UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`'I AND1%9
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`14/269,605
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`05/05/2014
`
`Isao HORIE
`
`52644
`
`8228
`
`02/22/2016 —PEARNE & GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`FERGUSON SAMRETH, MARISSA LIANA
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`2854
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/22/2016
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patdocket @ pearne.c0m
`jcholley @pearne.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`itatus
`2854
`MARISSA FERGUSON-
`
`SAM RETH es
`
`Office Action Summary
`
`Applicant(s)
`Application No.
` 14/269,605 HORIE ET AL.
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with 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 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If 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).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 1/13/16.
`
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)|:I This action is FINAL.
`
`2b)|Z| This action is non-final.
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`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; 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
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 1-11 is/are pending in the application.
`
`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-11 is/are rejected.
`8)I:I Claim(s)_ is/are objected to.
`
`9)I:I Claim((s)
`are subject to restriction and/or election requirement.
`* 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
`
`htt
`://www.us tocov/ atents/init events/
`
`h/index.'s orsend an inquiry to PPeredback@ usgtogov.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`
`11)|Xl The drawing(s) filed on 5/15/14 is/are: a)IZl accepted or b)I:I 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)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)IXI All
`b)I:I Some” c)I:I None of the:
`1.IXI Certified copies of the priority documents have been received.
`2.|:| Certified copies of the priority documents have been received in Application No.
`3.|:l 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)
`
`
`
`3) D Interview Summary (PTO-413)
`1) I] Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20160206
`
`

`

`Application/Control Number: 14/269,605
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`Page 2
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`Art Unit: 2854
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`DETAILED ACTION
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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.
`
`Continued Examination Under 37 CFR 1. 1 14
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`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`12/16/15 has been entered.
`
`Claim Rejections - 35 USC § 102
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`3.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`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.
`
`Claims 1-2 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Tanaka et al. (JP 08-207243).
`
`With respect to claim 1, Tanaka et al. teaches a paste supply apparatus
`
`comprising:
`
`

`

`Application/Control Number: 14/269,605
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`Page 3
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`Art Unit: 2854
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`an exchangeable paste pot (note: ink cartridge 48 is part of ink tank 39) which
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`comprises a tubular container (40) which stores paste and which comprises a bottom
`
`portion (refer to marked-up figure 5) provided with a through hole (43) and a movable
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`inner lid (50) provided in the tubular container;
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`a pot holder (21) which contacts and holds the paste pot in a state in which the
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`through hole (43) of the paste pot (38) is directed downward such that lateral expansion
`
`of the tubular container (40) is suppressed and downward movement of the tubular
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`container (40) thereof is regulated (Figure 5); and
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`a paste ejecting device (45, 46) which presses the inner lid of the paste pot with
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`respect to the tubular container and which ejects the paste stored in the tubular
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`container from the through hole (Paragraph 0049),
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`wherein the paste pot is integrated as a single unit (note: the term "a single unit"
`
`is a very broad recitation. Therefore, the examiner is interpreting "a single unit" as a ink
`
`cartridge 48 integrally formed with an ink tank 39. Also, the definition of integrated:
`
`verb (used with object), integrated, integrating. 1. to bring together or incorporate
`
`(parts) into a whole. 2. to make up, combine, or complete to produce a whole or a
`
`larger unit, as parts do. 3. to unite or combine),
`
`wherein the through hole (43) and at least a part of the bottom portion are
`
`exposed from the pot holder when the paste pot is held by the pot holder (refer to
`
`marked up figure 5 in the detailed action).
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`

`

`Application/Control Number: 14/269,605
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`Page 4
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`Art Unit: 2854
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`§~<§~m . at, \
`
`IE:.............................
`
`I
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`Bottom Portion exposed from the
`
`
`»««~
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`a“;
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`With respect to claim 2, Tanaka et al. teaches a mask (16) which is positioned to
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`contact a substrate (5).
`
`With respect to claim 4, Tanaka et al. teaches the pot holder (21) has a circular
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`hole portion (41) in which the paste pot (38, 48) is inserted (Figures 2 and 3).
`
`With respect to claim 5, Tanaka et al. teaches the circular hole portion (41)
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`vertically penetrates through the pot holder (21 and Figure 3).
`
`With respect to claim 6, Tanaka et al. teaches an inner surface of the circular
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`hole portion (41) contacts a side surface of the tubular container without contacting the
`
`bottom portion (Figure 2).
`
`

`

`Application/Control Number: 14/269,605
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`Page 5
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`Art Unit: 2854
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`Inner circular
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`hole portion
`contacting
`side surface
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`of the tubular
`
`container
`
`4.
`
`Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Suzuki (JP 06283856).
`
`With respect to claim 1, Suzuki teaches a paste supply apparatus comprising:
`
`an exchangeable paste pot (1 O) which comprises a tubular container (11) which stores
`
`paste and which comprises a bottom portion (refer to marked-up Figure 1
`
`in the detailed
`
`action) provided with a through hole (12) and a movable inner lid (16) provided in the
`
`tubular container (11);
`
`a pot holder (refer to marked-up figure 1
`
`in the detailed action) which contacts
`
`and holds the paste pot in a state in which the through hole (12) of the paste pot (10) is
`
`directed downward such that lateral expansion of the tubular container (11) is
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`suppressed and downward movement of the tubular container (11) thereof is regulated
`
`(Figure 1); and
`
`

