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
`
`15/907,923
`
`02/28/2018
`
`Hideaki WATANABE
`
`AOYAl-58872
`
`7415
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`“’20’2020
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`TUGBANG ANTHONYD
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`2896
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`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`11/20/2020
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`ELECTRONIC
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`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.
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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)
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`

`

`017/09 A0170” Summary
`
`Application No.
`15/907,923
`Examiner
`A. DEXTER TUGBANG
`
`Applicant(s)
`WATANABE et al.
`Art Unit
`AIA (FITF) Status
`2896
`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 9/11/20.
`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.
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`2b) D 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 Expade 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)
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`flis/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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`
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`E] Claim(ss)_is/are allowed.
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`Claim(s)6_—12 is/are rejected.
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`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
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`httpfiwww.”smogovmatentsflnit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
`
`Application Papers
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`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).
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`Priority under 35 U.S.C. § 119
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`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)C] Some**
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`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`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)).
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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) [3 Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`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-
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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 20201117
`
`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
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`Page 2
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`DETAILED ACTION
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`Response to Amendment
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`The following is in reply to the applicants’ submission (e.g. amendment, remarks,
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`etc.) filed on September 11, 2020.
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`The objections to the specification in the last office action have been withdrawn
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`in light of the amendments to the specification.
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`The rejections under 35 U.S.C. 112(b) in the last office action have been
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`withdrawn in light of the amendment to the claims.
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`Election/Restrictions
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`Claims 1 through 5 continue to remain as being withdrawn from further
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`consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention,
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`there being no allowable generic or linking claim. Election was made without traverse
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`in the reply filed on May 11, 2020.
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`Claim Rejections - 35 USC § 103
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`Claims 6 through 12 are rejected under 35 U.S.C. 103 as being unpatentable
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`over U.S. Patent 4,822,091 to Vermeer et al (hereinafter “Vermeer”) in view of U.S.
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`Patent 4,789,292 to Holcomb (hereinafter “Holcomb”).
`
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`Claims 6 11 and 12: Vermeer discloses a method of mounting a component by
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`using a component mounting device (Figures 1 to 3) for mounting a component (6) on a
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`substrate (e.g. col. 1, lines 1-16),
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
`
`Page 3
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`wherein the component mounting device includes a pair of clamping members
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`(e.g. 4, 5) pinching and clamping the component;
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`wherein the pair of clamping members is able to clamp both a first component
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`including a first body (e.g. of 6) and a first lead (e.g. one of 7) and a second component
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`(6) including a second body (e.g. of 6) and a second lead (e.g. the other, or opposite 7),
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`wherein the pair of clamping members has facing portions provided with
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`a clamping surface [see Vermeer’s annotated Fig. 1 below] contacting the first
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`body of the first component [see Fig. 2], and
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`a holding groove [see Vermeer’s annotated Fig. 1 below] formed at the clamping
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`surface and holding the second lead of the second component (see Fig. 2),
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`baffling; groove
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`wherein the component mounting device further includes a drive mechanism
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`(e.g. fluid pressure operating means) moving the pair of clamping members in
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`approaching and separating directions (e.g. col. 3, lines 10-15), and
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
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`Page 4
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`wherein when the clamping members mount the first component on the
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`substrate, the method comprises:
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`an approaching step of causing the pair of clamping members to approach each
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`other with the first body of the first component disposed between the paired clamping
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`members (e.g. sequence of Figs. 1 to 2),
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`a clamping step of clamping the first component (e.g. Fig. 2), and
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`a first mounting step of moving the pair of clamping members clamping the first
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`component to the substrate and pressing out the first component clamped by the pair
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`of clamping members for mounting on the substrate (e.g. col. 4, lines 26-64), and
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`wherein when the clamping members mount the second component on the
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`substrate, the method [further] comprises:
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`an interval fixing step of fixing an interval of the pair of clamping members
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`[position of 4, 5 in Fig. 2],
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`an inserting step of inserting the second component between the paired
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`clamping members at the fixed interval with the second leads of the second component
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`disposed along the holding grooves [e.g. in Fig. 2], and
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`a second mounting step of moving the pair of clamping members clamping the
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`inserted second component to the substrate and pressing out the second component
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`clamped by the pair of clamping members for mounting on the substrate;
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`wherein the holding groove [vertically] extends [downward] toward a [bottom end]
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`tip of the clamping member to guide the second lead toward the substrate (e.g. col. 4,
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`lines 26-66); and
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
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`Page 5
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`wherein the pair of clamping members is configured to clamp both the first
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`component and the second component in accordance with the shape of the component
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`(e.g. based on components of different widths, see col. 3, lines 33-36 and lines 56-59).
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`In reading the entire document of Vermeer, it is understood, or obvious, that all of
