`“x
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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
`
`
`
`
`
`14/736,817
`
`06/11/2015
`
`Hideo MATSUOKA
`
`PIPMM—54594
`
`7454
`
`09’1”” —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`CARTER, CHRISTOPHER W
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`ART UNIT
`2126
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/12/2017
`
`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)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/736,817 MATSUOKA, HIDEO
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`CHRISTOPHER CARTER $2215 2126
`-- 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 6/11/2015.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I 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)|:| 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 Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) fl is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| CIaim(s)_1-4is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I 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
`hit
`:/'/\W¢W.LISI>I‘.0. ovI’ atentS/init events/
`
`
`
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 6/11/2015is/are: a)lX| 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)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 6/11/2015.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20170828
`
`

`

`Application/Control Number: 14/736,817
`
`Page 2
`
`Art Unit: 2126
`
`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. Claims 1-4 submitted on 6/11/2015
`
`were considered and reviewed by this office action.
`
`Priority
`
`2.
`
`The office acknowledges that foreign priority is claimed on Japanese application
`
`JP 2014-128750 which was filed on 6/24/2014.
`
`Information Disclosure Statement
`
`3.
`
`The information disclosure statement submitted on 6/11/2015 has been reviewed
`
`and considered by this office action.
`
`Drawings
`
`4.
`
`The drawings submitted on 6/11/2015 have been reviewed and are considered
`
`acceptable.
`
`Specification
`
`5.
`
`The specification submitted on 6/11/2015 has been reviewed and is considered
`
`acceptable.
`
`Claim Rejections - 35 USC § 101
`
`6.
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
`
`

`

`Application/Control Number: 14/736,817
`
`Page 3
`
`Art Unit: 2126
`
`Claims 1-4 are rejected under 35 U.S.C. 101 because the claimed invention is
`
`directed to a judicial exception (Le, a law of nature, a natural phenomenon, or an
`
`abstract idea) without significantly more.
`
`Regarding Claim 1, and dependent claims thereof is/are directed to an abstract
`
`idea. Claim 1 represents an abstract idea of gathering, analyzing, and transmitting data
`
`performed on a general purpose computer which is similar to the concept courts have
`
`deemed abstract, (Electric Power Group, LLC, v. Alstom; 830 F.3d 1350, 119
`
`U.S.P.Q.2d1739 (Fed. Cir. 2016)) the steps of “creates component data”, “acquires
`
`component identification information”, “checks whether or not the component disposed
`
`in a predetermined position in the component supplying unit is a component to be
`
`disposed in the predetermined position ,
`
`transmits the component identification
`
`information”, “request for creation of component data”, and “creates the component
`
`data" do not represent significantly more. Further the limitations in dependent Claim 2
`
`merely specify the type of data gathered and analyzed without adding significantly
`
`more. It is advised that clarifying that the component mounting apparatus is controlled
`
`based on the data regarding the alternative component data by amending a control or
`
`operating limitation may avoid the classification of the claims as abstract ideas.
`
`Thus, taken alone, the additional elements do not amount to significantly more
`
`than the above-identified judicial exception (the abstract idea). Looking at the
`
`limitations as an ordered combination adds nothing that is not already present when
`
`looking at the elements taken individually. There is no indication that the combination of
`
`elements improves the functioning of a computer or improves any other technology.
`
`

`

`Application/Control Number: 14/736,817
`
`Page 4
`
`Art Unit: 2126
`
`Their collective functions merely provide conventional computer/computerized
`
`implementation.
`
`Regarding Claim 3, and dependent claims thereof is/are directed to an abstract
`
`idea. Claim 3 represents an abstract idea of gathering, analyzing, and transmitting data
`
`performed on a general purpose computer which is similar to the concept courts have
`
`deemed abstract, (Electric Power Group, LLC, v. Alstom; 830 F.3d 1350, 119
`
`U.S.P.Q.2d1739 (Fed. Cir. 2016)) the steps of “creates component data”, “acquires
`
`component identification information”, “checks whether or not the component disposed
`
`in a predetermined position in the component supplying unit is a component to be
`
`disposed in the predetermined position”, “acquire identification information”, “transmit
`
`identification information”, and “create the component data" do not represent
`
`significantly more. Further the limitations in dependent Claim 4 merely specify the type
`
`of data gathered and analyzed without adding significantly more. It is advised that
`
`clarifying that the component mounting apparatus is controlled based on the data
`
`regarding the alternative component data by amending a control or operating limitation
`
`may avoid the classification of the claims as abstract ideas.
`
`Thus, taken alone, the additional elements do not amount to significantly more
`
`than the above-identified judicial exception (the abstract idea). Looking at the
`
`limitations as an ordered combination adds nothing that is not already present when
`
`looking at the elements taken individually. There is no indication that the combination of
`
`elements improves the functioning of a computer or improves any other technology.
`
`

