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
`
`15/691,825
`
`08/31/2017
`
`SATOSHI ADACHI
`
`PIPMM-57947
`
`2135
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`12/23/2019
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`CARLEY~ JEFFREY T-
`
`3729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/23/2019
`
`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
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`following e—mail address(es):
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`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`15/691,825
`Examiner
`Jeffrey Carley
`
`Applicant(s)
`ADACHI et al.
`Art Unit
`3729
`
`AIA (FITF) Status
`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 3 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 11/05/2019.
`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)
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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.
`
`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.
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`Disposition of Claims*
`
`5)
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`Claim(s) fl is/are pending in the application.
`
`5a) Of the above Claim(s) fl is/are withdrawn from consideration.
`
`
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`E] Claim(ss)
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`is/are allowed.
`
`Claim(ss) 1_—7 is/are rejected.
`
`[:1 Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`C] Claim(s
`* If any claims have been determined allowable, 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.jjgptggQV/patentszinit_events[pph[index.'sp or send an inquiry to PPeredhack@g§ptg.ggv.
`
`Application Papers
`
`10):] The specification is objected to by the Examiner.
`
`is/are: a)[:| accepted or b)D 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).
`
`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.
`
`2.[:] 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mai| Date 08/31/2017, 03/26/2019
`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 20191207
`
`

`

`Application/Control Number: 15/691,825
`Art Unit: 3729
`
`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA 0r 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.
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`Election/Restrictions
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`Applicant’s election without traverse of group 1, claims 1—7, in the reply filed on
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`11/05/2019 is acknowledged.
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`Claims 8 and 9 have been withdrawn from further consideration pursuant to 37 CFR
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`1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking
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`claim. Election was made without traverse in the reply filed on 11/05/2019.
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`Specification
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`The title of the invention is not descriptive. A new title is required that is clearly
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`indicative of the invention to which the claims are directed. The examined claims are not
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`directed to a “Method for Placing [a] Component” (emphasis added).
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`The following title is suggested: “Printed Circuit Board Holding and Component Placing
`
`Apparatus”.
`
`Applicant is respectfully reminded of the proper content of an abstract of the disclosure.
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`A patent abstract is a concise statement of the technical disclosure of the patent and
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`should include that which is new in the art to which the invention pertains. The abstract should
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`not refer to purported merits or speculative applications of the invention and should not compare
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`the invention with the prior art.
`
`If the patent is of a basic nature, the entire technical disclosure may be new in the art, and
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`the abstract should be directed to the entire disclosure. If the patent is in the nature of an
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`

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`Application/Control Number: 15/691,825
`Art Unit: 3729
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`Page 3
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`improvement in an old apparatus, process, product, or composition, the abstract should include
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`the technical disclosure of the improvement. The abstract should also mention by way of
`
`example any preferred modifications or alternatives.
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`Where applicable, the abstract should include the following: (1) if a machine or
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`apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical
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`compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
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`Extensive mechanical and design details of an apparatus should not be included in the
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`abstract. The abstract should be in narrative form and generally limited to a single paragraph
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`within the range of 50 to 150 words in length.
`
`See MPEP § 608.0l(b) for guidelines for the preparation of patent abstracts.
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`The abstract of the disclosure is objected to because the elected and examined claims are
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`drawn to an apparatus, whereas the current Abstract is directed to a process. Contrary to the
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`guidelines for content of the abstract as detailed above, the current abstract does not disclose the
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`elements and structures of the claimed apparatus but instead recites a portion of the related
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`method. Correction is required. See MPEP § 608.0l(b).
`
`Claim Rejections - 35 US C § 112
`
`The following is a quotation of 35 U.S.C. ll2(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.
`
`Claim 2 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to
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`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.
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`Claim 2 discloses: “the board holding table and the backuQ unit hold the board
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`horizontally”. There is a lack of antecedent basis for this limitation in the claim. Previously
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`

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`Application/Control Number: 15/691,825
`Art Unit: 3729
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`Page 4
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`there is recited a “backup table” but no “backup unit”. It is not clear if this is intended to be a
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`structurally distinct limitation or if the “unit” should instead be recited as a “table”. As best
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`understood and read in light of the specification, it appears that the claim should read “the board
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`holding table and the backup table hold the board horizontally.” However, because there are
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`numerous instances of both the words “table” and “unit” throughout the disclosure, one cannot
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`be certain.
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`Claim Rejections - 35 US C § 102
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`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
`otherwise available to the public before the effective filing date of the claimed invention.
`
`Claims 1, 2, 4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Nakanishi (US 7950140 B2).
`
`Regarding claim I , Nakanishi discloses a component placing apparatus (1) for placement
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`of a component (30a) on a board (4), the board having a center region (fig. 1: area of 4 between
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`6a and 21a and between 4a and 4b) and end region (4a) in which a component placing region
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`(4c) is provided, the apparatus comprising: a board holding table (6) which holds the board on a
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`lower surface (fig. 1: “top” of 4, as viewed) of the center region (figs. 1—2B and 6; col. 3, lines 8—
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`67); a backup table (7) which holds the board on a lower surface (“top”, as viewed) of the end
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`

