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
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`15/907,979
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`02/28/2018
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`Hideaki WATANABE
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`AOYA1-58876
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`1026
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`759°
`52°“
`PEARNE & GORDON LLP
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`04’1””
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`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
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`VU~ STEPHEN A
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`3652
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`04/ 1 1/2019
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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.
`15/907,979
`Examiner
`STEPHEN A vu
`
`Applicant(s)
`WATANABE et al.
`Art Unit
`AIA (FITF) Status
`3652
`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 1/02/2019.
`[:1 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) C] 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)D 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) C] 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 Datew.
`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 20190405
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`

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`Application/Control Number: 15/907,979
`Art Unit: 3652
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`Page 2
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`DETAILED CORRESPONDENCE
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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 under the first
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`inventor to file provisions of the AIA.
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`Information Disclosure Statement
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`2.
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`The information disclosure statement (IDS) submitted on December 14, 2018 is in compliance
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`with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being
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`considered by the examiner.
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`Claim Rejections - 35 USC § 112
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`3.
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`The following is a quotation of 35 USC. 112(b):
`(b) CONCLUSION.7The 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 USC. 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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`4.
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`Claim 5 is rejected under 35 USC. 112(b) or 35 USC. 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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`5.
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`Claim 5 recites the limitation "the cross-sectional shape of the holding groove" in lines 1-3 and
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`“the axial portion of the component” in lines 3-4. There is insufficient antecedent basis for this limitation
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`in the claim.
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`Claim Rejections - 35 USC § 102
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`6.
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`In the event the determination of the status of the application as subject to AIA 35 USC. 102 and
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`103 (or as subject to pre-AIA 35 USC. 102 and 103) is incorrect, any correction of the statutory basis for
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`the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale
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`supporting the rejection, would be the same under either status.
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`

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`Application/Control Number: 15/907,979
`Art Unit: 3652
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`Page 3
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`7.
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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)(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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`8.
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`Claims 1-3 and 5-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Malstrom et
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`al (US 2017/0057101).
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`9.
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`As to claims 1 and 8, Malstrom et al disclose a component mounting device (robotic positioning
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`system per Abstract), as illustrated in Figures 1 -9, for mounting a component on a substrate (see
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`paragraph [0001] - capable of accomplishing this function), comprising a pair of opening/closing
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`members opening and closing (see paragraph [0002,0004]) with spring connection (see paragraph
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`[0023]); and a plurality of adapters (10) detachably attached to the opening/closing members, each of the
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`plurality of adapters inherently includes a clamping surface configured to engage the component to be
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`mounted (see paragraphs [0028-0029] describe “grasping fingers 42 to engage and manipulate object”),
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`wherein the adapters are attached to the opening/closing members depending on the component to be
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`mounted so as to clamp the component by using the adapters, and wherein the plurality of adapters
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`includes first adapters (14) each having a flat clamping surface (42) clamping a body of the component
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`and second adapters (12) each having a holding groove (20) holding an axial portion of the component via
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`the first adapters.
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`10.
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`With claim 2, the axial portion of the component and substrate are considered to be a Material
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`or Article Worked Upon by Apparatus per MPEP 2115. The holding groove extends toward a tip (22)
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`of the second adapter.
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`11.
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`With claim 3, the flat clamping surface of the first adapter is covered with an elastic
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`member (34).
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`12.
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`With claim 5, a cross-sectional shape of a lead projecting laterally from the axial portion of the
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`component is considered to be a Material or Article Worked Upon by Apparatus per MPEP 2115.
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`

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`Application/Control Number: 15/907,979
`Art Unit: 3652
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`Page 4
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`The cross-sectional shape is rectangular, and it allows the first adapters to be operably movable from a
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`first position (Figure 1) to a second position (Figure 6).
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`13.
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`With claims 6-7, the method of mounting a component can be accomplished with the
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`structural elements as discussed in claims 1-3 above.
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`Claim Rejections - 35 USC § 103
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`14.
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`In the event the determination of the status of the application as subject to AIA 35 USC. 102 and
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`103 (or as subject to pre-AIA 35 USC. 102 and 103) is incorrect, any correction of the statutory basis for
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`the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale
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`supporting the rejection, would be the same under either status.
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`15.
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`The following is a quotation of 35 USC. 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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`16.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 US. 1, 148 USPQ 459 (1966),
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`that are applied for establishing a background for determining obviousness under 35 USC. 103 are
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`summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`17.
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`Claim 4 is rejected under 35 USC. 103 as being unpatentable over Malstrom et al
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`(US 2017/0057101).
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`18.
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`Malstrom et al disclose the claimed invention except for the holding groove of the second adapter
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`to be constructed of metal.
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`It would have been obvious to one having ordinary skill in the art at the time
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`

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`Application/Control Number: 15/907,979
`Art Unit: 3652
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`Page 5
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`the invention was made to construct the second adapter of metal, since metal is well known to be durable
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`and non-rusting and could handle the long automated process in a factory environment for the robotic
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`positioning system.
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`Response to Arguments
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`l9.
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`Applicant’s arguments with respect to claims 1-8 have been considered but necessitated the
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`examiner to adjust the prior art rejections to respond to the new limitations.
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`In the Remarks, filed
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`January 2, 2019, on pages 5-6, applicant has stated that amended claim 1 has now recited “each of the
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`plurality of adapters includes a clamping surface configured to engage the component to be mounted.”
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`Applicant has argued that this feature is not in the prior art of Malstrom. The examiner respectfully
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`disagrees. The examiner has addressed this new limitation in the prior art rejection above. Each of the
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`plurality of adapters inherently includes a clamping surface configured to engage the component to be
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`mounted (see paragraphs [0028-0029] describe “grasping fingers 42 to engage and manipulate object”).
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`Conclusion
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`20.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is
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`reminded of the extension of time policy as set forth in 37 CFR l.l36(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing
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`date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory action
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`is mailed, and any extension fee pursuant to 37 CFR l.l36(a) will be calculated from the mailing date of
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`the advisory action. In no event, however, will the statutory period for reply expire later than SIX
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`MONTHS from the date of this final action.
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`21.
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`Any inquiry concerning this communication or earlier communications from the examiner should
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`be directed to STEPHEN A VU whose telephone number is (571)272-1961. The examiner can normally
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`be reached on Monday-Friday, 8:30 am - 5:00 pm EST.
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`

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`Application/Control Number: 15/907,979
`Art Unit: 3652
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`Page 6
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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, Saul
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`Rodriguez can be reached on (571)272-7097. 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
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
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`direct.uspto. gov. Should you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer
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`Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
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`CANADA) or 571-272-1000.
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`STEPHEN A. VU
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`Primary Examiner
`Art Unit 3652
`
`/STEPHEN A VU/
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`Primary Examiner, Art Unit 3652
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`