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
`
`15/489,956
`
`04/18/2017
`
`Hirokazu TAKEHARA
`
`PIPMM-57389
`
`2256
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`“”6””
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`FARRIEK AMELIA FAYE
`
`3623
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/16/2019
`
`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)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/489,956
`Examiner
`AMELIA F FARRIER
`
`Applicant(s)
`TAKEHARA et al.
`Art Unit
`AIA (FITF) Status
`3623
`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 18 April 2017.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1—10 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. 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
`
`http://www.uspto.gov/patents/init events/pph/index.jsp 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
`
`is/are: a)D accepted or b)l:] 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). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)D All
`
`b)I:I Some**
`
`0). None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`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-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190513
`
`

`

`Application/Control Number: 15/489,956
`Art Unit: 3623
`
`Page 2
`
`DETAILED ACTION
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`Notice ofPre-AIA 0r AIA Status
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`1.
`
`This is a non—final office action on the merits. Claims 1—10 filed on 04/ 18/2017 are
`
`pending. The present application, filed on or after March 16, 2013, is being examined under the
`
`first inventor to file provisions of the AIA.
`
`Priority
`
`1.
`
`Applicant is claiming Foreign priority to Foreign Application JAPAN 2016—087716 filed
`
`on 04/26/2016.
`
`2.
`
`Acknowledgment is made of applicant's claim for foreign priority based on an application
`
`filed in Japan on 04/26/2016. It is noted, however, that applicant has not filed a certified copy of
`
`the JAPAN 2016—087716 application as required by 37 CFR 1.55.
`
`3.
`
`Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)—
`
`(d) prior to declaration of an interference, a certified English translation of the foreign
`
`application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
`
`Failure to provide a certified translation may result in no benefit being accorded for the
`
`non—English application.
`
`Claim Objections
`
`1.
`
`Claim 4 is objected to because of the following informalities: Claim recites, “frequency
`
`indicating that the number of occurrences of the second event”. This limitation is confusing and
`
`is not clear. Examiner is interpreting this Claim to recite ——second occurrence frequency
`
`indicating the number of occurrences of the second event—— instead, based on all of the apparatus
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`Claims and method Claims being parallel.
`
`

`

`Application/Control Number: 15/489,956
`Art Unit: 3623
`
`Appropriate correction is required.
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`Page 3
`
`Double Patenting
`
`2.
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`
`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
`
`harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where
`
`the conflicting claims are not identical, but at least one examined application claim is not
`
`patentably distinct from the reference claim(s) because the examined application claim is either
`
`anticipated by, or would have been obvious over, the reference claim(s). See, e. g., In re Berg,
`
`140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d
`
`2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
`
`Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may
`
`be used to overcome an actual or provisional rejection based on nonstatutory double patenting
`
`provided the reference application or patent either is shown to be commonly owned with the
`
`examined application, or claims an invention made as a result of activities undertaken within the
`
`scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination
`
`under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP
`
`§§ 706.02(l)(1) — 706.02(l)(3) for applications not subject to examination under the first inventor
`
`to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
`
`1.32103).
`
`

`

`Application/Control Number: 15/489,956
`Art Unit: 3623
`
`Page 4
`
`The USPTO Internet website contains terminal disclaimer forms which may be used.
`
`Please visit www.uspto.gov/patent/patents—forms. The filing date of the application in which the
`
`form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or
`
`PTO/AIA/26) should be used. A web—based eTerminal Disclaimer may be filled out completely
`
`online using web—screens. An eTerminal Disclaimer that meets all requirements is auto—
`
`processed and approved immediately upon submission. For more information about eTerminal
`
`Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD—info—I.j sp.
`
`3.
`
`Claims 1-10 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over Claims 1, 4, 8—1 1, 14, an 18—20 of U.S. Patent Publication No. US
`
`2017/0308963 Al. Although the claims at issue are not identical, they are not patentably distinct
`
`from each other because the entirety of the Claimed invention of the Instant Application is
`
`encompassed in the Claims of U.S. Patent Publication No. US 2017/0308963 Al. They are not
`
`patentably distinct from each other because the Claims reciter the same inventive concept with
`
`the same features being used in the same field of endeavor.
`
`Claim 1 of the Instant Application is compared to Claim 1 of U.S. Patent Publication No.
`
`US 2017/0308963 A1.
`
`Instant Application: 15/489,956, Regarding
`Claim 1
`
`U.S. Patent Publication No. US
`2017/0308963 A1, Regarding Claim 1
`
`An apparatus for estimating a production
`
`A management apparatus that optimizes
`
`capacity of a component mounting line for
`
`assignment of an operator executing a work
`
`producing assembly boards, the component
`
`for producing assembly boards in a first
`
`mounting line including a plurality of
`
`component mounting line that includes a
`
`mounting—related devices including a
`
`component—mounting—relevant devices
`
`plurality of first component—mounting—related
`
`coupled to one another placed on a floor, the
`
`devices coupled to one another and placed on
`
`plurality of component—mounting—relevant
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`a floor, the plurality of first component—
`
`