`

`Application/Control Number: 14/736,817
`
`Page 5
`
`Art Unit: 2126
`
`Their collective functions merely provide conventional computer/computerized
`
`implementation.
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`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.
`
`8.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
`
`9.
`
`Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`lshimoto (US Patent 8,849,442) in view of Elhanan et al. (US PGPUB 20070250201).
`
`10.
`
`Regarding Claim 1; lshimoto teaches; A component mounting system
`
`comprising: (Title, Fig. 2; disclose a component mounting system)
`
`a component mounting apparatus which mounts components supplied
`
`from a component supply member disposed in a component supplying unit on a
`
`substrate; (Fig. 2; column 5, lines 36-59; discloses a component mounting device (4)
`
`

`

`Application/Control Number: 14/736,817
`
`Page 6
`
`Art Unit: 2126
`
`including a plurality of tape feeders (component supply member) and which mounts
`
`components using mounting head (12) (component supplying unit) on a substrate)
`
`a data creating apparatus which creates component data, which is a
`
`control parameter set for mounting the component on the substrate by the
`
`component mounting apparatus, for each component; (Column 2, lines 30-40;
`
`disclose a data creation unit (data creating apparatus which includes: code reader (18),
`
`mounting control unit (21), input unit (26), and component supply state detector (28);
`
`column 7, lines 33-51) for creating component data regarding substitute components to
`
`be used by the mounting device and which includes information specifying the substrate
`
`on which the substitute components are to be mounted on and mounting positions
`
`(control parameters) for each component)
`
`and a component arranging operation supporting apparatus which
`
`includes an identification information acquiring unit that acquires component
`
`identification information given to the component supplying member, (Fig. 4;
`
`column 6, lines 15-34; discloses a component mounting device control device (20)
`
`component arranging operation supporting apparatus) which includes a code reader
`
`(18) (identification information acquiring unit) that acquires component information
`
`regarding substrates and information regarding components to be arranged on the
`
`substrate)
`
`and a control unit which checks whether or not the component disposed in
`
`a predetermined position in the component supplying unit is a component to be
`
`disposed in the predetermined position based on the component identification
`
`

`

`Application/Control Number: 14/736,817
`
`Page 7
`
`Art Unit: 2126
`
`information acquired by the identification information acquiring unit, (Fig. 4;
`
`column 6, lines 15-46; discloses a mounting control unit (21) (control unit) which utilizes
`
`information from the scanned substrate using the code reader (18) (component
`
`information acquiring unit) which provides substrate information (component
`
`identification information) to the control unit. The mounting control unit (21) then uses
`
`the NC program (23) stored in storage unit (22) to sequentially mount predetermined
`
`types of components at defined positions on the substrate (i.e. checks whether
`
`components in the component supplying unit is a component to be disposed in a
`
`predetermined position))
`
`wherein the control unit of the component arranging operation supporting
`
`apparatus includes a component data creation requesting unit that transmits the
`
`component identification information acquired by the identification information
`
`acquiring unit and identification information related to an alternative component
`
`to the data creating apparatus and performs a request for a creation of
`
`component data regarding the alternative component, (Fig. 4 and 7; discloses,
`
`during the mounting of component operation as described in Fig. 7, at step 8T4, if it is
`
`determined that a substitute component is being used, a request is made to update the
`
`control sequence with new data (component data creation requesting unit) and where
`
`the transmitted data includes identification of the substitute component (column 10,
`
`lines 31 -36) (alternative component information) and substrate component information
`
`(column 10, lines 37-40) (component identification information))
`
`

