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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
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`15/408,676
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`01/18/2017
`
`TETSUSHI OOHORI
`
`PIPMM-57126
`
`7379
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`759°
`52°“
`PEARNE & GORDON LLP
`
`“W”
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`ARBES~ CARL]
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`3729
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`11/21/2019
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
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`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
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`PTOL-90A (Rev. 04/07)
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`

`

`017/09 A0170” Summary
`
`Application No.
`15/408,676
`Examiner
`CARL J ARBES
`
`Applicant(s)
`OOHORI et al.
`Art Unit
`3729
`
`AIA (FITF) 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
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`1). Responsive to communication(s) filed on 11 October 2019.
`El 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)
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`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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`4—6 and 9—16 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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`
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`[:1 Claim(ss)
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`is/are allowed.
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`Claim(ss) 4—6 and 9— 16 is/are rejected.
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`D Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. 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.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
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`10)|:l The specification is objected to by the Examiner.
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`is/are: a)[] accepted or b)l:] 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).
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`Priority under 35 U.S.C. § 119
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`12)D 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)I:l All
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`b)|:] Some**
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`c)l:i 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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`3D 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)
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`Notice of References Cited (PTO-892)
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`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
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`3) E] 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 20191021
`
`

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`Application/Control Number: 15/408,676
`Art Unit: 3729
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`Page 2
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`Notice of Pre-AIA or AIA Status
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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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`An Office Action on the merits of Claims 4-16 follows.
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`The following is a quotation of 35 U.S.C. 112(f):
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`(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.
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`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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`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.
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`This application includes claim limitations that do not use the word “means,” but
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`are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
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`sixth paragraph, because the claim limitation(s) uses a generic placeholder that is
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`coupled with functional language without reciting sufficient structure to perform the
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`recited function and the generic placeholder is not preceded by a structural modifier.
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`Such claim limitations are: “a remote operation right” (in Claims 4, 5, 8-10 and 12-14)
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`and “operation right information” (Cf. Claim 9) “releasing the remote operation right” in
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`Claim 5 and possibly other words/phrases ” in other claims.
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`Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or
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`pre-AIA 35 U.S.C. 112, sixth paragraph, they is/are being interpreted to cover the
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`corresponding structure described in the specification as performing the claimed
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`function, and equivalents thereof.
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`

`

`Application/Control Number: 15/408,676
`Art Unit: 3729
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`Page 3
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`If applicant does not intend to have this/these limitation(s) interpreted under 35
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`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
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`(1) amend the
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`claim limitations to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed
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`function); or (2) present a sufficient showing that the claim limitations recite sufficient
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`structure to perform the claimed function so as to avoid it/them being interpreted under
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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`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.
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`Claims 9-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention. In Claim 9 applicant writes a method for managing a
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`processing device in a computer mounting system ...... at least one or a remote
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`computer and a processing device... (unclear, vague and indefinite) is connected to a
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`remote computer. What does this language mean? As further applied to Claim 10
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`does this language | Claim 10 mean that a worker’s lP credentials are fully
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`authenticated? What does applicant intend? The language in (new) Claims 11-13 also
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`need to be more carefully explained.
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`Is the difference between Claim 11 and Claim 10
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`merely that a worker (in Claim 10) can work remotely and a worker (in Claim 11) cannot
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`operate the processing device remotely? In Claim 12 it appears that applicant intends
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`that “a processing device” can be remotely operated by a worker via an “input unit”
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`(which itself is unclear vague and indefinite). As further applied to Claim 14 what does
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`

