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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`14/269,605
`
`05/05/2014
`
`Isao HORIE
`
`52644
`
`8228
`
`09’0”” —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
`
`ART UNIT
`2854
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/07/2017
`
`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
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`Application No.
`Applicant(s)
`
` 14/269,605 HORIE ET AL.
`Examiner
`Art Unit
`AIA (First Inventorto File)
`MARISSA FERGUSON-
`2854
`itatus
`SAMRETH
`es
`
`Office Action Summary
`
`-- 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 CFR 1.136(a).
`after SIX (6) 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)IXI Responsive to communication(s) filed on 5/8/17.
`|:I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:| This action is non-final.
`2a)IZ| This action is FINAL.
`3)|:l 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.
`
`4)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IXI Claim(s) 1,2 and 4-16 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`1,2 and 4- 16 is/are rejected.
`
`is/are objected to.
`
`
`
`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
`:l/wwwus tooow’ atents/init events"
`
`
`
`
`h/index.'s or send an inquiry to PPeredbacKQ. usgtogov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:| The drawing(s) filed on _ is/are: a)|:l accepted or b)|:l 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)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)le All
`1.IZI Certified copies of the priority documents have been received.
`2.|:I Certified copies of the priority documents have been received in Application No.
`3.I:I 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.
`
`Attach ment(s)
`
`
`
`1) D Notice of References Cited (PTO-892)
`.
`.
`2) X Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/Osb)
`Paper No(s)/Mai| Date 2/1/17 and 7/24/17.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`3) I] Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4) D Other: —-
`
`Part of Paper No./Mai| Date 20170821
`
`

`

`Application/Control Number: 14/269,605
`
`Page 2
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`Art Unit: 2854
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`DETAILED ACTION
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Claim Objections
`
`2.
`
`Claims 14 and 15 are objected to because of the following informalities:
`
`With respect to claims 14 and 15, the limitation “the inner rid” should be amended
`
`to --the inner lid--.
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`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
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`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
`
`point out the inventor and effective filing dates of each claim that was not commonly
`
`

`

`Application/Control Number: 14/269,605
`
`Page 3
`
`Art Unit: 2854
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`owned as of the effective filing date of the later invention in order for the examiner to
`
`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 1-2, 4-6 and 12 are rejected under 35 U.S.C. 103a as being unpatentable
`
`over Tanaka et al. (JP 08207243) in view Tsurusaki (JP 2010-036573).
`
`With respect to claim 1, Tanaka et al. teaches a paste supply apparatus
`
`comprising:
`
`an exchangeable paste pot (note: ink cartridge 48 is part of ink tank 39) which
`
`comprises a tubular container (40) which stores paste and which comprises a side
`
`surface and a flat bottom portion (refer to marked-up figure 5) provided with a through
`
`hole (43) and a movable inner lid (50) provided in the tubular container;
`
`a pot holder (21) which contacts and holds the side surface of paste pot in a state
`
`in which the through hole (43) of the paste pot (38) is directed downward; and
`
`a paste ejecting device (45, 46) which presses the inner lid of the paste pot with
`
`respect to the tubular container and which ejects the paste stored in the tubular
`
`container from the through hole (Paragraph 0049),
`
`wherein the through hole (43) and an outer surface of the flat 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).
`
`

`

`Application/Control Number: 14/269,605
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`Page 4
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`Art Unit: 2854
`
`if E E l
`
`45
`
`,
`
`5‘
`
`- as
`.- 4“ 1-
`~ ass;
`
`
`
`
`Side surface
`of the paste
`pot
`
`..
`3;
`‘
`
`-
`
`Outer surface of the exposed
`flat bottom portion of the paste
`pot
`
`'
`
`1
`
`1
`
`Side surface of
`the paste pot
`
`Outer surface of the exposed flat
`
`However, Tanaka et al. does not explicitly disclose an outer surface of the flat
`
`bottom portion and an end of the side surface are provided at substantially the same
`
`height. Tsurusaki teaches a paste pot (50) with an outer surface of the flat bottom
`
`

`

`Application/Control Number: 14/269,605
`
`Page 5
`
`Art Unit: 2854
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`portion and an end of the side surface are provided at substantially the same height
`
`(refer to marked-up Figure 16 in the detailed action).
`
`It would have been obvious to one of ordinary skill in the art before the time of
`
`filing of the present application to modify the paste pot of Tanaka et al. with a paste pot
`
`with a flat bottom portion and an end of a side surface at a same height as taught by
`
`Tsurusaki as it would require obvious substitution of one known paste pot for another
`
`paste pot with a flat bottom portion and end of a side surface at a same height for the
`
`purpose of providing a paste supplying container that enables a good paste rolling to be
`
`exhibited and consequently good screen printing quality can be ensured.
`
`
`
`
`End surface of
`
`side surface
`
`Outer surface of a flat
`
`
`
`
`
`bottom portion
`
`

