Appln. No. 14/736,817
`Amendment dated February 13, 2018
`Reply to Office Action dated September 12, 2017
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`REMARKS/ARGUMENTS
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`Applicants would like to thank the examiner for the careful consideration given the
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`present application. By the present amendment, claims 1 and 3 remain in the application while
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`claims 2 and 4 are cancelled. Claims 1 and 3 are amended. Support for the amendments can be
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`found, for example,
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`in at least [0043] of the Specification. Applicants respectfully request
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`reconsideration and allowance.
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`Claim Rejections - 35 U.S.C. § 101
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`Claims 1-4 were rejected under 35 U.S.C. § 101 as being directed to ineligible subject
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`matter.
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`Initially in rejecting the claims,
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`the Office action identifies claim features that are
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`considered to be abstract. But this analysis is insufficient to properly determine what the claim
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`as a whole is directed to. That is, Pointing only to allegedly abstract concepts within the claim,
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`without regard to the remaining elements, is nothing more than “merely identify[ing] a patent-
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`ineligible concept underlying the claim.” See July 14, 2016 Memo re: Recent Subject Matter
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`Eligibility Rulings (citing Rapid Litigation Management v. Cellz—Direct). But “the ‘directed to’
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`analysis of a process claim requires more” than that, it “requires an analysis of whether ‘the end
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`result of the process, the essence of the whole, was a patent-ineligible concept.” Id. Further, it
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`is noted that when the allegedly abstract concept is applied “with, or by use of, a particular
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`machine,” effects a transformation, and/or improves a technical field, the claims are considered
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`eligible even if abstract. Here, the claims as a whole do each of these and are directed to far
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`more than generically collecting and analyzing data.
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`For example, as described in [0001] of the Specification, the present claims are directed
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`to a system and method of mounting components on a substrate. Naturally then, they are
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`inextricably tied to these physical structures and to actually “mount[ing] the components
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`supplied from a component supply member disposed in a component supplying unit on a
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`substrate,” as recited in claim 1. This is hardly the “gathering, analyzing, and transmitting data”
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`alleged by the Office action, but
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`rather is
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`link to a particular machine effectuating a
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`transformation of the components and substrates. Moreover, as noted for example in [0006]-
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`[0010] of the Specification, when an alternative component is used (in place of a master
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`Appln. No. 14/736,817
`Amendment dated February 13, 2018
`Reply to Office Action dated September 12, 2017
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`component), and component data has not yet been created for that alternative, “it is difficult to
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`rapidly cope [with the] situation at the production site.
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`This can slow production and lead to
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`errors effecting quality control. Thus, the present claims are further directed to improvements to
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`electrical component manufacturing technologies.
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`For at least these reasons, it is submitted that the claims are eligible and it is respectfully
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`requested that the rejection be withdrawn.
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`Claim Rejections - 35 USC § 103
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`Claims l-4 were rejected under 35 U.S.C. § 103 as being unpatentable over Ishimoto (US
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`8,849,442) in view of Elhanan (US 2007/0250201). For the following reasons the rejection is
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`respectfully traversed.
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`Regarding independent claims 1 and 3, Ishimoto and Elhanan, alone and in combination,
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`do not teach, suggest or otherwise render obvious creating the “component data regarding the
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`alternative component” “by copying the component data regarding the component
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`that
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`is
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`replaced with the alternative component” (emphasis added) as recited by the amended claims.
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`The Office action cites to Ishimoto to teach features related to creating the data, and to Elhanan
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`to teach features related to the identification information related to alternative data used in
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`creating the data.
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`In view of these references, Ishimoto merely describes creating component
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`data for a substitute component, for example, by rewriting existing data for a substitute
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`component or creating dew data for the substitute from scratch. Similarly, Elhanan merely
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`describes modifying operating instructions for a substitute component. Neither of these
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`references describe that
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`the original data is m to create the data for the alternative
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`component, as is claimed.
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`Therefore, as the prior art references fail to render all the limitations in claims 1 and 3
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`obvious, it is respectfully requested that the rejection of claims 1 and 3 be withdrawn. As claims
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`2 and 4 are cancelled, the rejection thereof is moot, therefore, it is respectfully requested that the
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`rejection of claims 2 and 4 also be withdrawn.
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`In consideration of the foregoing analysis, it is respectfully submitted that the present
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`application is in a condition for allowance and notice to that effect is hereby requested.
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`If it is
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`Appln. No. 14/736,817
`Amendment dated February 13, 2018
`Reply to Office Action dated September 12, 2017
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`determined that the application is not in a condition for allowance, the examiner is invited to
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`initiate a telephone interview with the undersigned attorney to expedite prosecution of the
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`present application.
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`If there are any additional fees resulting from this communication, please charge same to
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`our Deposit Account No. 16-0820, our Order No. P1PMM-54594.
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`Respectfully submitted,
`PEARNE & GORDON, LLP
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`Date: February 13, 2018
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`By:
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`/Andrew W- JenkinS/
`Andrew W. Jenkins, Reg. No. 70836
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`1801 East 9th Street
`Suite 1200
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`Cleveland, Ohio 44114-3108
`(216) 579—1700
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