www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/149,779
`
`10/02/2018
`
`Masashi MATSUMORI
`
`PIPMM-55092US1
`
`8103
`
`meen
`
`ORI
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`OSELE, MARK A
`
`1745
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/28/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patdocket@ pearne.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Application No.
`Applicant(s)
`16/149,779
`MATSUMOR etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`MARK A OSELE
`1745
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on
`CA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)JThis action is non-final.
`3)C) An election was made by the applicant in responseto a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`4) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparfe Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`6 7
`
`Disposition of Claims*
`1-5 is/are pending in the application.
`5)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`[) Claim(s)__is/are allowed.
`Claim(s) 1-5 is/are rejected.
`() Claim(s) _ is/are objectedto.
`8)
`9) ( Claim(s)
`are subject to restriction and/or election requirement
`“ If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11) The drawing(s) filed on October 2, 2018 is/are: a)[¥} accepted or b)L) 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) Acknowledgmentis made ofa claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)1) None of the:
`b)( Some**
`a)) All
`1.1) Certified copies of the priority documents have been received.
`2.[¥} Certified copies of the priority documents have been received in Application No. 14/867,061.
`3.1) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(7) Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20190322
`
`

`

`Application/Control Number: 16/149,779
`Art Unit: 1745
`
`Page 2
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`DETAILED CORRESPONDENCE
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`Notice of Pre-AlA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 102
`
`2.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103)is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`3.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section madein this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or otherwiseavailable to the public before the effectivefiling date of the claimed
`invention.
`
`4.
`
`Claim(s) 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Campisi et al. (U.S. Patent # 4,610,083). Campisi et al. shows an electronic
`
`component supply apparatus that transports a component supply tape which has a
`
`plurality of accommodation sections and which accommodates an electronic component
`
`in each of the accommodation sections and is covered with a cover tape, toa
`
`component picking-up position and that supplies each of the electronic components
`
`

`

`Application/Control Number: 16/149,779
`Art Unit: 1745
`
`Page 3
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`accommodatedin each of the accommodation sections to a component mounting
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`apparatus, the electronic component supply apparatus comprising: a main body unit
`
`which is provided with a transport path, 24, that guides the component supply tape, 14,
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`from an insertion port, through which the component supply tape is inserted, to a
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`discharge port, through which the component supply tape is discharged; a component
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`supply tape transport unit that transports the component supply tape inserted through
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`the insertion port toward the discharge port, and positions the accommodation section
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`at the component picking-up position on an upstream side from the discharge port; a
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`cover-tape processing unit, 24c, 32, 34, 38, that peels off or cuts open the cover tape of
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`the component supply tape which hasyet to reach the component picking-up position
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`and that exposes the electronic component accommodated in the accommodation
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`section; an electronic component detecting unit, 54, 56, that detects an electronic
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`component accommodated in the accommodation section of the component supply tape
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`which hasyet to pass the cover tape processing unit on the transport path (Fig. 1); a
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`determination unit that determines presence or absence of an electronic componentin
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`the accommodation section based on information from the electronic component
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`detecting unit (column 4, lines 25-43); and a control unit that controls the component
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`supply tape transport unit based on a determination result of the determination unit
`
`(Figs. 3-4; column 6, lines 6-32).
`
`Regarding claim 2, Campisi teaches that the control unit determines that the
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`electronic components are depleted in the component supply tape when a
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`determination result of the determination unit is "absence" or determination results of
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`the determination unit are "absence"a plurality of consecutive times and notifies the
`
`

`

`Application/Control Number: 16/149,779
`Art Unit: 1745
`
`Page 4
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`component mounting apparatus of an indication thereof (column 10, lines 28-54). All
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`further limitations are method of use limitations, which are only given patentable weight
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`in an apparatus claim to the extent that the apparatus must be capable of performing
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`the method steps. The apparatus of Campisi, with a slight modification in the
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`programming, is capable of causing the component supply tape transport unit to
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`transport the depleted component supply tape to the discharge port after a final
`
`component Is picked up at the component picking-up position.
`
`Regarding claim 3, Campisi teaches the control unit counts the number of
`
`consecutive vacancies (column 9, lines 28-40) and further teaches that the control unit
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`determines that a leading electronic component is detected when a determination result
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`of the determination unit is first "presence" after a leading end of the component supply
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`tape passes the electronic component detecting unit and causes the component supply
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`tape transport unit to transport the component supply tape so that the leading electronic
`
`component is positioned at the component picking-up position (column 9, line 55 to
`
`column 10, line 2).
`
`Regarding claim 4, Campisi showsthe electronic componentdetecting unit to be
`
`an optical sensor (column 4, lines 28-42).
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly ownedasof the effective filing date of the claimed invention(s) absent any
`
`evidenceto the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and effective filing dates of each claim that was not commonly
`
`