`

`Application/Control Number: 14/269,605
`
`Page 6
`
`Art Unit: 2854
`
`With respect to claim 2, Tanaka et al. teaches a mask (16) which is positioned to
`
`contact a substrate (5).
`
`With respect to claim 4, Tanaka et al. teaches the pot holder (21) has a circular
`
`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)
`
`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
`
`hole portion (41) contacts the side surface of the tubular container without contacting
`
`the flat bottom portion (Figure 2).
`
`With respect to claims 12, a height of the pot holder is sufficient enough to cover
`
`most of a height of the paste pot and an outer diameter of a brim portion is wider than
`
`an outer diameter of the paste pot (note: the recitation is intended use and functional
`
`language and does not set forth sufficient patentably to distinguish the claimed invention
`
`over the prior art).
`
`

`

`Application/Control Number: 14/269,605
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`Page 7
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`Art Unit: 2854
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`Inner circular hole portion
`
`
`
`reams—J
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`
`contacting side surface of the tubular container
`
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`
`4.
`
`Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka
`
`et al. in view of Tsurusaki as applied to claims 1-2, 4-6 and 12 above and further in view
`
`of Lin (US Publication 2005/0000062).
`
`With respect to claims 7 and 8, Tanaka et al., as modified, teaches the claimed
`
`invention including a pot holder (21) having a block shape (Figures 2, 4) 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
`
`flange portions to change a distance between the flange portions, thereby changing the
`
`inner diameter of the circular hole portion.
`
`

`

`Application/Control Number: 14/269,605
`
`Page 8
`
`Art Unit: 2854
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`However, providing a holder with wherein an inner diameter that is changeable,
`
`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
`
`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
`
`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, as modified, with a holder
`
`with a 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.
`
`With respect to claim 9, Lin teaches the pot holder comprises flange portions (22,
`
`26) defining the circular hole portion (Figure 2); and a wing bolt (30) screwed into the
`
`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).
`
`5.
`
`Claims 13 and 16 are rejected under 35 U.S.C. 103a as being unpatentable over
`
`Tanaka et al. (JP 08207243) in view Tsurusaki (JP 2010-036573) as applied to claims
`
`1-2, 4-6 and 12 above, and further in view of Strutz, Jr. et al. (US Patent 4,485,736).
`
`With respect to claim 16, Tanaka et al., as modified, teaches a paste pot (note:
`
`ink cartridge 48 is part of ink tank 39), however does not explicitly disclose comprises a
`
`

`

`Application/Control Number: 14/269,605
`
`Page 9
`
`Art Unit: 2854
`
`brim portion which is supported on an upper surface of the pot holder when the paste
`
`pot is held by the pot holder. However, it is known to support a paste pot/container
`
`using a brim portion. Strutz Jr, et al. teaches an ink pot (31) having a brim portion
`
`provided on an outer side surface of the container, wherein the brim portion is
`
`supported by a pot holder (32 and Column 3, Lines 52-55 and Figure 1).
`
`It would have been obvious to one having ordinary skill in the art to modify the
`
`structure of Tanaka et al. to provide a brim portion to support a paste pot on a pot
`
`holder, as taught by Strutz Jr, et al. for the purpose of providing a pot that can be
`
`supported stably in an upright position, to limit the possibility that it will tilt inadvertently
`
`to the side and cause the system to operate incorrectly.
`
`With respect to claims 13, a height of the pot holder is sufficient enough to cover
`
`most of a height of the paste pot and an outer diameter of a brim portion is wider than
`
`an outer diameter of the paste pot (note: the recitation is intended use and functional
`
`language and does not set forth sufficient patentably to distinguish the claimed invention
`
`over the prior art).
`
`6.
`
`Claims 1, 10, 11, 14 and 15 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Seidl (US Patent 3,153,815) in view of Tsurusaki (JP 2010-036573).
`
`With respect to claim 1, Seidl teaches a paste supply apparatus comprising:
`
`an exchangeable paste pot (16) which comprises a tubular container (50) which
`
`stores paste and which comprises a side surface and a flat bottom portion (refer to
`
`