`

`Application/Control Number: 14/269,605
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`Page 6
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`Art Unit: 2854
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`a paste ejecting device (14) which presses the inner lid (16) of the paste pot (10)
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`with respect to the tubular container (11) and which ejects the paste stored in the
`
`tubular container from the through hole (Paragraphs 0010, 0015),
`
`wherein the paste pot is integrated as a single unit (note: the term "a single unit"
`
`is a very broad recitation. Therefore, the examiner is interpreting "a single unit" as a ink
`
`cartridge 10 integrally formed with bottom portion as shown in marked-up figure 1. Also,
`
`the definition of integrated: verb (used with object), integrated, integrating. 1. to
`
`bring together or incorporate (parts) into a whole. 2. to make up, combine, or
`
`complete to produce a whole or a larger unit, as parts do. 3. to unite or combine),
`
`wherein the through hole (12) and at least a part of the bottom portion are
`
`exposed from the pot holder when the paste pot is held by the pot holder (refer to
`
`marked up Figure 1
`
`in the detailed action).
`
`With respect to claim 3, Suzuki teaches the paste pot (10) comprises a brim
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`portion (refer to marked-up Figure 1
`
`in the detailed action which is supported on an
`
`upper surface of the pot holder when the paste pot is held by the pot holder).
`
`

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`Application/Control Number: 14/269,605
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`Page 7
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`Art Unit: 2854
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`Bottom Portion
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`Claim Rejections - 35 USC § 103
`
`5.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`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.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly owned as of the effective filing date of the claimed invention(s) absent any
`
`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`owned as of the effective filing date of the later invention in order for the examiner to
`
`

`

`Application/Control Number: 14/269,605
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`Page 8
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`Art Unit: 2854
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka
`
`et al. (JP 08-207243) in view of Lin (US Publication 2005/0000062).
`
`With respect to claims 7 and 8, Tanaka teaches the claimed invention with the
`
`exception of an inner diameter of the circular hole portion is changeable, the pot holder
`
`comprises flange portions defining the circular hole portion and a bolt screwed into the
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`flange portions to change a distance between the flange portions, thereby changing the
`
`inner diameter of the circular hole portion.
`
`However, providing a holder with wherein an inner diameter that is changeable,
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`flange portions and a bolt screwed into flange portions is well known in the art as
`
`exemplified by Lin. Lin provides a holder (20) wherein an inner diameter of the circular
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`hole portion is changeable (Paragraphs 0023, 0031), the pot holder comprises flange
`
`portions (22, 26) defining the circular hole portion and a bolt (30) screwed into the
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`flange portions to change a distance between the flange portions, thereby changing the
`
`inner diameter of the circular hole portion (Paragraph 0023 and Figure 2).
`
`It would have been obvious to one of ordinary skill in the art at the time of filing of
`
`the present application to modify the pot holder of Tanaka with a holder with a
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`changeable inner diameter with flanges and a bolt screwed into the flanges taught by
`
`Lin for the purpose of tightly securing the container and preventing the container from
`
`falling out of alignment.
`
`

`

`Application/Control Number: 14/269,605
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`Page 9
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`Art Unit: 2854
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`With respect to claim 9, Lin teaches the pot holder comprises flange portions (22,
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`26) defining the circular hole portion (Figure 2); and a wing bolt (30) screwed into the
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`flange portions to change a distance between the flange portions, thereby changing the
`
`inner diameter of the circular hole portion (Paragraph 0023 and Figure 2).
`
`6.
`
`Claims 1, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Willshere (US Publication 2004/0244612) in view of Tanaka et al. (JP 08-207243).
`
`With respect to claim 1, Willshere teaches an exchangeable paste pot (30) which
`
`comprises a tubular container (Figure 2) which stores paste and which comprises a
`
`bottom portion (48) provided with a through hole (34);
`
`a pot holder (56) which contacts and holds the paste pot (30) in a state in which
`
`the through hole (34) of the paste pot is directed downward such that lateral expansion
`
`of the tubular container is suppressed and downward movement of the tubular container
`
`thereof is regulated (Figures 2-4);
`
`a paste ejecting device (36) and which ejects the paste stored in the tubular
`
`container from the through hole (34 and Paragraph 0035), wherein the through hole (34)
`
`and at least a part of the bottom portion (48) are exposed from the pot holder (56) when
`
`the paste pot is held by the pot holder (Figures 2 and 4),
`
`wherein the paste pot is integrated as a single unit (note: the term "a single unit"
`
`is a very broad recitation. Therefore, the examiner is interpreting "a single unit" as an
`
`ink cartridge 30 integrally formed with tubular container and bottom portion 48. Also,
`
`the definition of integrated: verb (used with object), integrated, integrating. 1. to
`
`

