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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
`
`16/913,076
`
`06/26/2020
`
`HIROYOSHI NISHIDA
`
`PIPMM-58000US1
`
`3353
`
`masnn
`
`ORI
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`PATEL, DEVANG R
`
`1735
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/15/2022
`
`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)
`
`

`

`
`
`Disposition of Claims*
`1-5 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-5 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* 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 6/26/20 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) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.2 Certified copies of the priority documents have been received.
`2.[v] Certified copies of the priority documents have beenreceived in Application No. 15700305.
`3.2.) 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
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220125
`
`Application No.
`Applicant(s)
`16/913,076
`NISHIDA, HIROYOSHI
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`DEVANG R PATEL
`1735
`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 11/5/21.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby 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\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/913,076
`Art Unit: 1735
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`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 § 112
`
`The following is a quotation 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-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`1.
`
`Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor (or for applications subject
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`to pre-AlA 35 U.S.C. 112, the applicant), regards as the invention.
`
`a.
`
`With respect to claim 1, steps of acquiring setup changing data, the setup
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`changing data including a heat profile, determining whethera broadis present in the
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`reflow device, if it is determined that the reflow condition is to be changed andif it is
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`determined that no board is present, changing the reflow condition (lines 2-10) are
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`ambiguous. First of all,
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`it is unclear what is meant by “heat profile” since the claim
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`does notstate the profile is in reference to what- component, board or something
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`else? Secondly, the claim fails to set forth all necessary elements of a mounting
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`control process such as component, actual control equipment and the
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`relationship between the various elements (e.g. component and board, reflow
`
`

`

`Application/Control Number: 16/913,076
`Art Unit: 1735
`
`Page 3
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`device and controller). The claim does not mention whether a specific part/unit or
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`a person acquires setup data? Regarding presenceof a board, it appears that
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`some type of detector or sensor is necessary to detect presence of a board; the
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`claim lacksthis significant element. In other words, recited claim completely
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`omits essential features, such omission amounting to a gap between the steps,
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`leaving the control process incomplete in scope. Furthermore, actually changing
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`a reflow condition is conditional on two “IF” determinations being satisfied- 1)
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`changing reflow condition & 2) no board present. However, the claim does not
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`state what happens if none or only one of the IF conditions is satisfied? For
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`instance, supposeif it is determined that only board is present and no reflow
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`condition is to be changed. Then, it is unclear what is the next step in the control
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`process? Consequently, the vague languagefails to provide sufficient guidance
`
`and one of ordinary skill in the art would not be able to determines metes and
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`bounds of the control process. For reasons stated above, incomplete process
`
`stepsfails to clearly set forth the scope of the claim, rendering it indefinite.
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`Applicant is requested to clarify the claim by actually reciting all essential
`
`elements and their relationship(s) in terms of executing the control process so
`
`that it is complete. For purpose of examination and in accordance with broadest
`
`reasonable interpretation consistent with specification, present claim 1
`
`is taken to
`
`mean as follows: A component mounting line control process comprising:
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`determining a presence of a board in a reflow device using a detector; a unit
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`acquiring setup changing data including a heat profile of the board: changing a
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`

`

`Application/Control Number: 16/913,076
`Art Unit: 1735
`
`Page 4
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`reflow condition in the reflow device according to the acquired setup changing
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`data.
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`b.
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`With respect to claims 4-5, the limitation “storing a predetermined number
`
`of boards in a storage” is ambiguous becauseit unclear what is implied by “a
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`storage”. Particularly, it is confusing whether this refers to an actual physical
`
`storage or a data storage on a memory/computer? Examiner notes that previous
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`claim 2 recites acquiring data from a storage, which appears to be on some type
`
`of amemory/computer, as shown by storage 11 in Fig. 2 of Applicant’s original
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`specification. It is further noted that element 13a in Fig. 2 describes number-of-
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`boards information. However, storing information about the boardsis different
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`than actually storing the boards. Based on Applicant’s specification, it seems to
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`be a data storage storing information about the number of boards, not the boards
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`as recited. Therefore, recited conflicting language fails to clearly set forth the
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`scope, rendering the claims indefinite. For purpose of examination andin
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`accordance with broadest reasonable interpretation consistent with specification,
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`claims 4-5 are taken to mean: having a predetermined number of total boards;
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`detecting a number of boards exiting the reflow device, wherein it is determined
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`that no board is presentin the reflow device when the detected number of boards
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`exiting the reflow device is equal to the predetermined number of total boards.
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`Appropriate corrections are required.
`
`*Prior art rejection(s) are made below as best understoodin light of indefinite
`
`claims.
`
`Claim Rejections - 35 USC § 102
`
`

