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`V i$ T
`{5%
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/644,275
`
`07/07/2017
`
`ATSUTO SHIMADA
`
`PIPMM-57758
`
`3503
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`06’16’2020
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`MAL THIEN T
`
`2887
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/16/2020
`
`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
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`following e—mail address(es):
`
`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/644,275
`Examiner
`THIEN MAI
`
`Applicant(s)
`SHIMADA, ATSUTO
`Art Unit
`AIA (FITF) Status
`2887
`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 5/21/20.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`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.
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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.
`
`Disposition of Claims*
`
`5)
`
`Claim(s)
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`flis/are pending in the application.
`
`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`Claim(ss) 1_—8 is/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
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`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 7/7/17 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:
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`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)
`
`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 20200608
`
`

`

`Application/Control Number: 15/644,275
`Art Unit: 2887
`
`Page 2
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`otice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
`
`1.
`
`35 U.S.C. 101 reads as follows:
`
`Claim Rejections - 35 USC § 101
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
`
`Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed
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`to a judicial exception (Le, a law of nature, a natural phenomenon, or an abstract idea) without
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`significantly more.
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`Based on Alice v. CLS Corp (US 2014), the claim(s) are analyzed, based on the new
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`2019 Guidelines, to determine whether the subject matter is directed to a judicial exception.
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`Step 1: Is the claim directed to a process, machine, manufacture, or composition of
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`matter? Yes.
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`Step 2A: Is the claim directed to a law of nature, a natural phenomenon, or an abstract
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`idea?
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`Claims 1 and 5 are directed to a method in which each of the identification codes on a
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`reel is recognized and decoded to reveal information and then stored in a storage unit. These
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`limitations, as drafted, are directed to a process that, under its broadest reasonable
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`interpretation, covers performance of the limitations in the mind but for the recitation of generic
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`device components. That is, other than reciting “recognizer,” “decoder”, “storage unit”, “reel”,
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`“tape feeder”, nothing in the claim element precludes the step from practically being performed
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`in the mind. For instance, other than generic components such as “recognizer,” “decoder”,
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`“storage unit”, “reel”, “tape feeder”, the codes can be scanned by a person such that that it can
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`be seen and information can be obtained. The mere nominal recitations of generic
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
`
`Page 3
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`computing components do not take the claim limitation out of the mental processes grouping.
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`Thus, the claim recites a mental process.
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`Step 2A - Prong 2: Integrated into a Practical Application?
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`The claims additionally recite the multiple codes are placed on the reel, each of which is
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`scanned and decoded by a recognizer and decoder. Code recognizer and decoder are generic
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`devices capable of reading and decoding optical codes including those that can be recognize by
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`humans. These generic devices are recited at a high level of generality, i.e., as a generic device
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`performing a generic computer function of processing data (capturing authentication data from
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`an optical code and processing captured data). Besides the recognizer and decoder, the claims
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`also recite a tape feeder, reel, component mounter. However, these are also generic devices
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`well understood in the field. Examples of these are in the cited references and admitted prior
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`art. The recitation of generic device components is no more than mere instructions to apply the
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`exception using a generic device component. The claims also recite the component information
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`is divided into associated information codes and the feeder is installed upon confirming the id
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`code on the feeder is recognized.
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`The claims additionally recite wherein in a case in which each of the first component
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`information includes information different than the second component information, when the
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`information of the component reel is stored, both the decoded first component information and
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`the decoded second component information are associated with each of the first identification
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`code and the second identification code and stored in the storage unit. However, these
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`limitations are considered as being directed to an abstract idea similar to the case in Content
`
`Extraction in which the court has held that the “concept of data collection, recognition and
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`storage is indisputably well-known, in that humans have always performed these functions”.
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`These limitation do not satisfy the requirements in the new 2019 Guideline:
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`Limitations that are indicative of integration into a practical application:
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
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`Page 4
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`.
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`Improvements to the functioning of a computer, or to any other technology or technical
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`field -see MPEP 2106.05(a)
`
`.