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`Application/Control Number: 15/691,825
`Art Unit: 3729
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`Page 5
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`region (figs. l—2B and 6; col. 3, lines 17—47); a suction mechanism (6a, 7b, 8—13, 20b, 21a, 22—
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`27) comprising suction ports (7b, 8) opened on an upper surface (pressure face, 7a) of the backup
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`table, the suction mechanism sucking the board at the end region through the suction ports (figs.
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`l—2B and 4—6; col. 3, lines 17—47; col. 4, lines 22—46); a table moving mechanism (2, l4—le)
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`which moves both the board holding table and the backup table to position the component
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`placing region at a predetermined working position (figs. 1—6; col. 5, lines 61—67); and a placing
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`head (32, 33) which picks up the component and presses the component from above to the
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`component placing region to place the component on the board (figs. 5—8; col. 3, lines 6—9; cols.
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`5—6, lines 49—67 and 1—67).
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`Regarding claim 2, as best
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`understood, Nakanishi discloses
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`the component placing apparatus
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`of claim 1, wherein the table
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`moving mechanism moves both
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`the board holding table and the
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`backup table such that both the
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`board holding table and the backup
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`unit hold the board horizontally
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`(annotated fig. 5, right).
`
`
`
`‘-
`_
`ENE?”
`both “center“ and "and“ regions
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`Regarding claim 4, as best understood, Nakanishi discloses the component placing
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`apparatus of Claim 1, wherein the plurality of suction ports are constituted by a plurality of holes
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`(7b and 8) and a hole diameter of each of the plurality of suction ports has a size that does not
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`generate voids in the board to be sucked (it is expressly the intent of Nakanishi to mount
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`

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`Application/Control Number: 15/691,825
`Art Unit: 3729
`
`Page 6
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`components on a board, and not to destroy the board by suctioning holes into it, the structure of
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`Nakanishi is clearly capable of performing the intended function of holding the board without
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`ruining it). Note: the claims are drawn to an apparatus rather than a method. Respectfully, the
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`Applicant is advised that, while the features of an apparatus may be recited either structurally or
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`functionally, claims directed to an apparatus must be distinguished from the prior art in terms of
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`structure rather than function. In addition, it has been held that apparatus claims cover what a
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`device is, not what a device does. In this case, the patented apparatus of Nakanishi discloses (as
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`detailed above) all the structural limitations required to perform the recited functional language,
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`therefore was considered to anticipate the claimed intent of not generating voids in the board
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`during suction. Naturally, this is easily achieved with pores of any diameter by simply not
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`applying excess suction (vacuum) pressure.
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`Regarding claim 7, Nakanishi discloses the component placing apparatus of Claim 1,
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`further comprising: a support member (20) which is provided between the board holding table
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`and the backup table (figs. 1 and 4), and holds the board on a lower surface (“top”, as viewed) of
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`an intermediate port (20b), wherein the support member sucks and holds the board on an upper
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`surface (“bottom”, as viewed), and wherein the support member holds the board horizontally
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`together with the board holding table and the backup table (fig. 4; col. 4, lines 1—56; col. 5, lines
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`17-32).
`
`Claim Rejections - 35 US C § 103
`
`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 of this title, 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
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`

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`Application/Control Number: 15/691,825
`Art Unit: 3729
`
`Page 7
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`which the Claimed invention pertains. Patentability shall not be negated by the manner in which the
`invention was made.
`
`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi, in
`
`View of Muramoto et al. (US 7963308 B2).
`
`Regarding claim 3, Nakanishi discloses all of the elements of the current invention as
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`detailed above with respect to claim 1. Nakanishi, however, does not explicitly disclose that the
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`plurality of suction ports are constituted by pores of a porous material provided so as to be
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`exposed on the upper surface of the backup table.
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`Muramoto teaches that it is well known to provide a backup table (24a) which is
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`comprised of a plurality of suction ports (25, 25a) that are constituted by pores (pores) of a
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`porous material (ceramic) provided so as to be exposed on the upper surface of the backup table
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`(figs. 4A—7B; cols. 7—8, lines 62—67 and 1—9; col. 12, lines 52—61).
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`At the time the application was filed, it would have been obvious to one of ordinary skill
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`in the art to have modified the current invention of Nakanishi to incorporate the use of a porous
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`material with pores for the suction ports of Muramoto. As detailed in Muramoto, it is known
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`that local bending of circuit board substrates is unwanted and can be predictably avoided using a
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`porous material. This is because it is commonly understood that the pores allow for more even
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`distribution of suction force across the board face, avoiding pressure concentrations that could
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`cause deleterious defects. The use of force distribution is a fundamental principle of mechanical
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`engineering and the porous ceramic material of Muramoto has long been used to predictably
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`achieve that force distribution in the art.
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`Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Nakanishi, in View of Sano et al. (US 4996763).
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`

