www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`15/364,508
`
`11/30/2016
`
`NObutO YASUHIRA
`
`PIPMM-56876
`
`9499
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`”W”
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`CAZAN LIVIUS RADU
`
`3729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/1 1/2019
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`
`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`15/364,508
`Examiner
`LIVIUS R CAZAN
`
`Applicant(s)
`YASUHIRA et al.
`Art Unit
`AIA (FITF) Status
`3729
`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 9/6/2019.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) D This action is non-final.
`
`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.
`
`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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above Claim(s) 9i is/are withdrawn from consideration.
`
`
`
`E] Claim(ss)
`
`is/are allowed.
`
`Claim(ss) 1 —4 and 6—8 is/are rejected.
`
`Claim(ss) 5—and 16 is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[j Claim(s
`* If any claims have been determined atowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`httpfiwww.”smogovmatentszinit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
`
`Application Papers
`
`10)D The specification is objected to by the Examiner.
`
`is/are: a)C] accepted or b)D objected to by the Examiner.
`11)[:] The drawing(s) filed on
`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)[] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)i:I All
`
`b)D Some**
`
`c)D None of the:
`
`1.|:] Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3B Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) [3 Notice of References Cited (PTO-892)
`
`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20191202
`
`

`

`Application/Control Number: 15/364,508
`Art Unit: 3729
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined under the first
`
`inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 112
`
`2.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly pointing out
`and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming
`the subject matter which the applicant regards as his invention.
`
`3.
`
`Claim 16 is rejected under 35 U.S.C. 112jbj or 35 U.S.C. 112 jpre-AIAj, second paragraph, as being
`
`indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or
`
`a joint inventor, or for pre-AIA the applicant regards as the invention.
`
`4.
`
`In claim 16, the phrase ”is to be replenished is an (N+1)-th is an excessive” is unclear. It is believed
`
`it may have bene intended to read --is to be replenished is an excessive--.
`
`Claim Rejections - 35 USC § 102/103
`
`5.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
`
`for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(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.
`
`6.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
`
`set forth in this Office action:
`
`

`

`Application/Control Number: 15/364,508
`Art Unit: 3729
`
`Page 3
`
`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.
`
`Claim(s)1-4 and 6-8 isZare reiected under 35 U.S.C. 102(a)(1) as anticipated by or, in the
`
`alternative, under 35 U.S.C. 103 as obvious over Sumi (U52013[0028701A1).
`
`8.
`
`Sumi reads on the claims as follows:
`
`Claim 1. A component supply method in a component mounting system (1) which
`
`includes a component supply unit (one of feeders 4) being capable of supplying up to one carrier
`
`tape (7) for storing a component, and automatically transporting an inserted carrier tape, and a
`
`component mounting apparatus (8, 9, 11) which mounts the component supplied from the
`
`component supply unit on a substrate (10), the method comprising:
`
`notifying an operator (see ”component depletion alarm” in para. [0038]) of a case where
`
`a first carrier tape with which the component supply unit is to be replenished is a 2nd (i.e. next);
`
`and
`
`detecting a replenishing operation (see para. [0040], regarding detecting the splice) of
`
`carrier tape with respect to the component supply unit.
`
`Claim 2. The component supply method of Claim 1, wherein it is determined that the first
`
`carrier tape is the (N + 1)-th based on a component ID of the first carrier tape in which the
`
`replenishing operation of carrier tape is detected. Specifically, the reel ID (yyyy) of the reel holding
`
`the subsequent carrier tape 7 is stored in 31b, whereas the reel ID of the in-use reel is stored in
`
`31a (see Fig. 5). Thus, it can be determined that the next (i.e. (N+1)th) carrier tape reel is yyyy in
`
`this case, because the value yyyy is stored in 31b.
`
`Claim 3. The component supply method of Claim 1, wherein it is determined that the first
`
`carrier tape in which the replenishing operation of carrier tape is detected is the (N + 1)-th based
`
`