`

`Application/Control Number: 14/736,817
`
`Page 8
`
`Art Unit: 2126
`
`and the data creating apparatus receives the request from the component
`
`data creation requesting unit and creates the component data regarding the
`
`alternative component. (Figs. 4 and 7; column 10, lines 37-44); discloses step 8T8
`
`where the mounting control unit (21) (part of the data creating apparatus) creates
`
`substitute (alternative) component data)
`
`Ishimoto appears to be silent on; ...acquiring identification information
`
`related to an alternative component that is used as an alternative to the
`
`component. . .
`
`However, Elhanan et al. teaches; (Figs. 21 and 22, paragraph [0318]) discloses
`
`where parameters of the original component are compared to that of the substitute and
`
`the substitute component data is updated based on any discrepancies between the two
`
`components.
`
`Ishimoto and Elhanan et al. are analogous art because they are from the same
`
`field of endeavor or similar problem solving area, component mounting systems.
`
`It would have been obvious to one of ordinary skill in the art prior to the effective
`
`filing date of the disclosed invention to have combined the teachings of Elhanan et al.
`
`with the disclosed invention of Ishimoto of utilizing primary component data when
`
`creating alternative component data. Including this information in the creation of the
`
`alternative component data would guarantee that the alternative component is utilized
`
`properly and placed in the correct spaces on the substrate. KSR, 550 U.S. 398 (2007),
`
`82 USPQ2d at 1396; MPEP 2143(D).
`
`

`

`Application/Control Number: 14/736,817
`
`Page 9
`
`Art Unit: 2126
`
`11.
`
`Regarding Claim 2; Ishimoto teaches; The component mounting system
`
`according to claim 1, wherein the data creating apparatus creates the component
`
`data regarding the alternative component (Ishimoto; Figs. 4 and 7; column 10, lines
`
`37-44); discloses step 8T8 where the mounting control unit (21) (part of the data
`
`creating apparatus) creates substitute (alternative) component data)
`
`Ishimoto appears to be silent on; by using the component data regarding the
`
`component which is replaced with the alternative component.
`
`However, Elhanan et aI. teaches; (Figs. 21 and 22, paragraph [0318]) discloses
`
`where parameters of the original component are compared to that of the substitute and
`
`the substitute component data is updated based on any discrepancies between the two
`
`components.
`
`Ishimoto and Elhanan et al. are analogous art because they are from the same
`
`field of endeavor or similar problem solving area, component mounting systems.
`
`It would have been obvious to one of ordinary skill in the art prior to the effective
`
`filing date of the disclosed invention to have combined the teachings of Elhanan et aI.
`
`with the disclosed invention of Ishimoto of utilizing primary component data when
`
`creating alternative component data. Including this information in the creation of the
`
`alternative component data would guarantee that the alternative component is utilized
`
`properly and placed in the correct spaces on the substrate. KSR, 550 U.S. 398 (2007),
`
`82 USPQ2d at 1396; MPEP 2143(D).
`
`

`

`Application/Control Number: 14/736,817
`
`Page 10
`
`Art Unit: 2126
`
`12.
`
`Regarding Claim 3; |shimoto teaches; A component data creation method of a
`
`component mounting system that includes (Abstract; Fig. 2)
`
`a component mounting apparatus which mounts components supplied
`
`from a component supply member disposed in a component supplying unit on a
`
`substrate, (Fig. 2; column 5, lines 36-59; discloses a component mounting device (4)
`
`including a plurality of tape feeders (component supply member) and which mounts
`
`components using mounting head (12) (component supplying unit) on a substrate)
`
`a data creating apparatus which creates component data, which is a
`
`control parameter set for mounting the component on the substrate by the
`
`component mounting apparatus, for each component, (Column 2, lines 30-40;
`
`disclose a data creation unit (data creating apparatus which includes: code reader (18),
`
`mounting control unit (21), input unit (26), and component supply state detector (28)) for
`
`creating component data regarding substitute components to be used by the mounting
`
`device and which includes information specifying the substrate on which the substitute
`
`components are to be mounted on and mounting positions (control parameters) for each
`
`component)
`
`and a component arranging operation supporting apparatus which
`
`includes an identification information acquiring unit that acquires component
`
`identification information given to the component supplying member , (Fig. 4;
`
`column 6, lines 15-34; discloses a component mounting device control device (20)
`
`component arranging operation supporting apparatus) which includes a code reader
`
`(18) (identification information acquiring unit) that acquires component information
`
`

`

`Application/Control Number: 14/736,817
`
`Page 11
`
`Art Unit: 2126
`
`regarding substrates and information regarding components to be arranged on the
`
`substrate)
`
`and a control unit that checks whether or not the component disposed in a
`
`predetermined position in the component supplying unit is a component to be
`
`disposed in the predetermined position based on the component identification
`
`information acquired by the identification information acquiring unit, (Fig. 4;
`
`column 6, lines 15-46; discloses a mounting control unit (21) (control unit) which utilizes
`
`information from the scanned substrate using the code reader (18) (component
`
`information acquiring unit) which provides substrate information (component
`
`identification information) to the control unit. The mounting control unit (21) then uses
`
`the NC program (23) stored in storage unit (22) to sequentially mount predetermined
`
`types of components at defined positions on the substrate (i.e. checks whether
`
`components in the component supplying unit is a component to be disposed in a
`
`predetermined position))
`
`the method comprising:
`
`causing the identification information acquiring unit to acquire
`
`identification information related to the component and identification information
`
`related to an alternative component; causing the component arranging operation
`
`supporting apparatus to transmit both of the identification information related to
`
`the component and the alternative component acquired by the identification
`
`information acquiring unit to the data creating apparatus; (Fig. 4 and 7; discloses,
`
`during the mounting of component operation as described in Fig. 7, at step 8T4, if it is
`
`

