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
`
`14/768,912
`
`08/19/2015
`
`Masayuki HIGASHI
`
`54949
`
`2818
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`11/07/2019
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`CARLEY~ JEFFREY T-
`
`3729
`
`PAPER NUMBER
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`NOTIFICATION DATE
`
`DELIVERY MODE
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`11/07/2019
`
`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.
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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
`
`PTOL-90A (Rev. 04/07)
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`

`

`0,7709 A0170” Summary
`
`Application No.
`14/768,912
`Examiner
`Jeffrey Carley
`
`Applicant(s)
`HIGASHI et al.
`Art Unit
`3729
`
`AIA (FITF) Status
`No
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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). 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).
`
`Status
`
`1). Responsive to communication(s) filed on 08/09/2019.
`[: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.
`
`Disposition of Claims*
`5)
`Claim(s)
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`1—5 and 7—8 is/are pending in the application.
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`5a) Of the above claim(s) fl 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) 4—5 and 7—8 is/are rejected.
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`E] Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
`
`8
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`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable. 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.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11):] The drawing(s) filed on
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`is/are: a)C] accepted or b)Ej 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)C] 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)C] All
`
`b)C] Some**
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`c)C] None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] 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)).
`
`** 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)
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`Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`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 20191104
`
`

`

`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA 0r AIA Status
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`The present application is being examined under the pre—AIA first to invent provisions.
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`Claim Interpretation
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`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. , An element in a claim for a combination may be expressed
`as a means or step for performing a specified function without the recital of structure, material, or acts
`in support thereof, and such claim shall be construed to cover the corresponding structure, material, or
`acts described in the specification and equivalents thereof.
`
`The following is a quotation of pre—AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing a
`specified function without the recital of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material, or acts described in the specification
`and equivalents thereof.
`
`m: The following 112(f) interpretation rationale is copied directly from the most
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`recent Office Action (mailed 05/09/19). Because the Applicant has not provided any rebuttal
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`evidence or amended the cited 112(f) interpreted claim limitations, that interpretation is hereby
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`maintained.
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`The claims in this application are given their broadest reasonable interpretation using the
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`plain meaning of the claim language in light of the specification as it would be understood by
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`one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also
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`commonly referred to as a claim limitation) is limited by the description in the specification
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`when 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is invoked.
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`As explained in MPEP § 2181, subsection 1, claim limitations that meet the following
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`three—prong test will be interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
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`paragraph:
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`