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`Application/Control Number: 15/408,676
`Art Unit: 3729
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`Page 4
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`applicant mean when applicant writes ...further comprising updating the operation to
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`prohibit remote operation when the processing device (unclear, vague and indefinite)
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`has been idle for a predetermined period of time? Does applicant mean that the
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`processing device ala a computer will time out whenever the user is not continuously
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`using the processing device (computer)? Applicant is not clear.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness 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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`Claims 4-6 and 9-16, assuming that these claims are clear, not vague and not
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`indefinite and do particularly point out and distinctly claim an invention, are further
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`rejected under 35 U.S.C. 103 as being unpatentable over lto (JP 2009064902 A);
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`hereinafter lto in view of Kodama (Japanese Pat. Doc. 2012151516 A); hereinafter
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`Kodama.
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`lto teaches a management system for mounting electronic components. A
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`component feeder managerial system operates a feeder. Packaging/mounting devices
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`are used to mount electronic component/s onto a circuit board/s. Additionally lto
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`teaches a packaging/component mounting devices’ line which includes a plurality of
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`packaging/mounting device/s (20). Additionally lto teaches computer (10) which
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`manages the mounting device/s (Cf. e.g. Fig.1 and related disclosure). Additionally lto
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`teaches a plurality of component feeders (40) which are complemental to the
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`packaging/mounting devices (20). (Cf. Fig. 3 and related disclosure). Computer (10) via
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`

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`Application/Control Number: 15/408,676
`Art Unit: 3729
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`Page 5
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`a network connects packaging/mounting device/s (20) to a component feeder (40).
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`Additionally Ito teaches that the computer (10) is provided with data which are related to
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`the electronic component (41) and data of the location of component feeder (40).
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`Kodama teaches a plurality of electrical component mounting machines (10) which
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`include independent device (130) and control devices (100) which constitute an
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`assembly line and are connected with each other by means of a communication device
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`(144). An operator of device (130) designates mounting machine (10) as a master unit.
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`Another operator of device (130) of another electrical mounting machine designates
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`another electrical mounting machine (10) as the master unit and the unit (10) which was
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`once designates as the master unit is changed to a slave unit. The master unit can now
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`obtain information from the first master unit (which is now deemed to be a slave unit)
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`and can control the slave unit.
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`It would have been obvious to combine the two teachings
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`and provide a component mounting method which processing device is connected to a
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`remote computer by means of updating the operation setting of at least one processing
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`device to allow a remote operation of at least one processing device and when a
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`request is received for an on-site operation via an input unit, updating the operation of
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`the least one processing device to prohibit remote operation of the at least one
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`processing device. The rationale for this combination is that inasmuch as Kodama
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`explicitly teaches that a master controlling unit can become a slave unit and also the
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`master/slave switching can be performed with devices which mount electrical
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`components and lto also teaches an electrical component mounting device using a
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`device control means one of ordinary skill in this art would have been able to insert the
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`device control means taught by Kodama for the device control means taught by lto.
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`

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`Application/Control Number: 15/408,676
`Art Unit: 3729
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`Page 6
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`the provide a method of mounting components onto circuit board/s by providing one or
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`more component mounting devices connected to constitute a component mounting line
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`and having a system which includes a computer which allows a component mounting
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`device to pick up and place the component onto a proper circuit board. As applied to
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`Claim 5 inasmuch as lto teaches a management system, a line of component mounters
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`and computers which are in a network and Kodama teaches that a control management
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`system wherein a master control system can be made such that the master control
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`system can be “overridden/subserviat” to a “slave” control management system and
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`thus the once “master” control system can be prohibited from an operation by the at
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`least one processing device it is held to have been obvious in view of the Ito/Kodama
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`combination to provide the mounting method in the same manner that applicant recites
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`in said Claim 5 and therefore it is held that the limitations recited in aid Claim 5 would
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`have been obvious in view of the Ito/Kodama combination. Claim 6 is also held to have
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`been obvious inasmuch as a PHOSITA having ordinary skill in this art would have been
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`able to provide a safety cover and a stop button on one or more of the processing i.e.
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`mounting machines and also an attachment and a detachment for a component supply
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`device. These features would be and are common in this art inasmuch since without
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`these features (in said Claim 6) the machines would be unsafe and probably violate
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`safety rules and regulations. Moreover these features are necessary for the component
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`mounting operation to succeed. As applied to Claim 9 inasmuch as both Ito and
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`Kodama teach that the display on the computer screen will display information to a
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`worker which will indicate whether the proper electronic component is in the given
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`feeder and if the component is not the proper component the processing device
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`