`

`Application/Control Number: 16/149,779
`Art Unit: 1745
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`Page 5
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`ownedas ofthe effectivefiling date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`6.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, 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.
`
`7.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under 35 U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
`
`8.
`
`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Campisi et
`
`al. (U.S. Patent # 4,610,083) in view of Harada (United States Patent #4,675,993) or
`
`Lyndaker et al. (United States Patent Application Publication # 2003/0219330). As
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`shownin paragraph 4 above, Campisi et al. showsthe invention of claim 1, butfails to
`
`showthe electronic component detecting unit is a magnetic sensor.
`
`

`

`Application/Control Number: 16/149,779
`Art Unit: 1745
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`Page 6
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`Harada also showsan electronic component supply apparatus wherein a
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`magnetic sensor which senses magnetic ink applied to each electronic component
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`(column 6, lines 15-21) can replace an optical sensor (column 3, lines 30-47) for
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`determining the location of a component andrelaying this information to a controller.
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`Lyndaker et al. shows an electronic component supply apparatus wherein a
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`sensor system is used which creates a magnetic field wherein the presence of a metal
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`component within the magnetic field is detected by the sensor (paragraph 0041).
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`Lyndaker et al. showsthis to be an alternative to an optical sensor (paragraph 0039)
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`and may be preferable for small components (paragraph 0041).
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`It would have been obvious to one ofordinary skill in the art at the time offiling
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`the application to replace the optical sensor of Campisi et al. with a magnetic sensor
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`because Harada and Lyndaker et al. show two different types of magnetic sensor which
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`are shownto be interchangeable with an optical sensor in an electronic component
`
`feeding apparatus.
`
`Double Patenting
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`9.
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine groundedin public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
`
`least one examined application claim is not patentably distinct from the reference
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`claim(s) because the examined application claim is either anticipated by, or would have
`
`

`

`Application/Control Number: 16/149,779
`Art Unit: 1745
`
`Page 7
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`been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
`
`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
`
`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timelyfiled terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321 (d)
`
`may be used to overcome an actual or provisional rejection based on nonstatutory
`
`double patenting provided the reference application or patent either is shown to be
`
`commonly owned with the examined application, or claims an invention made as a
`
`result of activities undertaken within the scope of a joint research agreement. See
`
`MPEP § 717.02 for applications subject to examination under the first inventor to file
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(I)(1) -
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`706.02(l)(3) for applications not subject to examination under the first inventor tofile
`
`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
`
`1.321(b).
`
`The USPTOInternet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
`
`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
`
`PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may
`
`befilled out completely online using web-screens. An eTerminal Disclaimer that meets
`
`all requirements is auto-processed and approved immediately upon submission. For
`
`more information about eTerminal Disclaimers, refer to
`
`
`
`

`

`Application/Control Number: 16/149,779
`Art Unit: 1745
`
`Page 8
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`10.
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`Claims 1 and 4 are rejected on the ground of nonstatutory double patenting as
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`being unpatentable over claim 1 of U.S. Patent No. 10,123,468 in view of Campisietal.
`
`(U.S. Patent # 4,610,083). Claim 1 of U.S. Patent 10,123,468 shows an electronic
`
`component supply apparatus comprising: a main body unit; a component supply tape
`
`transport unit; a cover tape processing unit; an electronic component detecting unit; and
`
`a determination unit including all of the instantly claimed limitations of those
`
`componentsbut fails to show the instantly claimed control unit.
`
`Campisi et al. also shows an electronic component supply apparatus including a
`
`control unit that controls the component supply tape transport unit based on a
`
`determination result of the determination unit (Figs. 3-4; column 6, lines 6-32).
`
`It would
`
`have been obvious to one of ordinary skill in the art at the time of filing the application to
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`add the control unit of Campisiet al. into the apparatus of claim 1 of U.S. Patent No.
`
`10,123,468 because Campisi et al. teaches this control unit allows for continuous
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`operation of the feeding apparatus even when an accommodation section or sections
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`does not contain an electronic component (column 8, lines 54-68).
`
`Conclusion
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`11.
`
`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure. Chi (United States Patent Application Publication #
`
`2015/0053809) shows an automated electronic component supply apparatus similar to
`
`applicant’s invention.
`
`

`

`Application/Control Number: 16/149,779
`Art Unit: 1745
`
`Page 9
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`12.—Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MARK A OSELE whosetelephone number is (571)272-
`
`1235. The examiner can normally be reached on M-F 10-6.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Philip Tucker can be reached on 571-272-1095. The fax phone number 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 accessto the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197(toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automatedinformation
`
`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/MARK A OSELE/
`Primary Examiner, Art Unit 1745
`March 23, 2019
`
`