`

`Application/Control Number: 15/489,956
`Art Unit: 3623
`
`Page 5
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`devices including a component mounter, the
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`component mounter, the management
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`apparatus comprising:
`
`apparatus comprising:
`
`a memory that stores floor—disposition
`
`a memory that stores floor—disposition
`
`information, production—lot information, and
`
`information relating to disposition of the
`
`event information, the floor—disposition
`
`plurality of devices on the floor, production—
`
`information relating to a disposition of the
`
`lot information relating to a time necessary to
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`component mounting line on the floor, the
`
`produce the assembly boards in the first
`
`production—lot information relating to a time
`
`component mounting line, event information
`
`necessary for the plurality of component—
`
`relating to a first event indicating that the
`
`mounting—relevant devices to produce the
`
`work of the operator is necessary for the
`
`assembly boards, the event information
`
`plurality of first component—mounting—related
`
`relating to a first event indicating that a work
`
`devices and a first occurrence frequency
`
`of an operator is necessary for the plurality of
`
`indicating the number of occurrences of the
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`component—mounting—relevant devices and an
`
`first event,
`
`occurrence frequency indicating the number
`
`of occurrences of the first event;
`
`
`
`an input unit that receives operator
`
`A memory that stores. . .operator information
`
`information and production—plan information,
`
`relating to a plurality of operators, and
`
`the operator information relating to the
`
`production—plan information relating to a
`
`operator, the production—plan information
`
`production plan for producing the assembly
`
`relating to a production plan for producing the
`
`boards scheduled in the first component
`
`assembly boards scheduled in the component
`
`mounting line;
`
`mounting line; and
`
`a production—capacity estimator that
`
`a production—capacity estimator that
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`estimates, based on the floor—disposition
`
`estimates, based on at least one of the floor—
`
`information, the production—lot information,
`
`disposition information, the production—lot
`
`the event information, the operator
`
`information, the event information, the
`
`information, and the production—plan
`
`operator information, and the production—plan
`
`information, a production capacity of the
`
`information, a production capacity of the first
`
`component mounting line for producing the
`
`component mounting line for producing the
`
`

`

`Application/Control Number: 15/489,956
`Art Unit: 3623
`
`Page 6
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`assembly boards according to the production
`
`assembly boards according to the production
`
`plan
`
`plan.
`
`Claims 1—10 of the Instant Application are substantially similar to Claims 1, 4, 8—11, 14,
`
`an 18—20 of US. Patent Publication No. US 2017/0308963 Al.
`
`The Independent Claims recite substantially the same computing system. Therefore it
`
`would have been obvious to one of ordinary skill in the art to have modified the Claims of the
`
`cited US Patent Publication and accordingly the Independent Claim of the Instant Application
`
`are obvious variants of those recited in the US Patent Publication.
`
`The respective corresponding Dependent Claims recite substantially similar limitations
`
`and are therefore also obvious between the US Patent Publication and the Instant Application.
`
`4.
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`Claim Interpretation
`
`(f) Element in Claim for a Combination. 7 An element in a claim for a combination may be expressed
`as a means or step for performing a specified function without the recital of structure, material, or acts
`in support thereof, and such claim shall be construed to cover the corresponding structure, material, or
`acts described in the specification and equivalents thereof.
`
`The following is a quotation of pre—AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing a
`specified function without the recital of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material, or acts described in the specification
`and equivalents thereof.
`
`5.
`
`The claims in this application are given their broadest reasonable interpretation using the
`
`plain meaning of the claim language in light of the specification as it would be understood by
`
`one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also
`
`

