UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/204,016
`
`07/07/2016
`
`Ryouji EGUCHI
`
`PIPMM-56471
`
`3195
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`05/31/2018
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OHIO 44114-3108
`UNITED STATES OF AMERICA
`
`KOCH GEORGE R
`
`1745
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`05/31/2018
`
`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)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/204,016
`Examiner
`GEORGE R KOCH
`
`Applicant(s)
`EGUCHI et al.
`Art Unit
`1745
`
`AIA Status
`Yes
`
`- 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 2/6/2018.
`[: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.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—17 is/are pending in the application.
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`5a) Of the above claim(s)
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`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) 1—2 and 4—17 is/are rejected.
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`Claim(s) g is/are objected to.
`
`) ) ) )
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`6 7
`
`8
`
`
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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)E] 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
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`b)C] Some”
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`c)C] None of the:
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`1C]
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`Certified copies of the priority documents have been received.
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`2C]
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`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)).
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`** 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) C] Notice of References Cited (PTO-892)
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`2) E] 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 20180523
`
`

`

`Application/Control Number: 15/204,016
`Art Unit: 1745
`
`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA 0r AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Response to Arguments
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`2.
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`Applicant's arguments filed with respect to claims 1—2 and 4—17 have been fully
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`considered but they are not persuasive.
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`3.
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`In response to applicant's argument that the references fail to show certain features of
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`applicant’s invention, it is noted that the features upon which applicant relies (i.e., that the
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`controls are based on detection of a splicing) are not recited in the rejected claim(s). Although
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`the claims are interpreted in light of the specification, limitations from the specification are not
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`read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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`Applicant appears to intend that “joining” be limited to splicing, but the language is interpreted
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`under the broadest reasonable interpretation standard and the disclosure in the ‘635 patent reads
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`on the language.
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`4.
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`Similarly, with respect to claim 4 and with respect to claim 6, the applicant appears to
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`intend that “joining” be limited to splicing. However, the term joining is a broad term and reads
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`on the worker identifying and transferring a joining that is to occur. It should be noted that the
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`language is broad enough to read on a joining that is to occur. With respect to claim 6, it should
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`be noted again that a “detected splicing” does not appear in the claim language.
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`

`

`Application/Control Number: 15/204,016
`Art Unit: 1745
`
`Page 3
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`5.
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`Applicant’s arguments, see remarks, filed 2/6/2018, with respect to claim 3 have been
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`fully considered and are persuasive. The rejection of claim 3 has been withdrawn.
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`Claim Rejections - 35 US C § 102
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`6.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`7.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`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)(l) 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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`8.
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`Claim(s) 1—2, 4 and 6—11 is/are rejected under 35 U.S.C. 102a1 as being anticipated by JP
`
`2012-104635 A.
`
`As to claim 1, JP 2012—104635 A discloses a component supply system (see paragraphs
`
`0024—52), comprising: a component supply unit automatically transfers a first carrier tape which
`
`stores components and is covered with a cover tape, exposes the components from the first
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`carrier tape using a component exposing unit, and supplies the components which are exposed
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`from the first carrier tape (see especially Figure 1 and 2 and paragraphs 0024—3 1);
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`a joining determination unit (control device 60) which determines whether or not a
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`joining which joins a second carrier tape positioned behind the first carrier tape to the first carrier
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`tape is present (see paragraph 0037); and
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`

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`Application/Control Number: 15/204,016
`Art Unit: 1745
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`Page 4
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`a controller (control device 60) which controls transferring of the first carrier tape by the
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`component supply unit (see paragraphs 0038—42), wherein
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`the controller restricts the transferring of the first carrier tape in a case in which the
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`joining determination unit determines that the joining is present (see paragraph 0037, disclosing
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`that control device 60 judges whether a reel is an error and displays an error message).
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`As to claim 2, JP 2012—104635 A discloses a reader (reading part 83, see paragraphs
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`0035—36) which reads identification information attached to a reel which stores the first carrier
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`tape;
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`a storage which associates and stores the identification information attached to the reel
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`with presence or absence of the joining (see Table T and ROM 62, paragraphs 0032—33); and
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`a notification unit (display unit 81 functions as a notification unit) which performs
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`notification of an occurrence of an abnormality (see especially paragraph 0044, disclosing that
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`the invention of JP 2012—104635 A “displays production stoppage instructions on the display
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`part 81”),
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`wherein the joining determination unit determines whether or not the joining is present
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`based on the identification information which is read by the reader and information stored in the
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`storage, and wherein the controller causes the notification unit to perform notification of a
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`warning in a case in which the joining determination unit determines that the joining is present
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`(see especially paragraphs 0037—38 and 0043—44).
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`As to claim 4, JP 2012—104635 A discloses that the joining is transferred to a visible
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`position in a case in which the joining determination unit determines that the joining is present.
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`See paragraphs 0049—52, and especially paragraph 0050, which discloses that the “worker reads
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`