`

`Application/Control Number: 14/269,605
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`Page 10
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`Art Unit: 2854
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`bring together or incorporate (parts) into a whole. 2. to make up, combine, or
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`complete to produce a whole or a larger unit, as parts do. 3. to unite or combine).
`
`Willshere is silent with respect to a movable inner lid provided in the tubular
`
`container wherein the inner lid presses the paste pot with respect to the tubular
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`container. Tanaka et al. provides a movable inner lid (50) provided in the tubular
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`container and ejection device that presses the inner lid (50) of the paste pot with respect
`
`to the tubular container.
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`It would have been obvious to one of ordinary skill in the art at the time of filing of
`
`the present application to modify the paste pot of Willshere to provide an moveable
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`inner lid so that the ejection device presses the moveable inner lid as taught by Tanaka
`
`et al. for the purpose of ensuring the paste is discharged thereby not leaving an
`
`excessive amount of paste on the sides of the container.
`
`With respect to claim 10, Willshere teaches another exchangeable paste pot (30)
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`and another pot holder (56, Paragraph 0036) which contacts and holds the other
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`exchangeable paste pot (30 and Figure 2), wherein the apparatus is configured to move
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`the exchangeable paste pot out of an ejection position below the paste ejecting device
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`when the exchangeable paste pot becomes empty and move the other exchangeable
`
`paste pot into the ejection position (note: in the broadest interpretation, the examiner
`
`notes that any element can be considered to be removable/exchangeable. note: any
`
`element can be considered to be removeable. Also, it has been held that if it were
`
`considered desirable for any reason to obtain access to each paste pot, it would be
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`obvious to make the paste pot removeable for the purpose of performing maintenance
`
`

`

`Application/Control Number: 14/269,605
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`Page 11
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`Art Unit: 2854
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`or replacement. Refer to MPEP 2144.04(V)(C),
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`therefore the paste pot can be removed
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`from the apparatus and exchanged such as when the apparatus needs maintenance or
`
`when the paste pot is empty).
`
`With respect to claim 11, Willshere the apparatus is configured to replace the
`
`empty exchangeable paste pot with still another exchangeable paste pot (note: in the
`
`broadest interpretation, the examiner notes that any element can be considered to be
`
`removable/exchangeable. Also, it has been held that if it were considered desirable for
`
`any reason to obtain access to each paste pot, it would be obvious to make the paste
`
`pot removeable for the purpose of performing maintenance or replacement. Refer to
`
`MPEP 2144.04(V)(C). Therefore, the paste pot can be removed from the apparatus
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`and exchanged such as when the apparatus needs maintenance or when the paste pot
`
`is empty).
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`7.
`
`Applicant's arguments filed 12/16/15 have been fully considered but they are not
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`Response to Arguments
`
`persuasive.
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`With respect to applicant’s remarks on pages 5-7, that Tanaka, Suzuki and
`
`Willshere fails to disclose a paste pot that is integrated as a single unit, the examiner
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`disagrees. Specifically, as noted above, the terms “integrated” and “single unit” are very
`
`broad recitations. The definition of integrated: verb (used with object), integrated,
`
`integrating. 1. to bring together or incorporate (parts) into a whole. 2. to make up,
`
`

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`Application/Control Number: 14/269,605
`
`Page 12
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`Art Unit: 2854
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`combine, or complete to produce a whole or a larger unit, as parts do. 3. to unite
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`or combine. Therefore, the components combine to function as a “single unit”.
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`With respect to applicant’s remarks on page 8, that Willshere does not teach or
`
`suggest a paste pot in an ejection position or the apparatus is configured to replace an
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`empty exchangeable paste pot with another pot, the examiner disagrees. Specifically,
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`all the paste pots (30) as shown in figure 3 are in an ejection position to eject paste to
`
`be dispensed through slot 34. As noted above in the broadest interpretation, any
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`element can be considered to be removable/exchangeable. Also, it has been held that
`
`if it were considered desirable for any reason to obtain access to each paste pot, it
`
`would be obvious to make the paste pot removeable for the purpose of performing
`
`maintenance or replacement. Refer to MPEP 2144.04(V)(C). Therefore, the paste pot
`
`can be removed from the apparatus and exchanged such as when the apparatus needs
`
`maintenance or when the paste pot is empty.
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`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MARISSA FERGUSON-SAMRETH whose telephone
`
`number is (571)272—2163. The examiner can normally be reached on 8:00am-6:00pm.
`
`lf attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`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.
`
`

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`Application/Control Number: 14/269,605
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`Page 13
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`Art Unit: 2854
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private 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 to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/MARISSA FERGUSON-SAMRETH/
`
`Examiner, Art Unit 2854
`
`/BLAKE A TANKERSLEY/
`
`Primary Examiner, Art Unit 2854
`
`