www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`15/784,346
`
`10/16/2017
`
`RYOUJI EGUCHI
`
`PIPMM-SSZlO
`
`3765
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`11/01/2019
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`RANDALLJK KELVIN L
`
`3651
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`11/01/2019
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`ELECTRONIC
`
`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
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0,7709 A0170” Summary
`
`Application No.
`15/784,346
`Examiner
`KELVIN L RANDALL, JR.
`
`Applicant(s)
`EGUCHI et al.
`Art Unit
`3651
`
`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 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
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`1). Responsive to communication(s) filed on 07/18/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). 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*
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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) fl 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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`E] Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, 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.'sp 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
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`is/are: a)C] accepted or b)Ej 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).
`
`Priority under 35 U.S.C. § 119
`12)C] 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)C] All
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`b)C] Some**
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`c)C] None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] 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
`
`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 20191027
`
`

`

`Application/Control Number: 15/784,346
`Art Unit: 3651
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`Page 2
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`DETAILED ACTION
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`Election/Restrictions
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`1.
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`Newly submitted claims 5-8 are directed to an invention that is independent or
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`distinct from the invention originally claimed for the following reasons: Applicant has
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`noted that newly added claims include limitations directed to non-elected species Group
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`|: Species II and Group |: Species IV.
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`Since applicant has received an action on the merits for the originally presented
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`invention,
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`this invention has been constructively elected by original presentation for
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`prosecution on the merits. Accordingly, claims 5-8 are withdrawn from consideration as
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`being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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`Response to Arguments
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`2.
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`Applicant's arguments filed 07/18/2019 have been fully considered but they are
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`not persuasive.
`
`Applicant Argues:
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`While Gfeller does disclose detecting when a carrier tape is close to a component
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`shortage, Gfeller does not disclose, teach, or suggest any component that determines if
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`or when termination processing is necessary for a termination portion of the carrier tape.
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`Rather, Gfeller merely teaches that after an operator splices an end of a tape to a
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`second tape, information from the second tape is entered into a memory or storage. A
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`splice sensor then detects the splice already made by the operator and compares it to
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`the information from the second tape.
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`If
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`it is determined that the second tape that has
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`been spliced to the first tape is correct, processing of the second tape begins.
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`If
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`it is
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`

`

`Application/Control Number: 15/784,346
`Art Unit: 3651
`
`Page 3
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`determined that the second tape is incorrect, a warning is provided to the operation.
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`Thus, in Gfeller, the termination processing has already been completed by the operator
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`prior to any determination operation.
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`Examiner’s Response:
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`Examiner notes that Gfeller discloses two different detection reasons that are both as
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`broadly interpreted components that determine if or when termination processing is
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`necessary for a termination portion of the carrier tape.
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`In the first step Gfeller discloses
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`a device which is capable of detecting a desired location or end of a strip and then
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`notifying an operator that the strip is at a predetermined situation or needing
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`replenishment.
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`In other words, detecting and determining that termination processing is
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`necessary.
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`-
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`-
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`(col.
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`1 lines 38-54) - “It is necessary to inform the operator when the end of the
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`tape is reached so that corresponding actions can be initiated”
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`(col. 6 lines 9-18) - “lf now the approaching end of the tape is signaled, (e.g. due
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`to a coded empty pocket sequence detected by the empty pocket sensor 54) a
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`message appears on the placement machine for the operator that the tape is
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`running out in this certain feeder”... .The operator then “releases the tape end of
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`the first tape from the first reel and splices the tape start of a second tape located
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`on a second reel with the tape end of the first tape”
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`

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`Application/Control Number: 15/784,346
`Art Unit: 3651
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`Page 4
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`In the second step Gfeller discloses a device which is capable of detecting a desired
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`location or spliced end of a combined first and second strip and then notifying an
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`operator that the strip is at a predetermined situation and further processing is needed.
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`-
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`(col. 6 lines 34-39) “if a lack of agreement is found, this is signaled to the
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`operator as a warning and the further processing of the second tape is aborted”
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`Examiner notes that in both situations, Gfeller discloses detecting, determining, and
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`notifying whether termination processing is necessary.
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`For the reasons stated above, the claims stand rejected as presented.
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`Claim Rejections - 35 USC § 101
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`3.
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers anynew and useful process, machine, manufacture,or
`composition of matter, or any new and useful improvementthereof, mayobtain a patent
`therefor, subject to the conditions and requirements ofthis title.
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`4.
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`Section 33(a) of the America lnvents Act reads as follows:
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`Notwithstanding anyotherprovision of law, no patent may issue on a claim directed
`to or encompassing a humanorganism.
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`Claims 5-8 are rejected under 35 U.S.C. 101 and section 33(a) of the America
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`lnvents Act as being directed to or encompassing a human organism. See also Animals
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`- Patentability, 1077 Off. 632. Pat. Office 24 (April 21, 1987) (indicating that human
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`organisms are excluded from the scope of patentable subject matter under 35 U.S.C.
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`101). Claims 5-8 are all dependent on the operations of a user.
`
`