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`Application/Control Number: 15/408,676
`Art Unit: 3729
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`Page 7
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`(computer) will provide an error as to the component in the feeder the limitation recited
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`in said Claim 9 is held to have been obvious in view of Ito/Kodama combination. As
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`applied to Claims 10-14 each of these claims is common and conventional limitations
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`that are well known and are obvious to an artisan. For example (in Claim 10) a worker
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`can work in a remote location with a processing device and both lto an Kodama teach
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`this fact) When a worker is working at a remote location the worker can operate the
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`processing machine Le. a computer. This is well-known and has been done for years.
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`In Claim 11 whenever a worker is operating a processing machine on site (and not at a
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`remote site) s/he can operate the processing on-site. There is nothing new in
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`applicant’s Claim 11. That is processing devices e.g. computers can be used remotely
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`or can be used “on-site”. As applied to Claim13 whenever one is not working remotely
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`(with a computer) but is working with a computer “on-site” the remote operation is
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`exchanged for the on-site operation. (At least Kodama clearly teaches this limitation.)
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`That is when a remote operation is not taking place done or is released the other
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`controller (which is now deemed as a “master” controller is controlling the mounting
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`operation). A PHOSITA having ordinary skill in this art would understand this and would
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`have been able to perform each of Claims 10-14 given the Ito/Kodama combination.
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`As applied to Claims 15 and 16 whenever a detected error is provided (which both Ito
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`and Kodama teach) a notification is provided as to what the error is. This would be
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`provided on the computer’s monitor. The computer would also indicate if an operation
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`has succeeded or in most cases “failed”. These functions are also well-known and are
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`a part of the prior art when one is using computers to monitor and control electronic
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`components being fed to a mounting machine and using a group of processing
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`

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`Application/Control Number: 15/408,676
`Art Unit: 3729
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`Page 8
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`machines i.e. computers to monitor the component’s mountings. The limitations recited
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`by applicant in Claims 15 and 16 are held to have been obvious in view of lto/Kodama
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`combination. The skill used to perform each and every limitation in Claims 15-16 is held
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`to have been ordinary skill in this art. The limitations in said Claims 10-16 are each
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`well-known and commonly used in this art as already explained.
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`In response to applicant’s REMARKS/ARGUMENTS the examiner responds as
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`follows. During patent examination, the pending ciainis must be “given their broadest
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`reasonable interpretation consistent with the specification," The Federal Circuit’s en
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`bane decision in Phillipe v. AWH (30:73., 415 F.3d 1363, t3t6, 75 USPQEd 1321, 1326
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`(Fed. Cir. 2005) expressty recognized that the USPTO empioye the "broadest
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`reasonabie interpretation“ standard. Moreover Claims 4-16 have been held to have
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`been unclear, vague and indefinite. (Cf. rejection hereinabove). The examiner has put
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`much effort to understand applicant’s claimed invention and has concluded (and holds)
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`that what applicant has attempted to gain patent coverage is merely providing
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`computers that are integrated into a network and being used to provide data and results
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`of mounting components onto wiring boards. Specifically as an example, applicant
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`recites in Claim 10 ...that the remote operation right is a right which a worker can
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`remotely operate...
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`. This new limitation is explicitly taught by Kodama. How can this
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`claim differentiate from having a computer and a worker away from the operating floor
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`of a component mounter and allowing the worker using this remote computer to operate
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`a component mounting machine? Also in Claim 11: How can this claim differentiate from
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`having a computer adjoining an operating floor of a component mounter and allowing a
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`worker using this computer to operate the mounting machine? This same reasoning is
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`

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`Application/Control Number: 15/408,676
`Art Unit: 3729
`
`Page 9
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`also applicable to Claims 12-16. Each of the claims in applicant’s disclosure are at least
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`suggested by Ito’s and Kodama’s teaching and therefore each of the claims are properly
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`rejected.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to CARL J ARBES whose telephone number is (571 )272-
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`4563. The examiner can normally be reached on M, T, R and F from 8 to 6.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, P. D. Vo, can be reached on 5712724690. 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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`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 published
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`applications may be obtained from either Private PAIR or Public PAIR. Status
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`information for unpublished applications is available through Private PAIR only. For
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`
`Should you have questions about access to the Private PAIR system, contact the
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`
`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`
`
`/CARL J ARBES/
`
`Primary Examiner, Art Unit 3729
`
`