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`Applying or using a judicial exception to effect a particular treatment or prophylaxis for a
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`disease or medical condition —see VandaMemo
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`.
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`Applying the judicial exception with, or by use of, a particular machine -see MPEP
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`2106.05(b)
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`.
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`Effecting a transformation or reduction of a particular article to a different state or thing -
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`see MPEP 2106.05(c)
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`.
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`Applying or using the judicial exception in some other meaningful way beyond generally
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`linking the use of the judicial exception to a particular technological environment, such that the
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`claim as a whole is more than a drafting effort designed to monopolize the exception -see
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`MPEP 2106.05(e) and VandaMemo
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`The limitations do not improve the functioning of computer, underlying technology, and
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`does not apply the judicial exception in some other meaningful way beyond generally linking the
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`use of the judicial exception to a particular technological environment. The claimed invention
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`merely uses generic computer components as tools to perform an abstract idea. The invention
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`is more of linking the use of the judicial exception to a particular technological environment or
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`field of use (i.e. component feeder environment).
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`Accordingly, this additional element does not integrate the abstract idea into a practical
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`application because it does not impose any meaningful limits on practicing the abstract idea.
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`The claim is directed to the abstract idea.
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`Step 28. Does the Claim as a Whole Amount to Significantly More than the Judicial
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`Exception?
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`As discussed, the claim recites additional limitations including “recognizer,” “decoder”,
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`“storage unit”. However, the recognizer and decoder means recited are merely used in obtaining
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
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`Page 5
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`data, which are generic devices that performs routine and conventional data collection well
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`known in the field, such as barcode reader, RFID scanner, and short-range reader.
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`The recitation of computer components is akin to adding the words “apply it” in conjunction with
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`the abstract idea. Such a limitation is not enough to qualify as significantly more. Generic
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`computers performing generic computer functions, alone, do not amount to significantly more
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`than the abstract idea. See Secured Mail (Fed. Cir. 2017, holding that the claims are directed to
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`communicating information via the barcode and does not provide an improvement in a barcode
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`format or similar improvements in computer functionality) and Content Extraction &
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`Transmission v. Wells Fargo (“there is no “inventive concept” in using gLeric scanner and
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`computer to perform well understood, routine, and conventional activities commonly used in
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`industry
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`extracting, recognizing and storing data
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`recognition and storage is indisputably
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`well-known, in that humans have always performed these functions”). See also Epic Tech v.
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`Fitnow (DC Utah 2015, “recitation of a generic “computing device” and conventional “bar
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`code[s]” is insufficient for transforming the abstract idea into something that is patent eligible”).
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`Furthermore, recognizing or obtaining information from the reel or feeder is a form of data
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`collection, which has long been held as being directed to abstract idea (see i.e. Electric Power
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`Grp., “merely selecting information, by content or source, for collection, analysis, and display
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`does nothing significant to differentiate a process from ordinary mental processes”
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`Judging the claims as a whole, the claim(s) does/do not include additional elements that
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`are sufficient to amount to significantly more than the judicial exception because although
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`the claims recite additional generic computer elements, i.e. recognizer means, they do not add
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`a meaningful limitation to the abstract idea because they do not transform the abstract idea
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`of data encoding and communication into something else more meaningful or different. As
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`noted in the Secured Mail court, the claims do not improve any functionality of the computing
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`device or scanner and the claims are not directed to a new form of barcode or a new camera.
`
`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
`
`Page 6
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`The use of the conventional elements (i.e. barcode, camera) is merely as tools to carry out the
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`abstract idea.
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`Dependent claims recite different types of parameters to be recognized and decoded,
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`collating, and cancel scanning. However, these limitations fail to contain a significance over
`
`the abstract idea addressed above. These features do not improve the underlying technology.
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`As noted in the Secured Mail court, the claims do not improve any functionality of the
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`computing device or scanner and the claims are not directed to a new form of barcode or a new
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`camera. Although different data encoded in the optical code are used for different purposes or
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`meanings, they are merely intangible data used for processes directed to an abstract idea.
