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
`
`15/952,309
`
`04/13/2018
`
`TETSUSHI OOHORI
`
`PIPMM-59025
`
`1010
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`12/10/2020
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`COLLINS GARY
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`2115
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/10/2020
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
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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.
`15/952,309
`Examiner
`GARY COLLINS
`
`Applicant(s)
`OOHORI et al.
`Art Unit
`2115
`
`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 13 April 2018.
`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)
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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.
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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) fl is/are pending in the application.
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`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
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`
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`[:1 Claim(ss) _ is/are allowed.
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`Claim(ss) 1 —2 ,4—5 and 7—8 is/are rejected.
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`Claim(ss) 3—and 6 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.jjgptgng/patents/init_event§/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.
`
`11). The drawing(s) filed on 13 April 2018 is/are: a). accepted or b)D objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)C] Some**
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`c)[j None of the:
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`1.. Certified copies of the priority documents have been received.
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`2E] Certified copies of the priority documents have been received in Application No.
`
`3C] 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)
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`1)
`
`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 4/13/2018; 8/8/2019; 2/28/2019; 9/30/2020
`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 20201125
`
`

`

`Application/Control Number: 15/952,309
`Art Unit: 2115
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA 0r AIA Status
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`The present application, filed on or after March 16, 2013,
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`is being examined under the
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`first inventor to file provisions of the AIA.
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`Allowable Subject Matter
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`Claims 3 and 6 are objected to as being dependent upon a rejected base claim, but would
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`be allowable if rewritten in independent form including all of the limitations of the base claim
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`and any intervening claims.
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`Claim Interpretation
`
`The following is aquotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An element in a claim for a combination may be expressed
`as a means or step for performing a specified function without the recital of structure, material, or acts
`in support thereof, and such claim shall be construed to cover the corresponding structure, material, or
`acts described in the specification and equivalents thereof.
`
`The following is a quotation of pre—AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing a
`specified function without the recital of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material, or acts described in the specification
`and equivalents thereof.
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`The claims in this application are given their broadest reasonable interpretation using the
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`plain meaning of the claim language in light of the specification as it would be understood by
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`one of ordinary skill
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`in the art. The broadest reasonable interpretation of a claim element (also
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`

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`Application/Control Number: 15/952,309
`Art Unit: 2115
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`Page 3
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`commonly referred to as a claim limitation) is limited by the description in the specification
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`when 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is invoked.
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`As explained in MPEP § 2181, subsection 1, claim limitations that meet the following
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`three—prong test will be interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
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`paragraph:
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`(A)
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`the claim limitation uses the term “means” or “step” or a term used as a substitute for
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`“means” that is a generic placeholder (also called a nonce term or a non—structural term
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`having no specific structural meaning) for performing the claimed function;
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`(B)
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`the term “means” or “step” or the generic placeholder is modified by functional
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`language,
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`typically, but not always linked by the transition word “for” (eg, “means for”) or another
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`linking word or phrase, such as “configured to” or “so that”; and
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`(C)
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`the term “means” or “step” or the generic placeholder is not modified by sufficient
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`structure, material, or acts for performing the claimed function.
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`Use of the word “means” (or “step”) in a claim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C.
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`112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is
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`interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is rebutted when
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`the claim limitation recites sufficient structure, material, or acts to entirely perform the recited
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`function.
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`Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that
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`the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre—AIA 35
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`U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under
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`35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim
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`

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`Application/Control Number: 15/952,309
`Art Unit: 2115
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`Page 4
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`limitation recites function without reciting sufficient structure, material or acts to entirely
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`perform the recited function.
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`Claim limitations in this application that use the word “means” (or “step”) are being
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`interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, except as
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`otherwise indicated in an Office action. Conversely, claim limitations in this application that do
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`not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre—
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`AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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`This application includes one or more claim limitations that do not use the word “means,”
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`but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
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`paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with
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`functional language without reciting sufficient structure to perform the recited function and the
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`generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
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`77
`(4
`“production plan acquirer material status acquirer” and “material preparation instructor” in
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`claim 1.
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`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or
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`pre—AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the
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`corresponding structure described in the specification as performing the claimed function, and
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`equivalents thereof.
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`If applicant does not intend to have this/these limitation(s)
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`interpreted under 35 U.S.C.
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`112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, applicant may:
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`(1) amend the claim
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`limitation(s)
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`to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112,
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`sixth paragraph (e. g., by reciting sufficient structure to perform the claimed function); or (2)
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`present a sufficient showing that the claim limitation(s)
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`recite(s) sufficient structure to perform
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`

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`Application/Control Number: 15/952,309
`Art Unit: 2115
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`Page 5
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`the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre—AIA
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`35 U.S.C. 112, sixth paragraph.
`
`Claim Rejections - 35 USC § 112
`
`The following is aquotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The 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.
`
`The following is a quotation of 35 U.S.C. 112 (pre—AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointingout and distinctly
`claiming the subject matter which the applicant regards as his invention.
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`Claims 5 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which the inventor or a joint inventor (or for applications subject to pre —AIA 35 U.S.C.
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`112, the applicant), regards as the invention.
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`Claim 5 recites the limitation "the number of the mounting substrates to be produced."
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`There is insufficient antecedent basis for this limitation in the claim.
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`Regarding claim 7, the phrase "preferentially" renders the claim indefinite because it is
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`unclear whether the limitation(s)
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`following the phrase are part of the claimed invention. See
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`MPEP § 2173.05(d).
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`Claim Rejections - 35 USC § 102
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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.
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`