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`the steps of approaching, clamping, mounting, interval fixing, inserting, and second
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`mounting [above] are performed for a plurality of components (first, second, third, etc.)
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`as the intent of Vermeer is to repeat all of these steps to mount various components of
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`different sizes or widths to a substrate.
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`Claims 7 and 8: Vermeer further discloses that within the clamping step and the
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`interval fixing step, the first component would have a [first] pair of leads (7), the second
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`component has a second pair of leads (7), and a third component would have a third
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`pair of leads, etc., respectively.
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`Claim 9: Vermeer further discloses that the component mounting device includes
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`a pusher (e.g. 15, 21, 12, 13, 22) pushing the component pinched by the clamping
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`members toward the substrate,
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`wherein a first mounting step includes pressing out the first component clamped
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`by the pair of clamping members with the pusher for mounting on the substrate, and
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`wherein a second mounting step includes pressing out the second component
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`clamped by the pair of clamping members with the pusher for mounting on the substrate
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`(e.g. col. 4, lines 45-55).
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`Claim 10: Vermeer further discloses that the holding groove is linearly extended
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`from one end of the clamping surface (e.g. left side end of 4 or 5 in Fig. 3) to another
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`end (e.g. right side end of 4 or 5 in Fig. 3) of pair [both side ends of 4 or 5, in Fig. 3] of
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
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`Page 6
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`the clamping surface, and portions (angled surface as noted in the annotated figure
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`above) of the clamping surface other than the holding groove are substantially flat.
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`Within the component mounting device of Vermeer, there is no mentioning of any
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`control part controlling the drive mechanism [as reguired by Claim 6], that the control
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`part also manages a clamping force at which the pair of clamping members clamps the
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`first component [as reguired by Claim 7|, or that the control part manages an interval of
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`the pair of clamping members so as to fix an interval of a pair of the second leads held
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`in the holding grooves of the pair of clamping members [as reguired by Claim 8].
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`Holcomb is analogous art in disclosing a mounting method that includes an art-
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`recognized equivalent mounting device (e.g. Fig. 1). Part of Holcomb’s mounting device
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`includes a pair of clamping members (e.g. 410, 420, in Fig. 5) to clamp a component
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`with a drive mechanism. An example of the drive mechanism in Holcomb to clamp the
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`components is a pressurized air cylinder (430) with a series of valves (e.g. 530, 535,
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`etc.) and a control part (500) to control the drive mechanism (e.g. col. 9, lines 43+).
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`Holcomb explicitly states that the control part allows programming to automate the
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`sequence and movements of the mounting device (e.g. col. 8, lines 17-29).
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`Regarding Claims 7 and 8, Holcomb further discloses that at least a sensor (e.g.
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`585) is also included to manage a clamping force and an interval of the clamping
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`members (e.g. col. 10, lines 4-57).
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`It would have been obvious to one of ordinary skill in the art before the effective
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`filing date of the claimed invention to have modified the method of Vermeer by applying
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`the teachings of Holcomb, which includes adding a drive mechanism, control part, and
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`sensor, to the component mounting device. Such a modification to Vermeer by
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
`
`Page 7
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`Holcomb, allows the component mounting device to be automated and programmable in
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`its sequence of movements, thereby controlling the drive mechanism, managing
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`clamping forces of the pair of clamping members, and managing an interval of the
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`pair of clamping members so as to fix an interval of the pair of the second leads. This
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`modification can also provide more precise control of the overall component mounting
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`device.
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`Response to Arguments
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`Applicants’ arguments filed as part of the submission have been fully considered,
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`but have not been deemed to be found as persuasive. Applicants’ assert that the prior
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`art does not teach “wherein the holding groove...the second lead toward the substrate”
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`(lines 29-30 of Claim 6).
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`The examiner disagrees.
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`ln Vermeer, the shape of the tips (24, 25) protruding
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`inwardly is neither excluded by the limitations above, nor by Claim 6 in its entirety. The
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`structure of the clamping members (4, 5) are such that the holding groove (annotated in
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`the above figure) vertically extends downward (in Fig. 1) toward a bottom end tip of the
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`clamping member. This holding groove guides the second lead (7) toward the
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`substrate, or more specifically toward holes in the substrate. Despite the tips protruding
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`inwardly, this does not prevent the leads (7) from being inserted within holes of the
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`substrate. Vermeer explicitly states this at col. 4, lines 60-65. Therefore, it is clear that
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`Vermeer meets the above limitations in Claim 6.
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
`
`Page 8
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`Conclusion
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`Applicants’ amendment filed as part of the submission has necessitated the new
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`ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS
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`MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(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 a first 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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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to A. DEXTER TUGBANG whose telephone number is
`
`(571)272-4570. The examiner can normally be reached on Mon - Fri 8:00 am to 5:00
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`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.
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`

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`Application/Control Number: 15/907,923
`Art Unit: 2896
`
`Page 9
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, JESSICA HAN can be reached on (571) 272-2078. The fax phone number
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`for the organization where this 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 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.
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`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private
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`
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`272-1000.
`
`/A. DEXTER TUGBANG/
`
`Primary Examiner
`Art Unit 2896
`
`