www.uspto.gov
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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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`15/644,936
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`07/10/2017
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`MINORU YAMAMOTO
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`PIPMM-57777
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`2215
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`759°
`52°“
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
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`11/20/2019
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`CLEVELAND, OH 44114-3108
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`TRINHMNHN
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`3729
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`11/20/2019
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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.
`15/644,936
`Examiner
`MINH N TRINH
`
`Applicant(s)
`YAMAMOTO, MINORU
`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 2 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 9/20/19.
`[: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) C] 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*
`5)
`Claim(s)
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`1—13 is/are pending in the application.
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`5a) Of the above claim(s) fl is/are withdrawn from consideration.
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`Claim(s) 1—10 and 12—13 is/are allowed.
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`El Claim(s) _
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`is/are rejected.
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`E] Claim(s)
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`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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`Claim(s) E are subject to restriction and/or election requirement
`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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`httpfiwww.”smogovmatentszinit_events[pph[index.'§p or send an inquiry to PPeredhack@g§ptg.ggv.
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`Application Papers
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`10)D The specification is objected to by the Examiner.
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`is/are: a)C] accepted or b)l:] objected to by the Examiner.
`11):] The drawing(s) filed on
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`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)D All
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`b)U Some**
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`C)U None of the:
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`1C] Certified copies of the priority documents have been received.
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`21:] 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) C] Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) 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 20191114
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`

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`Application/Control Number: 15/644,936
`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 under the first
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`inventor to file provisions of the AIA.
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`2.
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`The amendment to the claim languages filed on 9/20/19 has been fully considered and made of
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`record, claims 1-13 are now pending in this application, in that claim 11 is subject of restriction from the
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`elected invention as originally filed invention because:
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`Newly submitted claim 11 directed to an invention that is independent or distinct from the
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`invention originally claimed for the following reasons:
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`a) newly claim 11 directed to ”a board insertion apparatus” (see preamble of claim 11) rather
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`than the originally filed invention of ”an insertion device”.
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`b) inventions of claim 11- versus-originally filed invention of claims 1-7 are related as
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`subcombinations disclosed as usable together in a single combination. The subcombinations are distinct
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`if they do not overlap in scope and are not obvious variants, and if it is shown that at least one
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`subcombination is separately usable.
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`In the instant case, subcombination (as new claim 5) do not
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`overlap in scope, and clearly has separate mode of operations functions or effects such as for
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`manipulate the board relative to respective connector by a robot having a work arm”. See MPEP
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`§ 806.05(d).
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`Since applicant has received an action on the merits for the originally presented invention, this
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`invention has been constructively elected by original presentation for prosecution on the merits.
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`Accordingly, claim 11 is withdrawn from consideration as being directed to a non-elected invention. See
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`37 CFR 1.142(b) and MPEP § 821.03. Please cancel above claim or taken an appropriate action.
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`

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`Application/Control Number: 15/644,936
`Art Unit: 3729
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`Page 3
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`3.
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`This application is in condition for allowance except for the following formal matters:
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`The claims:
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`-
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`-
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`In line 1 of claim 2-10, 12-13, the term "Claim" should n_ot be capitalized.
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`Claim 11 is requested to be cancelled (see reason provided above)
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`Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25
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`USPQ 74, 453 0.6. 213, (Comm’r Pat. 1935).
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`A shortened statutory period for reply to this action is set to expire TWO MONTHS from the
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`mailing date of this letter.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to MINH N TRINH whose telephone number is (571)272-4569. The examiner can
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`normally be reached on M-TH ~6:00-4:30.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Peter Dung Vo can be reached on 5712724690. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent Application
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
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`direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
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`

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`Application/Control Number: 15/644,936
`Art Unit: 3729
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`Page 4
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer
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`/M|NH N TRINH/
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`Primary Examiner, Art Unit 3729
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`mt
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