`
`See Electric Power Grp (we have treated collecting information, including when limited to
`
`particular content (which does not change its character as information), as within the realm of
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`abstract idea). Therefore these features are still directed to an abstract idea.
`
`Claim Rejections - 35 USC § 103
`
`1.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
`
`rejections set forth in this Office action:
`
`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.
`
`1.
`
`Claim(s) 1, 3-4, 5, 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Tani (US 20040094630 A1) in view of Michizoe (US 20180049353)
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`Tani teaches
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`1. A management system which manages component information from a plurality of
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`identification codes attached to a component reel which houses electronic components,
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`comprising:
`
`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
`
`Page 7
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`a recognizer (i.e. reader 12, 110) which scans a first identification code (i.e. barcode 7)
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`and a second identification code (codes 101) attached to the component reel and recognizes a
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`code recorded in each of the first and second of identification codes (i.e. identification codes 7,
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`101B, 105; par. 32, 74, 84);
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`an information decoder (11, identifier 120) that decodes the first component information
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`from the code recorded in the first identification code and second component information
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`recorded in the second identification code, the first and second component information including
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`at least one of item name information, order information, serial number, number of components,
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`and vendor information (Fig. 13, par. 74-80, 130-107);
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`a storage unit which stores each of the decoded first and second component
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`information,
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`wherein each of the first component information includes information different than the
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`second component information () and, both the decoded first component information and the
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`decoded second component information are associated with each of the first identification code
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`and the second identification code and stored in the storage unit (barcode 7 in Tani includes
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`details of the chip parts 30 and other necessary information and specifications (par. 74) which
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`would have been obvious to include description and specifications such as 5 ohm resistor, 1mm
`
`in length, .2 mm in thickness, ..; whereas codes 101 on the components includes serial numbers
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`from first to last parts in order to predict the end of reel for its replacement (par. 80, 104). The
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`barcode 7 cannot be encoded with all the serial numbers of the component parts along with the
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`description and specs. Further in par. 104 of Tani, the identifier 120 is configured to identify and
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`differentiate chip part compliance, which would have been obvious to be result from the
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`comparison with barcode 7 information); and
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`a tape feeder (Fig. 1) in which the component reel is installed, wherein the tape feeder
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`supplies the electronic components to a component mounting mechanism, and wherein the
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
`
`Page 8
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`component mounting mechanism mounts the electronic components onto a board (par. 79, 96-
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`97).
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`Tani is silent to the tape feeder upon confirming that the decoded first and second
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`component information associated with one of the first and second identification codes is
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`recognized by a code reader,
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`Michizo teaches
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`[0056] A barcode lDr is assigned to each of the first and second reels R1, R2, and a
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`component ID (Identification Data) for identifying the type of the components housed in the tape
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`TP held by the corresponding reel R1, R2 is recorded in each barcode IDr. Further, a barcode
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`lDf is assigned to the tape feeder 5, and a feeder ID for individually identifying the tape feeder 5
`
`is recorded in this barcode lDf. The server PC 9 is provided with a reader 98, and supports the
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`setup operation based on reading results of the barcodes IDr, lDf by the reader 98. [0057] FIG.
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`6 is a flow chart showing an example of an operation of mounting the tape feeder on the
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`carriage in the setup operation. In Step S101, an operator reads the barcode lDf assigned to the
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`tape feeder 5 planned to be mounted on the feeder supporting member 81 of the carriage 81 by
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`the reader 98 and the controller 90 obtains the feeder ID recorded in the barcode lDf from that
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`reading result.
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`Therefore, it would have been obvious to one of ordinary skill in the art before the
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`effective date the invention was made to incorporate the teachings of Michizo to ensure proper
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`or intended feeder being installed.
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`3.1 , wherein when collating the stored component reel, the recognizer does not cancel
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`scanning until a specified identification code among the identification codes which are stored is
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`recognized (once the code is scanned, recognized, and stored, the code has been scanned
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`therefore scanning is not cancelled).