`

`Application/Control Number: 15/364,508
`Art Unit: 3729
`
`Page 4
`
`on the number of component IDs included in component information of a carrier tape which is in
`
`a state of being supplied to the component supply unit in which the replenishing operation of
`
`carrier tape is detected. Specifically, the reel ID of the reel holding the subsequent carrier tape 7
`
`is stored in 31b, whereas the reel ID of the in-use reel is stored in 31a (see Fig. 5). Thus, it can be
`
`determined that the next (i.e. (N+1)th) reel is yyyy in this case, because the value yyyy is stored in
`
`31b.
`
`Claim 4. The component supply method of Claim 1, wherein in a case where the first
`
`carrier tape in which the replenishing operation of carrier tape is detected is determined to be
`
`the (N + 1)-th, an operation of updating component information of a carrier tape which is in a
`
`state of being supplied based on the component ID of the first carrier tape in which the
`
`replenishing operation of carrier tape is detected, is not allowed. Specifically, the component
`
`information in section 31a is not set to reel ID yyyy as long as the in-use reel still has components.
`
`Claim 6. The component supply method of Claim 1, wherein the component supply unit
`
`includes a sensor (25) which detects the carrier tape inserted into the component supply unit, and
`
`wherein the replenishing operation of carrier tape is detected based on a detection result of the
`
`sensor (see last four lines of para. [0031] and para. [0032]).
`
`Claim 7. The component supply method of Claim 1, wherein component information of a
`
`carrier tape (7) which is in a state of being supplied to the component supply unit is stored in a
`
`supply unit storage (31b) provided in the component supply unit (31 is in 24, which is in 4a; see
`
`Fig. 4 and para. [0039] and [0021]).
`
`Claim 8. The component supply method of Claim 1, wherein component information of a
`
`carrier tape (7) in a state of being supplied to the component supply unit is stored in a system
`
`storage (31a) provided in the component mounting system (1).
`
`

`

`Application/Control Number: 15/364,508
`Art Unit: 3729
`
`Page 5
`
`9.
`
`The apparatus determines when the reel 6 currently in use is about to run out of components,
`
`and a component depletion alarm is issued. This is equated to a notification that a first next component
`
`carrier tape (Le. a second carrier tape) must be spliced to the in-use carrier tape. The claim limitations are
`
`therefore deemed met. Alternatively, it is deemed it would have been obvious to one of ordinary skill in
`
`the art to issue the notification as ”N+1 carrier tape must be provided” as an alternative working to
`
`notifying the operator the current carrier tape is about to run out of components.
`
`Allowable Subject Matter
`
`10.
`
`Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if
`
`rewritten in independent form including all ofthe limitations ofthe base claim and any intervening claims.
`
`11.
`
`Claim 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or
`
`35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action and to include all of the limitations
`
`of the base claim and any intervening claims.
`
`Response to Arguments
`
`12.
`
`Applicant's arguments filed 9/6/2019 have been fully considered but they are not persuasive.
`
`Applicant argues that in the claimed invention ”the notification is based on the number of carrier tapes
`
`to be inserted,” whereas ”Sumi (para [0038]) describes a notification based on the number of components
`
`remaining.”
`
`13.
`
`The examiner respectfully disagrees. In Sumi, when the number of components has decreased to
`
`the predetermined value Nm, a component depletion alarm is issued. However, at a logical level, the
`
`alarm prompts the operator to provide a new carrier tape. According to paragraph [0039], ”the
`
`component operator received the alarm performs splicing operation for splicing the carrier tape 7 already
`
`loaded to a newly supplied carrier tape 7.” In other words, the operator’s response to receiving the alarm
`
`is supplying the next tape, i.e. the meaning of the alarm is understood by the operator as ”next carrier
`
`

`

`Application/Control Number: 15/364,508
`Art Unit: 3729
`
`Page 6
`
`tape must be provided”. The examiner agrees that there are differences between the disclosed invention
`
`and the prior art, but the current claim language merely requires notifying the operator that the
`
`component supply unit is to be replenished with the next carrier tape, which is exactly the meaning of the
`
`alarm in Sumi, as discussed above.
`
`Conclusion
`
`14.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth
`
`in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE 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 the end of the THREE-MONTH shortened
`
`statutory period, then the shortened statutory period will expire on the date the advisory action is mailed,
`
`and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory
`
`action.
`
`In no event, however, will the statutory period for reply expire later than SIX MONTHS from the
`
`mailing date of this final action.
`
`15.
`
`Any inquiry concerning this communication or earlier communications from the examiner should
`
`be directed to LIVIUS R CAZAN whose telephone number is (571)272-8032. The examiner can normally
`
`be reached on Monday - Friday noon-8:30pm.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO
`
`supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the
`
`USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter
`
`Vo can be reached on 571-272-4690. The fax phone number for the organization where this application
`
`or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 15/364,508
`Art Unit: 3729
`
`Page 7
`
`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 like assistance from a USPTO Customer Service Representative or
`
`access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/LIVIUS R. CAZAN/
`
`Primary Examiner, Art Unit 3729
`
`