`

`Application/Control Number: 14/269,605
`
`Page 10
`
`Art Unit: 2854
`
`marked-up figure 4) provided with a through hole (18) and a movable inner lid (22)
`
`provided in the tubular container (Figures 1-3);
`
`a pot holder (52) which contacts and holds the side surface of paste pot (16) in a
`
`state in which the through hole (18) of the paste pot (16) is directed downward (Figure
`
`4); and
`
`a paste ejecting device (24) which presses the inner lid (22) of the paste pot (16)
`
`with respect to the tubular container (50) and which ejects the paste stored in the
`
`tubular container from the through hole (Column 3, Lines 1-14),
`
`wherein the through hole (18) and an outer surface of the flat bottom portion are
`
`exposed from the pot holder (52) when the paste pot (16) is held by the pot holder
`
`(Figure 4).
`
`However, Seidl does not explicitly disclose an outer surface of the flat bottom
`
`portion and an end of the side surface are provided at substantially the same height.
`
`Tsurusaki teaches a paste pot (50) with an outer surface of the flat bottom portion and
`
`an end of the side surface are provided at substantially the same height (refer to
`
`marked-up Figure 16 in the detailed action).
`
`It would have been obvious to one of ordinary skill in the art before the time of
`
`filing of the present application to modify the paste pot of Seidl with a paste pot with a
`
`flat bottom portion and an end of a side surface at a same height as taught by Tsurusaki
`
`as it would require obvious substitution of one known paste pot for another paste pot
`
`with a flat bottom portion and end of a side surface at a same height for the purpose of
`
`

`

`Application/Control Number: 14/269,605
`
`Page 11
`
`Art Unit: 2854
`
`providing a paste supplying container that enables a good paste rolling to be exhibited
`
`and consequently good screen printing quality can be ensured.
`
`With respect to claim 10, Seidl teaches another exchangeable paste pot (Figure
`
`4) and a pot holder moving device (52) which moves the pot holder (Column 4, Lines
`
`31 -43 and 56-68),
`
`another pot holder wherein the pot holder has another circular hole portion which
`
`contacts and holds the another other exchangeable paste pot (16 and refer to marked-
`
`up figure 4 in the detailed action),
`
`wherein the pot holder moving device moves the pot holder along an
`
`arrangement direction of the circular hole portion and the another circular hole portion,
`
`and which selectively positions one of the paste pot held by one of the circular hole
`
`portions at a position below the a paste ejecting device (24 and Column 4, Lines 31 -43
`
`and 56-68).
`
`With respect to claim 11, Seidl teaches the apparatus is configured to replace the
`
`empty exchangeable paste pot with still another exchangeable paste pot (Column 4,
`
`Lines 31 -43 and 56-68).
`
`

`

`Application/Control Number: 14/269,605
`
`Page 12
`
`Art Unit: 2854
`
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`Application/Control Number: 14/269,605
`
`Page 13
`
`Art Unit: 2854
`
`With respect to claim 14, Seidl teaches the paste ejecting device comprising a
`
`rod (24) having a pad member (20) provided above the paste pot (16 and note: as
`
`disclosed in Column 4, Lines 42-45 the rod 24 retracts, it retracts above the paste pot
`
`16), such that when the rod (24) moves downward, the pad member protrudes (figure 4)
`
`and press the inner lid (22).
`
`With respect to claim 15, note the limitation “the inner rid is movable until one
`
`surface of the inner lid touches an inner surface of the flat bottom portion pressed by the
`
`paste ejecting device” is merely a functional recitation of a desired mode of operation. It
`
`has been held that apparatus claims must be structurally distinguishable from the prior
`
`art. Particular attention is invited to MPEP 2114(l) which states, "While features of an
`
`apparatus may be recited either structural/y or functional/y, claims directed to an
`
`apparatus must be distinguished from the prior art in terms of structure rather than
`
`function, In re Schreiber, 128 F.3d 1473. 1477-78.44 USPO.2d 1429, 1431 - 32 (Fed.
`
`Cir. 1997)." Furthermore, MPEP 2114 (11) 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. " However, since Tsurusaki
`
`teaches all of the structure as recited and Tsurusaki provides a flat inner moveable lid
`
`that would be capable of being used and pressed in the manner recited and therefore
`
`meets the claim language.
`
`

`

`Application/Control Number: 14/269,605
`
`Page 14
`
`Art Unit: 2854
`
`Response to Arguments
`
`7.
`
`Applicant’s arguments with respect to claims 1, 2, 4-13 have been considered but
`
`are moot in view of the ground(s) of the current rejection.
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`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.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`