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`4.1 , wherein when collating the registered component reel, in a case in which the
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`recognizer recognizes an identification code which is different from the identification codes
`
`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
`
`Page 9
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`which are stored in the storage unit, number of components is decoded from a code which is
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`recorded in the identification code, and stored (Tani, par. 104-107).
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`Re claims 2, 6, Tani teaches that there are different types of codes including slanted,
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`parallel, barcode, dotcode,... and digits can be allocated to each information (Fig. 3, 5, par. 31)
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`and type of digit characters can be encoded in the component id tag (par. 86)
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`Tani is silent to the reel id including these type of code, digits,
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`However, it is considered an obvious extension of Tanis teachings as Tani has
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`mentioned and also well known in the art that different types of optical code including barcodes
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`and dot-codes are capable of storing different types of data including alphanumeric characters.
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`One of ordinary skill in the art would be encouraged to encode these data types and character
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`types so as to assign different types of environment, manufacturing processes, chip types,...
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`Re claims 5, 7-8, see discussion regarding claims above.
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`Remarks
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`Applicant's arguments with respect to §101 have been fully considered but they are not
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`persuasive.
`
`Applicant argued that “the reading and decoding of these identification codes on
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`component reels to identify item name information, order information, serial number, number of
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`components on the reel, and/or vendor information, as known and understood in the art, cannot
`
`be simply performed in the human mind, as suggested by the Examiner. Accordingly, claims 1-8
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`do not recite an abstract idea and thus, are eligible under 35 U.S.C. 101”.
`
`It is respectfully submitted that in response to similar issue raised in the Content
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`Extraction, the court explained that “the claims in Alice also required a computer that processed
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`streams of bits, but nonetheless were found to be abstract. See 134 S. Ct. at 2358... CET's
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`claims are drawn to the basic concept of data recognition and storage.” Similarly in this case,
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`using well-known reader and decoder is akin to using generic computer or existing scanning
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`technology as tools to practice an abstract idea of data recognition. The claims do not recite a
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
`
`Page 10
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`practical application as there is no “inventive concept” when utilizing generic and existing
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`technology
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`Applicant's arguments with respect to §103 have been fully considered but they are not
`
`persuasive.
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`Applicant argued that Tani does not disclose the collation, or association and storage, of
`
`two identification codes with differentinformation.
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`The Examiner respectfully disagrees and contends that as discussed above, barcode 7
`
`in Tani includes details of the chip parts 30 and other necessary information and specifications
`
`(par. 74) which would have been obvious to include description and specifications such as 5
`
`ohm resistor, 1mm in length, .2 mm in thickness, ..; whereas codes 101 on the components
`
`includes serial numbers from first to last parts in order to predict the end of reel for its
`
`replacement (par. 80, 104). The barcode 7 cannot be encoded with all the serial numbers of the
`
`component parts along with the description and specs. Further in par. 104 of Tani, the identifier
`
`120 is configured to identify and differentiate chip part compliance, which would have been
`
`obvious to be result from the comparison with barcode 7 information. Thus, there are
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`differences in the information stored in the barcode 7 and those in the color code 101 as
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`opposed to Applicant’s allegation.
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`For these reasons, the previous rejection(s) is/are respectfully maintained.
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`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as
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`set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
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`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
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`the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`

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`Application/Control Number: 15/644,275
`Art Unit: 2887
`
`Page 11
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action.
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`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the mailing date
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`of this final action.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Thien T. Mai whose telephone number is 571-272—8283. The examiner
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`can normally be reached on M-F 8:00-5:00pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Steve S. Paik can be reached at 572-272-2404. The fax phone number for the
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`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 http://pair-direct.uspto.gov. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
`
`would like assistance from a USPTO Customer Service Representative or access to the
`
`automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/Thien T Mai/
`
`Primary Examiner, Art Unit 2887
`
`