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`Application/Control Number: 15/784,346
`Art Unit: 3651
`
`Page 5
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`Claim Rejections - 35 USC § 102
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`1.
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`The following is aquotation 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 inventionwas patented, described in a printed publication, or in public use,
`on sale orothenNise available to the public before the effective filing date of the claimed
`invention.
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`2.
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`Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
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`Gfeller et al. (6,157,870 — hereinafter Gfeller)
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`Re Claims 1, 3, 4, and 5:
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`Gfeller discloses a component mounting system including a tape feeder (1) that pitch-
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`feeds a carrier tape (23) and supplies components (see col. 3 lines 10-53), comprising:
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`a storage (57) which stores information related to the tape feeder (1) and information
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`related to the carrier tape (23) pitch-fed by the tape feeder (1) (see col. 5 lines 45 to col.
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`6 line 23); a detector (10, 53, 54) which detects a state where the carrier tape (23) pitch-
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`fed by the tape feeder (1) becomes close to a component shortage (col. 6 lines 1-67); a
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`determiner (56) which determines whether termination processing
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`(replenishment/changes) is necessary for a termination portion of the carrier tape based
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`on the information related to the tape feeder (1) and the information related to the
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`carrier tape (23) upon detection by the detector that the carrier tape (23)
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`is close to
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`a component shortage (see col. 6 lines 1-23); and a notifier (message/signaling) which
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`notifies an operator of contents of the termination processing (see col. 6 lines 10-15),
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`in
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`a case where the determiner (56) determines that the termination processing is
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`necessary for the termination portion of the carrier tape (23) (see Figs. 1-5).
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`

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`Application/Control Number: 15/784,346
`Art Unit: 3651
`
`Page 6
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`Claim Rejections - 35 USC § 103
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`1.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`A patent for a claimed invention maynotbe obtained, notwithstanding that the claimed
`invention is not identicallydisclosed as set forth in section 102, if the differences between the
`claimed invention and the priorartare such that the claimed invention as awhole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinaryskill in the art to which the claimed invention pertains. Patentabilitys hall notbe
`negated by the manner in which the invention was made.
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`2.
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`Claim(s) 2 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the
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`alternative, under 35 U.S.C. 103 as obvious over Gfeller.
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`Re Claim 2:
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`Gfeller discloses information about whether or not the tape feeder is a type which
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`automatically loads the carrier tape inserted into atape inlet is included in the
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`information related to the tape feeder stored in the storage (Examiner notes that Gfeller
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`teaches information on the feeder wherein in a situation where a tape feeder is not a
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`type which automatically loads into a tape inlet would be capable by detecting a device
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`that does not require such. Gfeller is capable of detecting the alternative and storing
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`information of such as it already stores information of what is mounted and determines if
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`proper or not) (see col. 6 lines 29-38, see Figs. 1-5). Therefore,
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`it would have been
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`obvious for one of ordinary skill in the art at the effective filing date of the invention to
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`have been motivated to have Gfeller detect the type of tape feeder based on the
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`information collected by the device.
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`

`

`Application/Control Number: 15/784,346
`Art Unit: 3651
`
`Page 7
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`Conclusion
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`3.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure.
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`4.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR1.136(a).
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`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.
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`In the event afirst reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`5.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to KELVIN L RANDALL, JR. whose telephone number is
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`(571)270-5373. The examiner can normally be reached on M-F: 9:00 am-5 pm est.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`

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`Application/Control Number: 15/784,346
`Art Unit: 3651
`
`Page 8
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Gene Crawford can be reached on 571-272—6911. The fax phone number
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`for the organization where this application or proceeding is assigned is 571 -273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see 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
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`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/GENE O CRAWFORD/
`
`Supervisory Patent Examiner, Art Unit 3651
`
`/K.L.R/
`
`Examiner, Art Unit 3651
`
`