www.uspto.gov
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`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
`
`07/09/2019
`
`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 June 19, 2019.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`2a)l¥) This action is FINAL.
`2b) C) This action is non-final.
`3)() An election was made bythe 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 meritsis
`closed in accordance with the practice under Exparfe Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`6 7
`
`Disposition of Claims*
`1.and 3-5 is/are pending in the application.
`5)
`Claim(s)
`5a) Of the above claim(s)__ is/are withdrawn from consideration.
`C] Claim(s} _is/are allowed.
`Claim(s) 1 and 3-5 is/are rejected.
`8) ( Claim(s)__ is/are objected to.
`9)
`(4 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://www.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 __is/are: a). accepted or b)(_) 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)Q All
`1.1) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`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 20190704
`
`

`

`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
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`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
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`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
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`the same under either status.
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`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:
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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 otherwiseavailable to the public before the effectivefiling date of the claimed
`invention.
`
`4.
`
`Claim(s) 1 and 3-4 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
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`component supply apparatus that transports a component supply tape which has a
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`plurality of accommodation sections and which accommodates an electronic component
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`in each of the accommodation sections and is covered with a cover tape, toa
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`component picking-up position and that supplies each of the electronic components
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`

`

`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
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`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
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`(Figs. 3-4; column 6, lines 6-32).
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`Campisi further teaches that the control unit determinesthat the electronic
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`components are depleted in the component supply tape when a determination result of
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`the determination unit is "absence" or determination results of the determination unit are
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`"absence" a plurality of consecutive times and notifies the component mounting
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`

`

`Application/Control Number: 16/149,779
`Art Unit: 1745
`
`Page 4
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`apparatus of an indication thereof (column 10, lines 3-54). All further limitations are
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`method of use limitations, which are only given patentable weight in an apparatus claim
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`to the extent that the apparatus must be capable of performing the method steps. The
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`apparatus of Campisi, with a slight modification in the programming, is capable of
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`calculating component pitch feeding times which are needed until the final component
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`reaches the componentpicking up position (column 9, line 55 to column 10, line 2).
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`Regarding claim 3, Campisi teaches the control unit counts the number of
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`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
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`component is positioned at the component picking-up position (column 9, line 55 to
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`column 10, line 2).
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`Regarding claim 4, Campisi showsthe electronic componentdetecting unit to be
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`an optical sensor (column 4, lines 28-42).
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`Claim Rejections - 35 USC § 103
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`5.
`
`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly ownedasof the effective filing date of the claimed invention(s) absent any
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`evidenceto the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`ownedas ofthe effectivefiling date of the later invention in order for the examiner to
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`

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`Application/Control Number: 16/149,779
`Art Unit: 1745
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`Page 5
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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)
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`prior art against the later invention.
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`6.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`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
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`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.
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`8.
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`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Campisi et
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`al. (U.S. Patent # 4,610,083) in view of Harada (United States Patent #4,675,993) or
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`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
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`showthe electronic component detecting unit is a magnetic sensor.
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`

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`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 and relaying 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 twodifferent types of magnetic sensor which
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`are shownto be interchangeable with an optical sensor in an electronic component
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`feeding apparatus.
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`Response to Arguments
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`9.
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`Applicant's arguments filed June 19, 2019 have been fully considered but they
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`are not persuasive. Applicant argues that the apparatus of Campisiet al. is not capable
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`of performing the newly added methodof use limitation of calculating component pitch
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`feeding times which are needed until the final component reaches the component
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`picking up position. Campisi et al. shows that the controller moves the component
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`supply tape N + 1 times to mount N + 1 components ona printed circuit board but stops
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`movement of the component supply tape while a new circuit board is being positioned in
`
`

`

`Application/Control Number: 16/149,779
`Art Unit: 1745
`
`Page 7
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`the mounting position followed by a resumption of movement of the component supply
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`tape (column 10, lines 3-30). The controller of Campisi et al. controls the feeding of the
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`component supply tape only at times whenaprinted circuit board which is not
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`completely filled is located in the mounting position. This is either a description of
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`calculating component pitch feeding times or an indication that the controller is capable
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`of calculating component pitch feeding times.
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`Conclusion
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`10.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR 1.136(a).
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`A shortenedstatutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst replyis filed within
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`TWO MONTHS ofthe mailing date ofthis final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortenedstatutory 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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`

`

`Application/Control Number: 16/149,779
`Art Unit: 1745
`
`Page 8
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`11.
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`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
`July 4, 2019
`
`