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`Application/Control Number: 15/204,016
`Art Unit: 1745
`
`Page 5
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`the identification information of the bar code 32 of the wearing reel 23”, which reads on a Visible
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`position as claimed.
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`As to claim 6, JP 2012—104635 A discloses a component supply method (see paragraphs
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`0024—52) in a component supply system including a component supply unit automatically
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`transfers a first carrier tape which stores components and is covered with a cover tape, exposes
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`the components from the first carrier tape using a component exposing unit, and supplies the
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`components which are exposed from the first carrier tape (see especially Figure 1 and 2 and
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`paragraphs 0024—3 1), the method comprising:
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`determining whether or not a joining which joins a second carrier tape positioned behind
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`the first carrier tape to the first carrier tape is present (performed by control device 60, see for
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`example paragraph 0037); and
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`restricting transferring of the first carrier tape in a case in which the joining is determined
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`to be present (see especially paragraphs 0037—38 and 0043—44).
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`As to claim 7, JP 2012—104635 A discloses that the component supply system further
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`includes a reader which reads identification information attached to a reel which stores the first
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`carrier tape (reading part 83, see paragraphs 0035—36),
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`a storage which associates and stores the identification information of the reel with
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`presence or absence of the joining (see Table T and ROM 62, paragraphs 0032—33), and
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`a notification unit (display unit 81 functions as a notification unit) which performs
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`notification of a warning, wherein it is determined whether or not the joining is present based on
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`the identification information which is read by the reader and information stored in the storage
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`

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`Application/Control Number: 15/204,016
`Art Unit: 1745
`
`Page 6
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`(see especially paragraphs 0037—38 and 0043—44), and wherein the notification unit performs
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`notification of the warning in a case in which the joining is determined to be present (see
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`especially paragraph 0044, disclosing that the invention of JP 2012—104635 A “displays
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`production stoppage instructions on the display part 81”).
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`As to claim 8, JP 2012—104635 A discloses that the component supply unit includes a
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`sensor (see detector 31, paragraph 0049) which detects the joining midway down a transfer path
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`of the first carrier tape at a position in front of the component exposing unit, wherein it is
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`determined whether or not the joining is present based on detection information of the sensor,
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`and wherein transferring of the first carrier tape is stopped at a position at which the joining is in
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`front of the component exposing unit in a case in which the joining is determined to be present.
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`As to claim 9, JP 2012—104635 A discloses that the joining is transferred to a Visible
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`position in a case in which the joining is determined to be present. See paragraphs 0049—52, and
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`especially paragraph 005 O, which discloses that the “worker reads the identification information
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`of the bar code 32 of the wearing reel 23”, which reads on a Visible position as claimed.
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`As to claim 10, the controller of JP 2012—104635 A is capable of operation such that the
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`controller inhibits the forward transferring of the first carrier tape in the case in which the joining
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`determination unit determines that the joining is present.
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`As to claim 11, the controller of JP 2012—104635 A is capable of operation such that the
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`controller restricts transfer of the first carrier tape such that the joining is not transferred to the
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`component exposing unit in the case in which the joining determination unit determines that the
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`joining is present.
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`Claim Rejections - 35 US C § 103
`
`

`

`Application/Control Number: 15/204,016
`Art Unit: 1745
`
`Page 7
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`9.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`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.
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`10.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`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.
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`11.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 U.S. l, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`12.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was commonly
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`owned as of the effective filing date of the claimed invention(s) absent any evidence to the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as of the effective filing date
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`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`