`

`Application/Control Number: 15/489,956
`Art Unit: 3623
`
`Page 7
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`commonly referred to as a claim limitation) is limited by the description in the specification
`
`when 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is invoked.
`
`As explained in MPEP § 2181, subsection 1, claim limitations that meet the following
`
`three—prong test will be interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
`
`paragraph:
`
`(A)
`
`the claim limitation uses the term “means” or “step” or a term used as a substitute for
`
`“means” that is a generic placeholder (also called a nonce term or a non—structural term
`
`haVing no specific structural meaning) for performing the claimed function;
`
`(B)
`
`the term “means” or “step” or the generic placeholder is modified by functional language,
`
`typically, but not always linked by the transition word “for” (e.g., “means for”) or another
`
`linking word or phrase, such as “configured to” or “so that”; and
`
`(C)
`
`the term “means” or “step” or the generic placeholder is not modified by sufficient
`
`structure, material, or acts for performing the claimed function.
`
`Use of the word “means” (or “step”) in a claim with functional language creates a
`
`rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C.
`
`112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is
`
`interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is rebutted when
`
`the claim limitation recites sufficient structure, material, or acts to entirely perform the recited
`
`function.
`
`Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that
`
`the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre—AIA 35
`
`U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under
`
`35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim
`
`

`

`Application/Control Number: 15/489,956
`Art Unit: 3623
`
`Page 8
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`limitation recites function without reciting sufficient structure, material or acts to entirely
`
`perform the recited function.
`
`Claim limitations in this application that use the word “means” (or “step”) are being
`
`interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, except as
`
`otherwise indicated in an Office action. Conversely, claim limitations in this application that do
`
`not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre—
`
`AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
`
`6.
`
`This application includes one or more claim limitations that do not use the word “means,”
`
`but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
`
`paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with
`
`functional language without reciting sufficient structure to perform the recited function and the
`
`generic placeholder is not preceded by a structural modifier.
`
`Regarding Claims 1-5, the limitations:
`
`Claims 1—5 limitations that have the combination of non—structural terms (in bold) and
`
`functional language (un—bolded):
`
`a) An input unit that receives
`
`19) A production-capacity estimator that estimates
`
`For Claims 1—5, the Specification describes:
`
`In FIG. 3, management computer 3 includes management controller 30, management
`memory 31, production—capacity estimator 32, judging unit 33, determiner 34, production—
`performance information acquirer 35, information generator 36, input unit 37, display 38, and
`communicator 39. Input unit 37 is an input device such as a keyboard, a touch panel, or a
`mouse, and is used when the operator inputs an operation command or data. Display 38 is a
`display device such as a liquid crystal panel, and displays various information items in
`addition to various screens such as an operation screen for performing an operation using
`input unit 37. Communicator 39 is a communication interface, and transmits and receives
`signals or data to and from component—mounting—related devices of component mounting
`
`

`

`Application/Control Number: 15/489,956
`Art Unit: 3623
`
`Page 9
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`lines L1 to L3 via communication network 2. (Instant Specification: Page 12, 21—27; Page 13,
`lines 1—5).
`
`According to the Specification, describes the proper structure for the input unit. For the purpose
`
`of this examination, the input unit is interpreted as a keyboard, mouse, or a touch panel.
`
`According to the Specification, the generic place holder of the production—capacity estimator
`
`could be by hardware, software, firmware and/or any combination of hardware, software and/or
`
`firmware. The Specification does not specifically point out the structure for the production—
`
`capacity estimator. The generic place holders are not modified by significant structure, material,
`
`or acts of performing the claimed function. Therefore the limitations of Claims 1—5 listed above
`
`have invoked 112(f).
`
`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or
`
`pre—AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the
`
`corresponding structure described in the specification as performing the claimed function, and
`
`equivalents thereof.
`
`If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C.
`
`112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, applicant may:
`
`(1) amend the claim
`
`limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112,
`
`sixth paragraph (e. g., by reciting sufficient structure to perform the claimed function); or (2)
`
`present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform
`
`the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre—AIA
`
`35 U.S.C. 112, sixth paragraph.
`
`

`

`Application/Control Number: 15/489,956
`Art Unit: 3623
`
`Page 10
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`Claim Rejections - 35 US C § 112
`
`7.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.7The 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.
`
`8.
`
`Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA), 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.
`
`9.
`
`Claim limitations “a production—capacity estimator that estimates” invoke 35 U.S.C.
`
`112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to
`
`disclose the corresponding structure, material, or acts for performing the entire claimed function
`
`and to clearly link the structure, material, or acts to the function. The generic place holders could
`
`be by hardware, software, firmware and/or any combination of hardware, software and/or
`
`firmware. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre—AIA 35
`
`U.S.C. 112, second paragraph. For the purposes of examination, Examiner interprets the
`
`limitation to mean a computer that can perform the function.
`
`Applicant may:
`
`(a)
`
`Amend the claim so that the claim limitation will no longer be interpreted as a limitation
`
`under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph;
`
`(b)
`
`Amend the written description of the specification such that it expressly recites what
`
`structure, material, or acts perform the entire claimed function, without introducing any
`
`new matter (35 U.S.C. l32(a)); or
`
`

