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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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`15/595,981
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`05/16/2017
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`SHINJI YAMAMOTO
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`PIPMM-57587
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`1748
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`759°
`52°“
`PEARNE & GORDON LLP
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`08’2””
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`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
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`NGUYENDONGHAID
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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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`08/23/2019
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`ELECTRONIC
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`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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`

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`0,7709 A0170” Summary
`
`Application No.
`15/595,981
`Examiner
`DONGHAI D NGUYEN
`
`Applicant(s)
`YAMAMOTO 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
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`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).
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`Status
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`1). Responsive to communication(s) filed on IDS filed on 03/04/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D 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 Expat/7e 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) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`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
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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
`10)[:] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 6/5/17 is/are: a). accepted or b)[:] objected to by the Examiner.
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`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
`12). 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). All
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`b)D Some**
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`C)D None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date M.
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190819
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`

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`Application/Control Number: 15/595,981
`Art Unit: 3729
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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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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`Allowable Subject Matter
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`2.
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`Prosecution on the merits of this application is reopened on claims 1-7 are
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`considered unpatentable for the reasons indicated below:
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`Claim Rejections - 35 USC § 1 12
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`3.
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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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`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.
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`4.
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`Claims 1-5 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.
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`Claim limitation “a controller performing control of a height of the installation of
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`the component by the installation head and with respect to the board based on
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`the heights of the plurality of portions and installing the component on the board with
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`respect to the installation head” (claim 1, lines 9-12) invokes 35 U.S.C. 112(f) or pre-AIA
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`35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the
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`

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`Application/Control Number: 15/595,981
`Art Unit: 3729
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`Page 3
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`corresponding structure, material, or acts for performing the entire claimed function and
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`to clearly link the structure, material, or acts to the function. The Specification only
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`repeat the claimed functions of the controller device (60) without disclose the
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`corresponding structure, material or acts to carry out the performing control of a height
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`of the installation of the component by the installation head with respect to the board.
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`Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AlA 35
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`U.S.C. 112, second paragraph.
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`Applicant may:
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`(a)
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`Amend the claim so that the claim limitation will no longer be interpreted as a
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`limitation under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph;
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`(b)
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`Amend the written description of the specification such that it expressly recites
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`what structure, material, or acts perform the entire claimed function, without
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`introducing any new matter (35 U.S.C. 132(a)); or
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`(c)
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`Amend the written description of the specification such that it clearly links the
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`structure, material, or acts disclosed therein to the function recited in the claim,
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`without introducing any new matter (35 U.S.C. 132(a)).
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`lf applicant is of the opinion that the written description of the specification
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`already implicitly or inherently discloses the corresponding structure, material, or acts
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`and clearly links them to the function so that one of ordinary skill in the art would
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`recognize what structure, material, or acts perform the claimed function, applicant
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`should clarify the record by either:
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`(a)
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`Amending the written description of the specification such that it expressly
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`recites the corresponding structure, material, or acts for performing the claimed
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`

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`Application/Control Number: 15/595,981
`Art Unit: 3729
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`Page 4
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`function and clearly links or associates the structure, material, or acts to the
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`claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
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`(b)
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`Stating on the record what the corresponding structure, material, or acts, which
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`are implicitly or inherently set forth in the written description of the specification,
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`perform the claimed function. For more information, see 37 CFR 1.75(d) and
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`MPEP 4545 608.01 (0) and 2181.
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`Claim Rejections - 35 USC § 102
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`5.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or othenNise available to the public before the effective filing date of the claimed
`invention.
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`6.
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`Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP-06-
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`104597-A to Fukushima et al.
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`Regarding claims 1 and 6, Fukushima et al disclose a component placement
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`machine and method for installing a component by an installation head and with respect
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`to a board arranged at a working position, the component placement machine
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`comprising: a board supporter (13) supporting a lower surface of the board (8) arranged
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`at the working position; a plurality of height measuring instruments (11/12) attached to
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`the board supporter (13) and measuring heights of a plurality of portions of the lower
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`surface of the board (8); and a controller (27) performing control of a height of the
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`installation of the component by the installation head (7) and with respect to the board
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`

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`Application/Control Number: 15/595,981
`Art Unit: 3729
`
`Page 5
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`based on the heights of the plurality of portions and installing the component (lC/LSI) on
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`the board with respect to the installation head (see Pars. 14-18).
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`Regarding claims 2 and 7, Fukushima et al disclose the controller (27) estimates
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`a shape of the board (8) based on the heights of the plurality of portions and performs
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`the control of the height of the installation of the component by the installation head (7)
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`and with respect to the board based on the shape of the board (see Par. 16).
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`Regarding claims 3 and 4, Fukushima et al disclose at least one of the plurality of
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`height measuring instruments measures the height of a middle position of the lower
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`surface of the board in a width direction and by coming into contact with the lower
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`surface of the board (see Fig. 2).
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`Regarding claim 5, Fukushima et al disclose the board supporter (13) is provided
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`with a rising and falling body rising and falling below the board arranged at the working
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`position (by motor 15) and a plurality of support pins (11/12) attached to a plurality of pin
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`attachment sections (22) disposed at the rising and falling body and supporting the
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`lower surface of the board (8), and wherein each of the plurality of height measuring
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`instruments has a shape allowing attachment to at least one of the plurality of pin
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`attachment sections (see Fig. 2).
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`Conclusion
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`7.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DONGHAI D NGUYEN whose telephone number is
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`(571)272-4566. The examiner can normally be reached on M-F 9:00-5:30.
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`

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`Application/Control Number: 15/595,981
`Art Unit: 3729
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`Page 6
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`/DN/
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`August 19, 2019
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`/DONGHAI D NGUYEN/
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`Primary Examiner, Art Unit 3729
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`