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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
`
`15/490,001
`
`04/18/2017
`
`YUJI NAKAMURA
`
`PIPMM-57437
`
`8765
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`03’06’2020
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`SAAB ERIN BARRY
`
`1735
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/06/2020
`
`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.
`15/490,001
`Examiner
`ERIN B SAAD
`
`Applicant(s)
`NAKAMURA, YUJI
`Art Unit
`AIA (FITF) Status
`1735
`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 12/23/2019.
`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)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`8)
`Claim(s 112Is/are rejected
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`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
`
`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)|:I The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 4/18/2017 is/are: a). accepted or b)C] 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). All
`
`b)C] Some**
`
`c)C] 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.
`
`SD 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 20200302
`
`

`

`Application/Control Number: 15/490,001
`Art Unit: 1735
`
`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 § 1 12
`
`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.
`
`Claims 1-12 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.
`
`4.
`
`Claim 1 states “wherein the timer weights a measurement for a time measured
`
`when the solder is moved on the screen mask by the squeegee or time measured when
`
`the solder does not move on the screen mask”. What is meant by weights? How does
`
`timer ‘weight’ anything? Time and weight are two different things. When googled, timer
`
`weights refers to sound. This does not work in this instance. Using weight and time
`
`together does not appear to make sense. Does the Applicant intend to say ‘measuring
`
`time’? The current specification does not give any indication as to what is meant by
`
`timer weights a measurement. The Examiner requests that the Applicant please clarify
`
`this limitation.
`
`

`

`Application/Control Number: 15/490,001
`Art Unit: 1735
`
`Page 3
`
`5.
`
`Claim 2 is indefinite because it is unclear what is meant by “wherein the weighted
`
`measurement intervai causes the timer to measure time as sherter than aetuaiiy
`
`measured time ter which the seider is met/ed en the screen mask by the squeegee”.
`
`its
`
`stated aheve, it is net understeed what is meant by ‘weightedi Furthermereg haw does
`
`a timer measure time that is shorter than time measured? The Examiner tines net
`
`understand this iimitatioh and requests that the Appiioant piease sierity.
`
`6.
`
`Ciaim 3 is indefinite because it is net understeed what is meant by “weighted
`
`measurement intervai”. As stated aheve, it is net understeod what is meant by
`
`”weighted”. Furthermere, here does a timer measure an intervat at time so as te heeeme
`
`greater than a measurement ihtervat of time for which the soider does not move on the
`
`screen mask? A timer measures time, se hew dees it measure time so it beeemes
`
`greater than a different intervai’? The Examiner does net understand this iimitatien.
`
`7.
`
`Ciaim 8 is indefinite because it is uneiear what is meant by “wherein the
`
`measurement intervat ter which the soider is moved en the screen mask by the
`
`squeegee is net weighted? The Examiner does not understand this iimitatien at aii and
`
`requests that the Apeiieant piease eiariiy. Hew is the time intervai net weighted?
`
`8.
`
`Claim 7 states “wherein a measurement interval is weighted when measured a
`
`time for which the solder is moved on the screen mask by the squeegee or time for
`
`which the solder does not move on the screen mask. Time and weight are two different
`
`things. When googled, time weights refers to sound. This does not work in this
`
`instance. How is a time weighted? Does the Applicant intend to say ‘measuring time’?
`
`The current specification does not give any indication as to what is meant by weighted.
`
`The Examiner requests that the Applicant please clarify this limitation.
`
`

`

`Application/Control Number: 15/490,001
`Art Unit: 1735
`
`Page 4
`
`9.
`
`Claim 8 is indefinite because it is unclear what is meant by “the measurement
`
`intervai is weighted such that a measured time is sherter than aetuaiiy measured time
`
`ter which the seider is meved en the screen mask by the squeegee”. As stated above.
`
`it is net understood what is meant by ‘weighted’. Furthermere, haw dees a timer
`
`measure time that is shorter than time measured? The Examiner dees net understand
`
`this iimitatien and requests that the Appiieant piease ciarity.
`
`10.
`
`Ciaim ‘3 is indefinite because it is net understeed what is meant by “weighted
`
`measurement intervai”. As stated aheve, it is net understeod what is meant by
`
`”iitieighted”. The Examiner dees not understand this iiitiitatieh.
`
`11.
`
`Ciaim i2 is indefinite because it is unetear what is meant by ”wherein the
`
`measurement intervat test which the seider is moved on the screen mask by the
`
`squeegee is net weighted". The Examiner dees net understand this iimitatien at aii and
`
`requests that the Appiieai‘tt piease eiarity.
`
`12.
`
`Claims 1-12 would be allowable if rewritten or amended to overcome the
`
`Allowable Subject Matter
`
`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. The Examiner would like to remind the Applicant that no new
`
`matter may be added to the claims.
`
`Response to Arguments
`
`13.
`
`Applicant's arguments filed 12/23/2019 have been fully considered but they are
`
`not persuasive.
`
`

`

`Application/Control Number: 15/490,001
`Art Unit: 1735
`
`Page 5
`
`14.
`
`The amendment to the claims does not overcome a 112 2nOI rejection. The
`
`Examiner still does not understand who time and weight are related. As stated above,
`
`The Examiner turned to Google to perform a search. Timer weights refers to sound.
`
`There does not appear to be a correlation with time and weight that works for this
`
`current invention. The current Specification does not give any guidance to how this
`
`works. A new 112 2nOI rejection has been presented based on the Applicant’s
`
`amendment.
`
`Conclusion
`
`15.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR1.136(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 date of this final action.
`
`

`

`Application/Control Number: 15/490,001
`Art Unit: 1735
`
`Page 6
`
`16.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ERIN B SAAD whose telephone number is (571 )270-
`
`3634. The examiner can normally be reached on Monday-Thursday 7:30a-6p.
`
`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, Keith Walker can be reached on 571 -272—3458. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`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 https://ppair-
`
`my.uspto.gov/pair/PrivatePair. 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.
`
`

`

`Application/Control Number: 15/490,001
`Art Unit: 1735
`
`/ER|N B SAAD/
`
`Primary Examiner, Art Unit 1735
`
`Page 7
`
`

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