www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
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`16/131,260
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`09/14/2018
`
`HirOki Kobayashi
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`PIPMM-59965
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`6764
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`759°
`52°“
`PEARNE & GORDON LLP
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`05/24/2019
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`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
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`SWARTHOUT~ BRENT
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`2689
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`05/24/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patdoeket@pearne.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
`
`Application No.
`16/131,260
`Examiner
`BRENT SWARTHOUT
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`Applicant(s)
`Kobayashi et al.
`Art Unit
`AIA (FITF) Status
`2689
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 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).
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`Status
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`1)[:] Responsive to communication(s) filed on
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)C] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—10 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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`[:1 Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[j Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`C] Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`httpfiwww.”smogovmatentszinit_events[pph[index.'sp or send an inquiry to PPeredhack@g§ptg.ggv.
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`Application Papers
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`10):] The specification is objected to by the Examiner.
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`is/are: a)D 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
`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)D Some**
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`c)D 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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`3.0 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)
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`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_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190521
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`

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`Application/Control Number: 16/131,260
`Art Unit: 2689
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`1.
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper
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`timewise extension of the ”right to exclude” granted by a patent and to prevent possible harassment by
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`multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting
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`claims are not identical, but at least one examined application claim is not patentably distinct from the
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`reference claim(s) because the examined application claim is either anticipated by, or would have been
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`obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir.
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`1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225
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`USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
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`F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to
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`overcome an actual or provisional rejection based on nonstatutory double patenting provided the
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`reference application or patent either is shown to be commonly owned with the examined application,
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`or claims an invention made as a result of activities undertaken within the scope of a joint research
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`agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(|)(1) - 706.02(|)(3) for
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`applications not subject to examination under the first inventor to file provisions of the AIA. A terminal
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`disclaimer must be signed in compliance with 37 CFR 1.321(b).
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`The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit
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`www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed
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`determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A
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`

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`Application/Control Number: 16/131,260
`Art Unit: 2689
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`Page 3
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`web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal
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`Disclaimer that meets all requirements is auto-processed and approved immediately upon submission.
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`For more information about eTerminal Disclaimers, refer to
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`www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
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`Claims 1-4 and 6-9 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claim 5 1,4 of copending Application No. 15/784,346 in view of
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`Gfeller et al. (US 6,157,870). Eguchi ’346 discloses a component supply management system for feeding
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`tape whereby a determiner detects that tape feeder is close to a component shortage as detected by a
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`detector, and a notifier that notifies an operator that tape is almost terminated (claim 1), except for
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`specifically stating that remaining amount is compared to a threshold.
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`Gfeller teaches detection of end of a tape reel by sensing with detector 54 an empty pocket
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`placed near end of the tape (col. 6, lines 10-20). Placement of an identifying element near end of tape
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`to provide notification is considered to be a threshold location since the operator is informed when tape
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`is at this location so efforts can be undergone to prepare for a second tape reel to be prepared for entry
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`into the machine.
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`It would have been obvious to one of ordinary skill in the art to provide a threshold setting as
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`suggested by Gfeller on a tape in conjunction with a tape feeder system as disclosed by Enuchi ’346, in
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`order that an operator could have had time to prepare a second tape for entry into feeder so that
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`continuous tape operation could have been provided.
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`Regarding claims 2-3, since Gfeller teaches providing a threshold setting on tape, it
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`wouldn’t have mattered if tape feeder was a splicing or non-splicing type, since operator could have
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`been made aware that end of tape was near regardless of what type of feeder was utilized.
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`Regarding claim 4, Eguchi ’346 teaches that remaining components capable of being
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`supplied correspond with remaining length of tape (claim 4).
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`

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`Application/Control Number: 16/131,260
`Art Unit: 2689
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`Page 4
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`Claims 6-9 are rejected for the same reasons as set forth above with regard to claims 1-4.
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`This is a provisional nonstatutory double patenting rejection.
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`2.
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`The following is a quotation of 35 U.S.C. 112(f):
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`(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.
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`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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`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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`This application includes one or more claim limitations that do not use the word ”means,” but
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`are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
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`because the claim limitation(s) uses a generic placeholder that is coupled with functional language
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`without reciting sufficient structure to perform the recited function and the generic placeholder is not
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`preceded by a structural modifier. Such claim limitation(s) is/are: ”threshold setting portion”,
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`”remaining amount detection portion”, ”determination portion”, and ”notification portion” in claim 1.
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`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA
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`35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure
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`described in the specification as performing the claimed function, and equivalents thereof.
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`|f applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or
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`pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
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`(1) amend the claim limitation(s) to avoid it/them
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`being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting
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`sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim
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`

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`Application/Control Number: 16/131,260
`Art Unit: 2689
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`Page 5
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`|imitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being
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`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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`3.
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`Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
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`paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter
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`which was not described in the specification in such a way as to enable one skilled in the art to which it
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`pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 1 sets forth
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`placeholder language in the form of ”setting portion”, ”detection portion”, ”determination portion” and
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`”notification portion”. However, insufficient structure to perform the function of these ”portions” is set
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`forth in the specification. On page 9 of the specification it is stated that a ”detection portion” can be
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`software, but software in and of itself is not a structural element capable of performing the desired
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`determining function, without at least a description of the software, some type of processor and some
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`type of memory or non transitory computer readable medium to store the software on.
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`Claims 6-10 are rejected for the same reasons as claims 1-5, since there is no disclosed structure
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`for performing the method steps.
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`4.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`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, 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 which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
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`Claim 5 1-4 and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohashi et al.
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`(US 2016/0205820) in view of Gfeller et al. (US 6,157,870).
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`Ohashi discloses a system for managing a component supply of tape for a tape feeder whereby
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`notification is given when tape is at tail end of first carrier tape (pars. 90,93), except for specifically
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`stating that a threshold of remaining amount of tape is used to identify tail end of tape.
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`

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`Application/Control Number: 16/131,260
`Art Unit: 2689
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`Page 6
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`Gfeller teaches desirability in a tape feeder system of identifying the approaching end of a tape
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`by providing a threshold setting portion (coded empty pocket sequence) which is detected by a
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`remaining detection detector portion 54 (col. 6, lines 10-25).
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`It would have been obvious to one of ordinary skill in the art to use a threshold setting as
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`suggested by Gfeller in conjunction with an end of tape detection system as disclosed by Ohashi, in
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`order that a second tape could have been prepared for entry to tape feeder while still allowing a
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`continuous presence of tape to take place.
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`Regarding claims 2-3, since Gfeller teaches desirability of providing a threshold setting on tape,
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`choosing to use a splicing tape feeder or non-splicing tape feeder would have been obvious to one of
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`ordinary skill in the art, since feeder type would have been inconsequential since the setting would have
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`identified end of tape for either type of feeder.
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`Regarding claim 4, choosing to have threshold setting defined by remaining length of tape would
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`have been obvious to one of ordinary skill in the art, merely depending on the desired amount of
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`notification that was needed to allow a smooth transformation to take place switching over from a first
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`carrier tape to a second carrier tape.
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`Claims 6-9 are rejected for the same reasons as set forth above.
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`5.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure. Yasuhira discloses a tape feeder system.
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`6.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to BRENT SWARTHOUT whose telephone number is (571)272-2979. The examiner
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`can normally be reached on M-Th from 6 am to 4 pm.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Joseph
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`Feild, can be reached on 571-272-4090. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent Application
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained
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`