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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
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`14/867,079
`
`09/28/2015
`
`Masayuki MANTANI
`
`PIPMM—55108
`
`3312
`
`01/21/2016 —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`FERGUSON SAMRETH, MARISSA LIANA
`S UITE 1 200
`CLEVELAND, OH 441 14-3 108
`
`PAPER NUMBER
`
`ART UNIT
`2854
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`01/21/2016
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patdocket @ pearne.c0m
`jcholley @pearne.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`Application No.
`Applicant(s)
`
` 14/867,079 MANTANI, MASAYUKI
`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
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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on 9/28/15.
`|:I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| 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
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`)
`* 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
`htt
`:l/wwwus tooow’ atents/init events/
`
`
`
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`h/Endex.'s or send an inquiry to PPeredback@ usgtogov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)X| The drawing(s) filed on 9/28/15 is/are: a)|Z accepted or b)|:| 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).
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`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: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
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`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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`Attach ment(s)
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`1) E Notice of References Cited (PTO-892)
`.
`.
`2) X Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 9/28/15.
`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: —-
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`Part of Paper No./Mai| Date 20160110
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`5)IXI Claim(s) His/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s L7 is/are rejected.
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`is/are objected to.
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`) )
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`_
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`

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`Application/Control Number: 14/867,079
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`Page 2
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`Art Unit: 2854
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`DETAILED ACTION
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 102
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`2.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or otherwise available to the public before the effective filing date of the claimed
`invention.
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`Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tan
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`(US Patent 5,813,331).
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`With respect to claim 1, Tan teaches a screen printing apparatus, comprising:
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`a mask (14’) which has a first opening (142') provided in a first region (refer to
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`marked-up Figure 7), and a second opening (142) provided in a second region (refer to
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`marked-up Figure 7) which is thicker than the first region (Figure 7); and
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`

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`Application/Control Number: 14/867,079
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`Page 3
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`Art Unit: 2854
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`a printing head (16) which fills the first opening (142’) with a paste in a state
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`where a substrate is in contact with the first region (Figure 9), and fills the second
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`opening with the paste in a state where the substrate is in contact with the second
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`region (Figure 11).
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`Lower
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`surface of
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`the first
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`Intermediate region;
`inclination surface
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`region
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`region is
`flush with a
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`lower
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`surface of
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`the second
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`With respect to claim 2, Tan teaches wherein the printing head fills the second
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`opening with the paste in a state where the substrate is in contact with the second
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`region (Figure 11) after filling the first opening with the paste in a state where the
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`substrate is in contact with the first region (Figure 9 and Column 3, Line 60-Column 4,
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`Line 23).
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`With respect to claim 3, Tan teaches the printing head comprises a squeegee
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`(16) which slidably moves on the mask and fills the first opening and the second
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`opening with the paste (Figures 8-11), and wherein the squeegee (16) slidably moves in
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`the first region to fill the first opening with the paste, stops in an intermediate region
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`(refer to marked-up Figure 7) provided between the first region and the second region
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`

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`Application/Control Number: 14/867,079
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`Page 4
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`Art Unit: 2854
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`on the mask, and then start to move from the intermediate region and slidably moves in
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`the second region to fill the second opening with the paste (note: the recitation is
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`merely a functional recitation of a desired mode of operation. It has been held that
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`apparatus claims must be structurally distinguishable from the prior art. Particular
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`attention is invited to MPEP 2114(l) which states, "While features of an apparatus
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`may be recited either structurally or functionally, claims directed to an apparatus
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`must be distinguished from the prior art in terms of structure rather than
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`function, In re Schreiber, 128 F.3d 1473. 1477-78.44 USPO.2d 1429, 1431- 32 (Fed.
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`Cir. 1997). " Furthermore, MPEP 2114 (11) states, "A claim containing a 'recitation
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`with respect to the manner in which a claimed apparatus is intended to be
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`employed does not differentiate the claimed apparatus from a prior art apparatus'
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`if the prior art apparatus teaches all the structural limitations of the claim. "
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`Therefore, since Tan et al. teaches all of the structure as recited, it is capable of being
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`used in the manner recited and meets the claim language).
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`With respect to claim 4, Tan teaches a lower surface of the first region is flush
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`with a lower surface of the second region (refer to marked-up Figure 7).
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`With respect to claim 5, Tan teaches a lower surface of the first region is flush
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`with a lower surface of the second region (refer to marked-up Figure 7), and wherein the
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`intermediate region comprises an inclination surface which connects an upper surface
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`of the first region and an upper surface of the second region to each other (refer to
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`marked-up Figure 7).
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`

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`Application/Control Number: 14/867,079
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`Page 5
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`Art Unit: 2854
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`With respect to claim 6, Tan teaches the claimed invention with the exception of
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`an upper surface of the first region is flush with an upper surface of the second region
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`(note: in the broadest interpretation, depending on how the screen is positioned in the
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`printing device the 1st lower region/2nd lower region can be turned upside down and
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`therefore would become the 1st upper region/2nd upper region and therefore both
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`regions upper regions would be flush with respect to each other).
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`With respect to claim 7, Tan et al. teaches a component mounting line,
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`comprising: the screen printing apparatus (100) according to claim 1; and
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`a component mounting apparatus which mounts a component onto a substrate
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`on which the paste is printed by the screen printing apparatus (Column 2, Lines 60-67).
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`Conclusion
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`3.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure.
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`a.
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`Fujimoto (US Publication 2014/0170304), Abe et al. (US Publication
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`2011/0315028) and Murakami (US Patent 6,352,026) teach screens with different
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`thickness.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MARISSA FERGUSON-SAMRETH whose telephone
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`number is (571 )272—2163. The examiner can normally be reached on 8:00am-6:00pm.
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`

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`Application/Control Number: 14/867,079
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`Page 6
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`Art Unit: 2854
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Judy Nguyen can be reached on 571-272—2258. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/MARISSA FERGUSON-SAMRETH/
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`Examiner, Art Unit 2854
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`/BLAKE A TANKERSLEY/
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`Primary Examiner, Art Unit 2854
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`