`

`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 3
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`(A)
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`the claim limitation uses the term “means” or “step” or a term used as a substitute for
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`“means” that is a generic placeholder (also called a nonce term or a non—structural term
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`having no specific structural meaning) for performing the claimed function;
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`(B)
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`the term “means” or “step” or the generic placeholder is modified by functional language,
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`typically, but not always linked by the transition word “for” (eg, “means for”) or another
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`linking word or phrase, such as “configured to” or “so that”; and
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`(C)
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`the term “means” or “step” or the generic placeholder is not modified by sufficient
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`structure, material, or acts for performing the claimed function.
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`Use of the word “means” (or “step”) in a claim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C.
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`112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is
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`interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is rebutted when
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`the claim limitation recites sufficient structure, material, or acts to entirely perform the recited
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`function.
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`Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that
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`the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre—AIA 35
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`U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under
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`35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim
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`limitation recites function without reciting sufficient structure, material or acts to entirely
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`perform the recited function.
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`Claim limitations in this application that use the word “means” (or “step”) are being
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`interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, except as
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`otherwise indicated in an Office action. Conversely, claim limitations in this application that do
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 4
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`not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre—
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`AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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`This application includes one or more claim limitations that do not use the word “means,”
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`but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
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`paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with
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`functional language without reciting sufficient structure to perform the recited function and the
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`generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a
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`first board conveyance mechanism and a second board conveyance mechanism” (line 9), “a
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`board holding unit” (line 10), “a component mounting unit” (line 13), “component feeding unit”
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`(line 14), “a board distribution unit” (line 16) and “a distribution control unit” (line 19) in claim
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`4, and “a first component feeding unit and a second component feeding unit” (lines 3—4) and “a
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`first component mounting mechanism and a second component mounting mechanism” (lines 6—
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`7) in claim 5.
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`Each of the above limitations has been subjected to the “3—prong analysis” per MPEP
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`2181. First, each limitation uses a replacement for “means for” In these instances, though the
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`term “means for” is absent, it is replaced by “mechanism” and “unit” which are equally broad
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`and without inherent structure. One can easily replace each instance of mechanism or unit with
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`“means” without changing the apparent meaning of the claims. Secondly, the “mechanism” and
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`“unit” language is modified by functional language: first and second board conveyance
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`mechanisms and board holding unit “which conveys”, component mounting unit, and first and
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`second component mounting mechanism “which executes the component mounting work”, “fed
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`by” a component feeding unit and first and second component feeding units, a board distribution
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`unit “which receives... and distributes”, a distribution control unit “which controls”. Third, none
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 5
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`of the above mechanisms or units are modified by any structure for achieving the specified
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`function: are the conveyance mechanisms human operators, or belts, or turrets, or robotic arms,
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`etc.? How does one draw or construct a “unit” or a “mechanism”? What structures are
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`necessary to hold or mount components? Does the controller have memory? Is it a strictly
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`mechanical, i.e. analog, controller, or is there computer control as well as mechanical control
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`means? Accordingly, the three—prong analysis for each of the above limitations has been met.
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`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or
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`pre—AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the
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`corresponding structure described in the specification as performing the claimed function, and
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`equivalents thereof.
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`If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C.
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`112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim
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`limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112,
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`sixth paragraph (e. g., by reciting sufficient structure to perform the claimed function); or (2)
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`present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform
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`the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre—AIA
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`35 U.S.C. 112, sixth paragraph.
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`Claim Rejections - 35 US C § 102
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in the
`United States.
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`Claims 4, 5 and 7 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated
`
`by Kabeshita et al. (US 2004/0033128 A1).
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
`
`Page 6
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`Regarding claim 4, Kabeshita discloses an electronic component mounting method
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`performed by an electronic component mounting system (Title; Abstract) that comprises: a
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`component mounting line (fig. 1) formed by interconnecting a plurality of component mounting
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`apparatuses (101, 102, 8, 18, 4, 14, 5, 15, l, 11, 9 and 19) concurrently performing component
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`mounting work to mount an electronic component on at least two kinds of boards (2a—1, 2a—2, 2a—
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`3, 2b—1, 2b—2, 2b—3) including a first kind of boards (2a—1, 2b—1) and a second kind of boards (2a—
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`2 and 2b—2) (figs. 1—8; pars. 0139—0143 and 0155), the first kind of boards and the second kind of
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`boards having different mounting workloads (pars. 0003, 0201, 0321), wherein each of the
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`component mounting apparatuses comprises: a first board conveyance mechanism (1A, 11A) and
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`a second board conveyance mechanism (1B, 11B), each of which comprises a board holding unit
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`(pre—placement conveyance unit, and first placement—position determining conveyance unit)
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`which conveys the board delivered from an upstream—side apparatus in a board conveyance
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`direction and positions and holds the conveyed board (fig. 1; pars. 0139—0155); a component
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`mounting unit (4, 14, 7, 17, 9, 19) which executes the component mounting work by picking up
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`the electronic component fed by a component feeding unit (8, 18) and transfers and mounts the
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`picked—up electronic component onto the board held by the board holding unit (fig. 1; par. 0140);