`

`Application/Control Number: 15/489,956
`Art Unit: 3623
`
`Page ll
`
`(c)
`
`Amend the written description of the specification such that it clearly links the structure,
`
`material, or acts disclosed therein to the function recited in the claim, without introducing
`
`any new matter (35 U.S.C. l32(a)).
`
`If applicant is of the opinion that the written description of the specification already
`
`implicitly or inherently discloses the corresponding structure, material, or acts and clearly links
`
`them to the function so that one of ordinary skill in the art would recognize what structure,
`
`material, or acts perform the claimed function, applicant should clarify the record by either:
`
`(a)
`
`Amending the written description of the specification such that it expressly recites the
`
`corresponding structure, material, or acts for performing the claimed function and clearly
`
`links or associates the structure, material, or acts to the claimed function, without
`
`introducing any new matter (35 U.S.C. l32(a)); or
`
`(b)
`
`Stating on the record what the corresponding structure, material, or acts, which are
`
`implicitly or inherently set forth in the written description of the specification, perform
`
`the claimed function. For more information, see 37 CFR l.75(d) and MPEP §§ 608.0l(o)
`
`and 2181.
`
`Claim Rejections - 35 US C § 10]
`
`Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed
`
`to non—statutory subject matter. Claims 1—10 are directed to a judicial exception (i.e., a law of
`
`nature, natural phenomenon, or abstract idea) without significantly more.
`
`When considering subject matter eligibility under 35 U.S.C. 101, it must be determined
`
`whether the claim is directed to one of the four statutory categories of invention, i.e., process,
`
`machine, manufacture, or composition of matter. If the claim does fall within one of the statutory
`
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`Application/Control Number: 15/489,956
`Art Unit: 3623
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`Page 12
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`categories, it must then be determined whether the claim is directed to a judicial exception (i.e.,
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`law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be
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`determined whether the claim is a patent—eligible application of the exception. If an abstract idea
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`is present in the claim, any element or combination of elements in the claim must be sufficient to
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`ensure that the claim amounts to significantly more than the abstract idea. Alice Corporation Pty.
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`Ltd. V. CLS Bank International, et al., 573 US. _ (2014).
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`First, it is determined whether the Claims are directed to a statutory category of
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`invention. See MPEP 2106.03(II). Here, Claims 1—5 are directed to an apparatus and Claims 6—10
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`are directed to a method. Therefore, the Claims are directed to statutory subject matter under
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`Step 1 of the Alice/Mayo test.
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`2A PRONG ONE:
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`The claims are then analyzed to determine if the claims are directed to a judicial
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`exception. MPEP §2106.04(a). In determining, whether the claims are directed to a judicial
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`exception, the claims are analyzed to evaluate whether the claims recite a judicial exception
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`(Prong One of Step 2A), and whether the claims recite additional elements that integrate the
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`judicial exception into a practical application (Prong Two of Step 2A). See 2019 Revised Patent
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`Subject Matter Eligibility Guidance (“PEG” 2019 Revised Patent Subject Matter Eligibility
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`Guidance, 84 Fed. Reg. 50—57 (Jan. 7, 2019)).
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`Regarding Independent Claims 1 and 6, the limitations of Claim 1 that recite an
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`abstract idea are identified in bold below:
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`0 An apparatus for estimating a production capacity of a component mounting line for
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`producing assembly boards, the component mounting line including a plurality of
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`component—mounting—relevant devices coupled to one another placed on a floor, the
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`Application/Control Number: 15/489,956
`Art Unit: 3623
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`Page 13
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`plurality of component—mounting—relevant devices including a component mounter, the
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`apparatus comprising:
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`0
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`a memory that stores floor—disposition information, production—lot information, and event
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`information, the floor—disposition information relating to a disposition of the component
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`mounting line on the floor, the production—lot information relating to a time necessary for
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`the plurality of component—mounting—relevant devices to produce the assembly boards,
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`the event information relating to a first event indicating that a work of an operator is
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`necessary for the plurality of component—mounting—relevant devices and an occurrence
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`frequency indicating the number of occurrences of the first event;
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`0
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`an input unit that receives operator information and production—plan information, the
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`operator information relating to the operator, the production-plan information
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`relating to a production plan for producing the assembly boards scheduled in the
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`component mounting line; and
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`o
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`a production-capacity estimator that estimates, based on the floor-disposition
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`information, the production-lot information, the event information, the operator
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`information, and the production-plan information, a production capacity of the
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`component mounting line for producing the assembly boards according to the
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`production plan.
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`Accordingly, the Claim recites to the abstract idea of production capacity estimation. The above
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`limitation in bold fall within the Certain Methods of Organizing Human Activity grouping of