`

`Application/Control Number: 15/204,016
`Art Unit: 1745
`
`Page 8
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`13.
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`Claim 5 and 12—17 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP
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`2012—104635 A) as applied to claims 1—4 and 6—9 above.
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`As to claim 5, JP 2012—104635 A discloses that the sensor is an ON/OFF sensor of a
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`contact process or a non contact type. See paragraph 0049.
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`However, JP 2012—104635 does not further disclose that the sensor is a transmitting
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`sensor which detects a light blocking state of the first carrier tape, wherein the component supply
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`unit further includes a computer which computes a light blocking length in a case in which the
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`light blocking state is detected by the sensor, and wherein the joining determination unit
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`determines that the joining is present in a case in which the light blocking length exceeds a
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`threshold.
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`However, official notice is taken that it is well known and conventional to select a
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`transmitting sensor which detects a light blocking state of the first carrier tape such that the
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`component supply unit further includes a computer which computes a light blocking length in a
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`case in which the light blocking state is detected by the sensor, and wherein the joining
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`determination unit determines that the joining is present in a case in which the light blocking
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`length exceeds a threshold as the non—contact sensor type to be used in JP 2012—2104635 A.
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`As to claim 12, rearrangement of parts and changes and size and position is obvious. See
`
`MPEP 2144.04. Therefore, it would have been obvious to one of ordinary skill in the art at the
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`time of the filing of the invention for the joining is transferred using a reverse rotation mode to
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`

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`Application/Control Number: 15/204,016
`Art Unit: 1745
`
`Page 9
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`an upstream side of an insertion port of the component supply unit.as an obvious rearrangement
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`of parts and changes and size and position.
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`As to claim 13, rearrangement of parts and changes and size and position is obvious. See
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`MPEP 2144.04. Therefore, it would have been obvious to one of ordinary skill in the art at the
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`time of the filing of the invention for wherein the joining is transferred using a forward rotation
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`mode to a position in front of the component exposing unit in the case in which the joining
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`determination unit determines that the joining is present.as an obvious rearrangement of parts
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`and changes and size and position.
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`As to claim 14, rearrangement of parts and changes and size and position is obvious. See
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`MPEP 2144.04. Therefore, it would have been obvious to one of ordinary skill in the art at the
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`time of the filing of the invention for wherein forward transfer of the first carrier tape is inhibited
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`in the case in which the joining is determined to be present as an obvious rearrangement of parts
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`and changes and size and position.
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`As to claim 15, rearrangement of parts and changes and size and position is obvious. See
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`MPEP 2144.04. Therefore, it would have been obvious to one of ordinary skill in the art at the
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`time of the filing of the invention for wherein transfer of the first carrier tape is restricted such
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`that the joining is not transferred to the component exposing unit in the case in which the joining
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`is determined to be present as an obvious rearrangement of parts and changes and size and
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`position.
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`As to claim 16, rearrangement of parts and changes and size and position is obvious. See
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`MPEP 2144.04. Therefore, it would have been obvious to one of ordinary skill in the art at the
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`time of the filing of the invention for wherein the joining is transferred using a reverse rotation
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`mode to an upstream side of an insertion port of the component supply unit in the case in which
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`

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`Application/Control Number: 15/204,016
`Art Unit: 1745
`
`Page 10
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`the joining is determined to be present as an obvious rearrangement of parts and changes and size
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`and position.
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`As to claim 17, rearrangement of parts and changes and size and position is obvious. See
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`MPEP 2144.04. Therefore, it would have been obvious to one of ordinary skill in the art at the
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`time of the filing of the invention for wherein the joining is transferred using a forward rotation
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`mode to a position in front of the component exposing unit in the case in which the joining is
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`determined to be present as an obvious rearrangement of parts and changes and size and position.
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`Allowable Subject Matter
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`14.
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`Claim 3 is objected to as being dependent upon a rejected base claim, but would be
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`allowable if rewritten in independent form including all of the limitations of the base claim and
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`any intervening claims.
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`15.
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`The following is a statement of reasons for the indication of allowable subject matter:
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`Applicant’s arguments and remarks with respect to claim 3 are persuasive to overcome the prior
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`art of record in the prior action.
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`Conclusion
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`16.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(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
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`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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`

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`Application/Control Number: 15/204,016
`Art Unit: 1745
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`Page 11
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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 1.136(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 mailing
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`date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to George Koch whose telephone number is (571)272—1230 (TDD
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`only). If the applicant cannot make a direct TDD—to—TDD call, the applicant can communicate by
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`calling the Federal Relay Service at 1—866—377—8642 and giving the operator the above TDD
`
`number. The examiner can also be reached by E—mail at george.koch@uspto.gov if the applicant
`
`grants written authorization for e—mails. Authorization can be granted by filling out the USPTO
`
`Automated Interview Request (AIR) Form which is available at:
`
`http://www.uspto.gov/patent/uspto—automated—interview—request—air—form.html
`
`The examiner can normally be reached on M—F 10—6.
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`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
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`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
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`supervisor, Philip Tucker can be reached on (571) 272—1095. 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: 15/204,016
`Art Unit: 1745
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`Page 12
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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
`
`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/GEORGE R KOCH/
`
`Primary Examiner, Art Unit 1745
`
`GRK
`
`