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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`16/084,325
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`09/12/2018
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`KOUJI IKEDA
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`PIPMM-59754
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`9674
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`759°
`52°“
`PEARNE & GORDON LLP
`
`07/30/2019
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`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
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`SENGUPTA, SONYA MAZUMDAR
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`1745
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`07/30/2019
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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.
`16/084,325
`Examiner
`SONYA M SENGUPTA
`
`Applicant(s)
`IKEDA, KOUJI
`Art Unit
`1745
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`AIA (FITF) Status
`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
`
`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 9/12/2018.
`[: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)[:] 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—17 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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`E] Claim(s)
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`is/are allowed.
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`Claim(s) l is/are rejected.
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`Claim(s) 2—l 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
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, 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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`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10):] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 9/12/2018 is/are: a). accepted or b)l:] objected to by the Examiner.
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`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)|:] Some**
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`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.|:] Certified copies of the priority documents have been received in Application No.
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`3D 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 Datew.
`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 20190722
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`

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`Application/Control Number: 16/084,325
`Art Unit: 1745
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 103
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`2.
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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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`3.
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`The factual inquiries set forth in Graham v. John Deere C0,, 383 U.S. 1, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`U.S.C.103 are summarized as follows:
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`1. Determining the scope and contents ofthe 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 present in the application indicating obviousness or
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`nonobviousness.
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`4.
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`Claim 1 is are rejected under 35 U.S.C.103 as being unpatentable over Hailman et al. (JP
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`2012—28780) in view of Takachi (JP 6—198231).
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`Hailman et al. teach an automatic mounting device (i.e. electronic part mounting device)
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`comprising:
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`

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`Application/Control Number: 16/084,325
`Art Unit: 1745
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`Page 3
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`a dispenser system with an element supply region (i.e. part feeder), the dispenser
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`system being formed so as to discharge the dispenser medium above a dispenser nozzle (4)
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`against the gravity ofthe nozzle (paragraph 0006), and
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`a mounting head (11) for positioning an element and for applying a dispenser medium
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`(i.e. paste) onto an element (Figure 1).
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`However, Hailman et al. do not teach a shield which is disposed between an element
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`and a dispenser system and which has an opening above a discharge hole. Takachi teaches an
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`adhesive application mechanism in which an applicator (i.e. dispenser) for ejecting an adhesive
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`(i.e. paste) is disposed above an application surface of a member to be coated so that the
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`applicator moves up and down in the perpendicular direction, a protection cover (5) (Le. shield)
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`is held at the end ofthe nozzle ofthe applicator in a state where a spring (9) for pressing the
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`ceiling section (5c) of the protection cover is provided, and the protection cover makes it
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`possible to avoid the application of the adhesive onto a site other than the application
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`region. Therefore, it would have been obvious to one skilled in the art to teach combining the
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`teachings and provide a shield having an opening at the end of the dispenser nozzle so that the
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`application will not exceed a required application position (paragraphs 0023—0025).
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`Allowable Subject Matter
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`5.
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`Claims 2—17 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 ofthe limitations ofthe base claim
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`and any intervening claims.
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`None of the documents disclose the feature of holding a shield at a position separate
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`from and above a discharge hole, or a shield that can be freely attached or detached.
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`

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`Application/Control Number: 16/084,325
`Art Unit: 1745
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`Page 4
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to SONYA M SENGUPTA whose telephone number is (571)272—
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`6019. The examiner can normally be reached on Monday—Friday, 9:30am—6pm.
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`Examiner interviews are available via telephone, in—person, and video conferencing
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`using a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request (AIR) at
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`http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Philip Tucker can be reached on 571—272—1098. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`automated information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/SONYA M SENGUPTA/
`
`Primary Examiner, Art Unit 1745
`
`