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`Application/Control Number: 15/691,825
`Art Unit: 3729
`
`Page 8
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`Regarding claim 5, Nakanishi discloses all of the elements of the current invention as
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`detailed above with respect to claim 1. Nakanishi, however, does not explicitly disclose that the
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`backup table comprises a cutout portion penetrating through the backup table, and the component
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`placing apparatus further comprising a mark imaging camera, of which an imaging field of view
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`faces upward, takes an image of a board—side mark of the board positioned at the working
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`position through the cutout portion.
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`Sano teaches that it is well known to provide a component placing apparatus (fig. 1) with
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`a backup table (6—l2), wherein the backup table comprises a cutout portion (17) penetrating
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`through the backup table, and the component placing apparatus further comprising a mark
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`imaging camera (24), of which an imaging field of view faces upward (fig. 2, upward, as
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`viewed), takes an image of a board—side mark (alignment marks) of the board positioned at the
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`working position through the cutout portion (Abstract; figs. 1—2; col. 3, lines 22—58; col. 4, lines
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`8—40).
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`At the time the application was filed, it would have been obvious to one of ordinary skill
`
`in the art to have modified the current invention of Nakanishi to incorporate the mark imaging
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`camera in the cutout of the backup table from Sano. It is considered well known in the art that
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`precise alignment of boards and components for mounting is critical to manufacturing functional
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`products. One of the known and common expedients is to use alignment camera(s) to image the
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`workpiece and/or board and detect alignment marks. One of ordinary skill would have known
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`that to employ such a camera would be a simple matter of applying off—the—shelf knowledge and
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`components. Further it is known that placing the cameras as closely to the mounting locale as
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`possible is beneficial to again, increase alignment accuracy. It is not evident that any special
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`devices were created or employed in the instant disclosure but instead that the known apparatus
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`

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`Application/Control Number: 15/691,825
`Art Unit: 3729
`
`Page 9
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`of Nakanishi appears to have been effectively retrofitted with the known alignment components
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`of Sano. Such a modification would have required only routine skill in the art.
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`Regarding claim 6, Nakanishi discloses all of the elements of the current invention as
`
`detailed above with respect to claim 1. Nakanishi, however, does not explicitly disclose that
`
`the backup table comprises a cutout portion penetrating through the backup table, and the
`
`component placing apparatus further comprising a mark imaging camera, of which an imaging
`
`field of view faces upward, takes an image of a board—side mark of the board positioned at the
`
`working position through the cutout portion, and the plurality of suction ports are provided in a
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`region for sucking a periphery of the cutout portion at a higher density than a region for sucking
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`a portion other than the periphery of the cutout portion.
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`Sano teaches that it is well known to provide a component placing apparatus (fig. 1) with
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`a backup table (6—12), wherein the backup table comprises a cutout portion (17) penetrating
`
`through the backup table, and the component placing apparatus further comprising a mark
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`imaging camera (24), of which an imaging field of view faces upward (fig. 2, upward, as
`
`viewed), takes an image of a board—side mark (alignment marks) of the board positioned at the
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`working position through the cutout portion (Abstract; figs. 1—2; col. 3, lines 22—58; col. 4, lines
`
`8—40), and the plurality of suction ports (16) are provided in a region (left and rightmost ones of
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`16) for sucking a periphery of the cutout portion at a higher density than a region for sucking a
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`portion other (central portion of 12, between two center ones of 16, where there are no ports)
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`than the periphery of the cutout portion (fig. 2; col. 3, lines 42—51).
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`Regarding the mark recognition camera and backup table cutout limitations, please refer
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`to claim 5 for rationale regarding combination of references. With respect to the suction port
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`density limitation, it is so broad as to be naturally obvious. It is expected that the density of ports
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`

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`Application/Control Number: 15/691,825
`Art Unit: 3729
`
`Page 10
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`may not be completely homogeneous across every portion of the backup table, because otherwise
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`there would be only one port, covering the entire surface; additionally there does not appear to be
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`any criticality to the claim limitation, instead being a matter of optimization based upon the
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`intended product shape and configuration. At the time of filing it was known that one does not
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`need to apply suction to the entirety of the circuit board at any given time, and therefore it is
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`obvious that ports would have different density based upon preference and routine selection by
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`one of ordinary skill.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Jeffrey Carley whose telephone number is (571)270—5609. The
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`examiner can normally be reached on Monday — Friday, 9:00 am — 5:00 pm.
`
`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
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`supervisor, Peter Vo can be reached on 571—272—4690. 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
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`

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`Application/Control Number: 15/691,825
`Art Unit: 3729
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`Page ll
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`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`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.
`
`/JEFFREY T CARLEY/
`
`Examiner, Art Unit 3729
`
`/A. DEXTER TUGBANG/
`
`Primary Examiner
`Art Unit 3729
`
`