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`abstract ideas, enumerated in the PEG, in that they recite managing personal behavior or
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`relationships or interactions between people (including social activities, teaching, and following
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`Application/Control Number: 15/489,956
`Art Unit: 3623
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`Page 14
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`rules or instructions). Claim 6 recites the same abstract idea limitations as Claim 1. Accordingly,
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`under Prong 1 of Step 2A of the Alice/Mayo test, Claims 1 and 6 recite an abstract idea.
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`2A PRONG TWO:
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`Under Prong Two of Step 2A of the Alice/Mayo test, the examiner acknowledges that
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`Claims 1 and 6 recite additional elements yet these additional elements do not integrate the
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`abstract idea into a practical application. In order for the judicial exception to be “integrated into
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`a practical application”, an additional element or a combination of additional elements in the
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`claim “will apply, rely on, or use the judicial exception in a manner that imposes a meaningful
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`limit on the judicial exception, such that the claim is more than a drafting effort designed to
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`monopolize the judicial exception.” PEG, 84 Fed. Reg. 54 (Jan. 7, 2019). The courts have
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`identified examples in which a judicial exception has not been integrated into a practical
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`application when “and additional element does no more than generally link the use of a judicial
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`exception to a particular technological environment or field of use.” PEG, 84 Fed. Reg. 55 (Jan.
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`7, 2019); MPEP § 2106.05(h).
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`Here, although additional elements are recited (such as an apparatus, a memory,
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`component mounter, component—mounting—related devices, a production—capacity estimator, an
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`input unit) Claims 1 and 6 merely invoke such additional elements as a tool to perform the
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`abstract idea. Implementation of an abstract idea on a generic computer is not indicative of
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`integration into a practical application. Similar to the limitations of Alice Corp. Pty. Ltd. V. CLS
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`Bank Int’l, Claims 1 and 6 merely recite a commonplace business method (i.e., production
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`capacity estimation) being applied on a general purpose computer. MPEP § 2106.05(f).
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`Furthermore, Claims 1 and 6 generally link the use of the abstract idea to a particular
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`technical environment or field of use. The courts have identified various examples of limitations
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`Application/Control Number: 15/489,956
`Art Unit: 3623
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`Page 15
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`as merely indicating a field of use/technological environment in which to apply the abstract idea,
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`such as specifying that the abstract idea of monitoring audit log data relates to transactions or
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`activities that are executed in a computer environment, because this requirement merely limits
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`the claims to the computer field, i.e., to execution on a generic compute. See FairWarning v.
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`Iatric Systems. Likewise, Claim 1 implying that the management of predetermined work is
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`executed in a computer environment merely indicates a field of use in which to apply the abstract
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`idea because this requirement merely limits the claim to the computer field, i.e., to execution on
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`a generic computer. As such, under Prong Two of Step 2A of the Alice/Mayo test, when
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`considered both individually and a whole, the limitations of Claim 1 is not indicative of
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`integration into a practical application.
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`Since Claims 1 and 6 recite an abstract idea and fail to integrate the abstract idea into a
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`practical application, Claims 1 and 6 are “directed to” an abstract idea.
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`STEP 2B:
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`Next, under Step 2B, the claims are analyzed to determine if there are additional claim
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`limitations that individually, or as an ordered combination, ensure that the claim amounts to
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`significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include
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`additional elements that are sufficient to amount to significantly more than the judicial exception
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`for at least the following reasons.
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`Claims 1 and 6, the recitation of various additional elements within the claims are
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`acknowledged. As discussed with respect to Prong Two of Step 2A, although additional
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`elements are recited, Claims 1 and 6 merely invoke such additional elements as a tool to perform
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`the abstract idea. See MPEP § 2106.05(f).
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`Application/Control Number: 15/489,956
`Art Unit: 3623
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`Page 16
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`Furthermore, as discussed above with respect to Prong Two of Step 2A, Claims 1 and 6
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`merely recite additional elements in order to further define the field of use of the abstract idea,
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`therein attempting to generally link the use of the abstract idea to a particular technological
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`environment. See Ultramercial, Inc. V. Hulu, LLC, 772 F.3d 709, 112 USPQ2d 1750 (Fed. Cir.
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`2014); Bilski V. Kappos, 561 U.S. 593, 95 USPQ2d 1001 (2010); MPEP 2106.05(h)). Similar to
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`FairWarning V. Iatric Systems, Claims 1 and 6 implying that the abstract idea of production
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`capacity estimation is executed in a computer environment merely indicates a field of use in
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`which to apply the abstract idea becaus