. col. 10, lines 4-57).
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`It would have been obvious to one of ordinary skill in the art before the effective
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`filing date of the claimed invention to have modified the method of Vermeer by including
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`a drive mechanism and control part, as taught by Holcomb, to providing a mounting
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`method that is automated, programmable, and provides more precise control of the
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`overall mounting device.
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`Conclusion
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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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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to A. DEXTER TUGBANG whose telephone number is
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`(571)272-4570. The examiner can normally be reached on Mon - Fri 8:00 am to 5:00
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`pm.
`
`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
`
`Page 10
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, JESSICA HAN can be reached on (571) 272-2078. The fax phone number
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`for 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
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`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 https://ppair-
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`my.uspto.gov/pair/PrivatePair. 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 would like assistance from a USPTO Customer Service Representative or access
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`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-
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`272-1000.
`
`/A. DEXTER TUGBANG/
`
`Primary Examiner
`Art Unit 2896
`
`