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`a board distribution unit (5, 15) which receives the board from the upstream—side apparatus and
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`distributes the received board to either the first board conveyance mechanism or the second
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`board conveyance mechanism (fig. 1; pars. 0140—0145 and 0155—0156); and a distribution control
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`unit (1000) which controls the first board conveyance mechanism, the second board conveyance
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`mechanism and the board distribution unit (figs. l9—20; pars. 0072, 0142 and 0167), said
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`electronic component mounting method comprising: conveying at least one (2a—1 or 2b—1) of the
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`first kind of boards and at least one of the second kind of boards (2a—2 or 2b—2) to the first board
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 7
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`conveyance mechanism and conveying at least another one (2a—1 or 2b—1) of the first kind of
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`boards and at least another one of the second kind of boards to the second board conveyance
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`mechanism based on a board request signal issued from a most—upstream component mounting
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`unit in the component mounting line (pars. 0167—0172), wherein said electronic component
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`mounting method further comprises: imaging a recognition mark (“A”) formed in each of the
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`two kinds of the boards with a component recognition camera; recognizing the recognition mark
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`formed in each of the two kinds of the boards based on a result of the imaging to thereby identify
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`the kinds of the boards (figs. 1—9; pars. 0106—0109); and changing over first mounting data and
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`second mounting data from one to the other based on an identification result of the board to
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`thereby control the component mounting unit, the first mounting data and the second mounting
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`data being stored in a storage unit (1001) and being provided for mounting the electronic
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`component on the two kinds of the boards, respectively (figs. 1—9, 19 and 20; pars. 0167—0172).
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`Regarding claim 5, Kabeshita discloses the electronic component mounting method
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`according to claim 4, wherein the component feeding unit comprises a first component feeding
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`unit (8A, 18A) and a second component feeding unit (8B, 18B) which are disposed on outer
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`sides of the first board conveyance mechanism and the second board conveyance mechanism,
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`respectively, and wherein the component mounting unit comprises a first component mounting
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`mechanism (9A, 19A) and a second component mounting mechanism (9B, 19B) which are
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`provided correspondingly to the first board conveyance mechanism and the second board
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`conveyance mechanism, respectively (figs. 1—5; pars. 0139—0155), said electronic component
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`mounting method comprising: causing the first component mounting mechanism to pick up the
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`electronic component from the first component feeding unit, and mount the electronic
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`component on the board positioned by the first board conveyance mechanism, and causing the
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 8
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`second component mounting mechanism to pick up the electronic components from the second
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`component feeding unit, and mount the electronic component on the board positioned by the
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`second board conveyance mechanism (figs. 1—9; pars. 0139—0155, 0167—0172).
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`Regarding claim 7, Kabeshita discloses the electronic component mounting method
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`according to claim 4, wherein the at least one of the first kind of boards and the at least one of
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`the second kind of boards are alternately conveyed to the first board conveyance mechanism, and
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`the at least another one of the first kind of boards and the at least another one of the second kind
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`of boards are alternately conveyed to the second board conveyance mechanism (figs. 1—4; pars.
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`0143—0155).
`
`Claim Rejections - 35 US C § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
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`Claim 8 is rejected under 35 U.S.C. 103(3) as being unpatentable over Kabeshita
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`Kabeshita, in View of Jy0k0 (US 5317802).
`
`Regarding claim 8, Kabeshita discloses all of the elements of the current invention as
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`detailed above with respect to claim 4. Kabeshita, however, does not explicitly disclose that the
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`first kind of boards and the second kind of boards are different in component mounting density.
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`J yoko teaches that it is well known to perform the method wherein the first kind of
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`boards and the second kind of boards are different in component mounting density (each board is
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
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`Page 9
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`a different kind by the nature of having specified mounting requirements for different individual
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`components: fig. 2; col. 3, lines 40—62).
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`It would have been obvious to one of ordinary skill in the art to have modified the current
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`invention of Kabeshita to incorporate the different substrate workload densities of Jyoko.
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`It is
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`considered well known that efficiency and precise production are of great importance in
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`manufacturing circuit boards. Moreover, it is common to manufacture a number of different
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`types (shape, size, weight, mounting architecture, etc.) of boards and to mount varying
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`components upon those boards, in the same manufacturing facility. In fact, the cited sections of
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`Kabeshita demonstrate that the intent was to mount components on differing substrates, and it
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`stands to obvious reason that different substrates would have different component densities,
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`otherwise there would be no benefit to having the different substrates of Kabeshita. One of
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`ordinary skill would have known that the recognition devices of each of the prior art references
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`could be used to detect and supply more than one density of components to the substrate for
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`component mounting. The obvious advantages include predictably increasing productivity
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`throughput, thus decreasing overall manufacturing costs, and ability to manufacture multiple
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`distinct products quickly and without machine downtime for part changes.
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`Response to Arguments
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`Applicant’s arguments with respect to claim 4 have been considered but are moot
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`because the arguments do not apply to any of the references being used in the current rejection.
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
`
`Page 10
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
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`Applicant is 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
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`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
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`the end of the THREE—MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR l.l36(a) will be calculated from the mailing date of the advisory action. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the date of this
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`final action.
`
`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Jeffrey Carley whose telephone number is (571)270—5609. The
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`examiner can normally be reached on Monday — Friday, 9:00 am — 5:00 pm.
`
`Examiner interviews are available via telephone, in—person, and video conferencing using
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`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, Peter Vo can be reached on 571—272—4690. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`

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`Application/Control Number: 14/768,912
`Art Unit: 3729
`
`Page ll
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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
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`
`/JEFFREY T CARLEY/
`
`Examiner, Art Unit 3729
`
`/PETER DUNGBA VO/
`
`Supervisory Patent Examiner of Art Unit 3729
`
`