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`Application/Control Number: 15/952,309
`Art Unit: 2115
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`Page 6
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`Claim(s) 1—2, 4—5 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticpated by
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`CHANG et al. US 2013/0002436 A1
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`CHANG teaches:
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`1. A material management apparatus comprising:
`
`0
`
`a production plan acquirer [Fig. 1A analyzing module 120] that acquires production
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`plan information including a type of a mate rial for bonding a component to a
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`substrate [para. 0023, “The analyzing module 120 is connected to a production
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`managing system 2 for accessing production information associated with production lines
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`from the production managing system 2, and analyzing the amount of solder paste cans to
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`be used according to the production information.”],
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`the material being used for
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`production of a mounting substrate obtained by mounting the component on the
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`substrate [solder paste is used for mounting components];
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`0
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`a mate rial status acquirer [inquiring module 130] that acquires mate rial status
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`information on the mate rial preserved in a mate rial preservatory which preserves
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`an accommodating portion in which the mate rial is accommodated [para. 0023, “The
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`inquiring module 130 inquires the solder pastes cans, which meet the analysis result of
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`the analyzing module 120, from the storage room according to the storage information,
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`which is stored in the data bank 100 and includes the mold number of the solder paste
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`can, the date at which solder paste is placed into the solder paste can, and the storage
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`amount of the solder paste can, and based on firs—in first—out.”]; and
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`o
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`a mate rial preparation instructor [warm up monitoring module 140] that creates and
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`transmits an instruction to prepare the accommodating portion to be put out from
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`

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`Application/Control Number: 15/952,309
`Art Unit: 2115
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`Page 7
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`the mate rial preservatory, based on the production plan information and the
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`material status information [para. 0025, “The warm up monitoring module 140
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`receives the solder paste can, which meets the analysis result of the analyzing module
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`120, from the storage room 11 according to the inquiring result of the inquiring module
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`130, and delivers the solder paste can from the storage room 11 to the warm up room 12
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`for the warm up treatment via a transportation structure (for example, a transportation
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`belt, not shown). When the solder paste can is delivered into the warm up room 12, the
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`information of the solder paste canis scanned by the warm up monitoring module 140,
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`such that the storage information is obtained.”]
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`2. The material management apparatus of Claim 1,
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`wherein the mate rial preservatory has a function of preserving the accommodating
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`portion at low temperature [Fig. 1A storage room 11] and normal temperature
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`higherthan the low temperature [Fig. 1A warm up room 12],
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`the accommodating portion being a portion in which the material is accommodated
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`[this language is redundant],
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`Whe re in the mate rial status information include s a pre s e rvation state of the
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`accommodating portion [Fig. 2 S209], and
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`wherein in a case Where the preservation state of the accommodating portion to be
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`put out is low temperature preservation, the mate rial preparation instructor
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`instructs for transporting the accommodating portion to be put out to normal
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`te mpe rature pre se rvation from the low te mpe rature pre se rvation [Fig 2 S21 1].
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`

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`Application/Control Number: 15/952,309
`Art Unit: 2115
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`Page 8
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`CHANG teaches:
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`4. The material management apparatus of Claim 1, further comprising:
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`a production state acquirerthat acquires production state information including at
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`least one of a production start time of the mounting substrate and a re maining
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`amount of the mate rial used in production equipme nt for producing the mounting
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`substrate [Fig 2 $207]; and
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`a preparation finish time calculator that calculates a preparation finish time, at
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`Which preparation for putting out the accommodating portion fi'om the mate rial
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`preservatory is finished, based on the production state information, wherein the
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`material preparation instructor instructs for finishing the preparation for putting
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`out the accommodating portion before the preparation finish time [para. 0011].
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`CHANG teaches:
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`5. The material management apparatus of Claim 1,
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`wherein the production plan information includes the number of the mounting
`
`substrate s to be produce d, Whe rein the apparatus further comprise s a pre paration
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`finish time calculator that calculates a preparation finish time, at Which preparation
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`for putting out the accommodating portion from the mate rial preservatory is
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`finis he d, base d on the numbe r of the mounting s ubs trates to be produce d and a
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`consumption amount of the mate rials consumed per mounting substrate to be
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`produce d, and wherein the mate rial preparation instructor instructs for finishing
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`

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`Application/Control Number: 15/952,309
`Art Unit: 2115
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`Page 9
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`the preparation for putting out the accommodating portion be fore the preparation
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`finish time [para. 0011].
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`Regarding method claim 8, this claim recites the method for implementing the features
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`recited in the apparatus claim above and is rejected on the same grounds and rationale as claim 1
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`above.
`
`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to GARY COLLINS whose telephone number is (571)270—0473.
`
`The examiner can normally be reached on Monday — Friday 9—530 EST.
`
`Examiner interviews are available via telephone,
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`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
`
`htth/www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Thomas Lee can be reached on (571) 272—3667. 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
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`applications is available through Private PAIR only. For more information about the PAIR
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`Application/Control Number: 15/952,309
`Art Unit: 2115
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`Page 10
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`system, see httpsJ/ppair—my.uspto.gov/pair/PrivatePair. Should you have questions on access to
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`1000.
`
`/GARY COLLINS/
`
`Examiner, Art Unit 2115
`
`