`

`Application/Control Number: 14/736,817
`
`Page 12
`
`Art Unit: 2126
`
`determined that a substitute component is being used, a request is made to update the
`
`control sequence with new data (component data creation requesting unit) and where
`
`the transmitted data includes identification of the substitute component (column 10,
`
`lines 31 -36) (alternative component information) and substrate component information
`
`(column 10, lines 37-40) (component identification information))
`
`and causing the data creating apparatus to create component data
`
`regarding the alternative component received from the component arranging
`
`operation supporting apparatus. (Figs. 4 and 7; column 10, lines 37-44); discloses
`
`step 8T8 where the mounting control unit (21) (part of the data creating apparatus)
`
`creates substitute (alternative) component data)
`
`lshimoto appears to be silent on; causing the identification information
`
`acquiring unit to acquire identification information related to the component and
`
`identification information related to an alternative component that is used as an
`
`alternative to the component
`
`and causing the data creating apparatus to create component data
`
`regarding the alternative component based on both of the identification
`
`information related to the component and the alternative component received
`
`from the component arranging operation supporting apparatus.
`
`However, Elhanan et al. teaches; (Figs. 21 and 22, paragraph [0318]) discloses
`
`where parameters of the original component are compared to that of the substitute and
`
`the substitute component data is updated based on any discrepancies between the two
`
`components.
`
`

`

`Application/Control Number: 14/736,817
`
`Page 13
`
`Art Unit: 2126
`
`lshimoto and Elhanan et al. are analogous art because they are from the same field of
`
`endeavor or similar problem solving area, component mounting systems.
`
`It would have been obvious to one of ordinary skill in the art prior to the effective
`
`filing date of the disclosed invention to have combined the teachings of Elhanan et al.
`
`with the disclosed invention of lshimoto of utilizing primary component data when
`
`creating alternative component data. Including this information in the creation of the
`
`alternative component data would guarantee that the alternative component is utilized
`
`properly and placed in the correct spaces on the substrate. KSR, 550 U.S. 398 (2007),
`
`82 USPQ2d at 1396; MPEP 2143(D).
`
`13.
`
`Regarding Claim 4; lshimoto teaches; The component mounting method
`
`according to claim 3, wherein the component data regarding the alternative
`
`component is created (lshimoto; Figs. 4 and 7; column 10, lines 37-44); discloses step
`
`8T8 where the mounting control unit (21) (part of the data creating apparatus) creates
`
`substitute (alternative) component data)
`
`lshimoto appears to be silent on; by using the component data regarding the
`
`component which is replaced with the alternative component.
`
`However, Elhanan et al. teaches; (Figs. 21 and 22, paragraph [0318]) discloses
`
`where parameters of the original component are compared to that of the substitute and
`
`the substitute component data is updated based on any discrepancies between the two
`
`components.
`
`

`

`Application/Control Number: 14/736,817
`
`Page 14
`
`Art Unit: 2126
`
`lshimoto and Elhanan et al. are analogous art because they are from the same
`
`field of endeavor or similar problem solving area, component mounting systems.
`
`It would have been obvious to one of ordinary skill in the art prior to the effective
`
`filing date of the disclosed invention to have combined the teachings of Elhanan et al.
`
`with the disclosed invention of lshimoto of utilizing primary component data when
`
`creating alternative component data. Including this information in the creation of the
`
`alternative component data would guarantee that the alternative component is utilized
`
`properly and placed in the correct spaces on the substrate. KSR, 550 U.S. 398 (2007),
`
`82 USPQ2d at 1396; MPEP 2143(D).
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CHRISTOPHER CARTER whose telephone number is
`
`(469)295-9262. The examiner can normally be reached on Monday - Thursday 8:00 am
`
`- 5:30 pm CST.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Robert E. Fennema can be reached on 571-272-2748. The fax phone
`
`

`

`Application/Control Number: 14/736,817
`
`Page 15
`
`Art Unit: 2126
`
`number 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
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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