`

`Application/Control Number: 16/913,076
`Art Unit: 1735
`
`Page 5
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`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 personshall 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 otherwise available to the public before the effectivefiling date of the claimed
`invention.
`
`1.
`
`Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishii
`
`et al. (JP-2008135658-A, see attached translation).
`
`a.
`
`Regarding claim 1, Ishii discloses a component mounting line control
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`process [0008-0009] comprising: determining a presence of a board in a reflow
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`device using a detector (sensor 15- fig. 1, [0013]); a unit 222 acquiring setup
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`changing data including a heat/temperature profile of the board (fig. 2, [0019]);
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`changing a temperature in the reflow furnace (a reflow condition) according to the
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`acquired setup changing data(fig. 1, [0023-0024)).
`
`b.
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`Asto claim 2, Ishii discloses the control process further comprising
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`reading an identification mark (wireless tag 30) on the board 3 (fig. 1, [(0013]),
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`wherein the setup changing data is acquired from a storage based on the
`
`identification mark [0009].
`
`Claim Rejections - 35 USC § 103
`
`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.
`
`

`

`Application/Control Number: 16/913,076
`Art Unit: 1735
`
`Page 6
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`2.
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`Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et
`
`al. (JP-2008135658-A).
`
`C.
`
`Asto claims 3-5, Ishii discloses detecting the boards entering the reflow
`
`device and exiting the reflow device using sensors(fig. 1), but is silent as to
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`comparing the number of boards. However, one of ordinary skill in the art would
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`readily recognize thatif a total number of boards exiting the reflow device is
`
`equal to a total number of boards entering the reflow device, then there isn’t any
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`board remaining inside the reflow device. There is only a finite number of
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`predictable options for determining the presence of boards in the reflow device:
`
`1) using a detector/sensor to check the reflow device or 2) counting/comparing
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`the boards given a number of total boards. If the number of boards entering the
`
`reflow device and exiting the reflow device is equal to a given total number of
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`boards, then one would easily deducethat all boards are accounted for and there
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`is no board present in the reflow device. The claim would have been obvious
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`because a person of ordinary skill has good reason (accounting for all boards in
`
`the control process) to pursue the known options within his or her technical
`
`grasp. Counting and comparing the number of boards in a control processis
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`likely the product not of innovation but of ordinary skill and common sense. KSR
`
`International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007) (See MPEP 2143-
`
`exemplary rationale). Thus, artisan of ordinary skill would have been motivated to
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`detect and compare the numbersof boards in the method ofIshii in order to
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`ensureefficient control process and readily identify any missing board(s).
`
`

`

`Application/Control Number: 16/913,076
`Art Unit: 1735
`
`Page 7
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`Information Disclosure Statement
`
`The information disclosure statement (IDS) submitted on 11/5/21, 6/26/20 complies with
`
`the provisions of 37 CFR 1.97. Accordingly, the information disclosure statementis
`
`being considered by the examiner.
`
`Inquiry
`
`Any inquiry concerning this communication or earlier communications from the
`examiner should be directed to DEVANG R PATEL whosetelephone number is (571)270-
`3636 and direct fax number is (571)270-4636. The examiner can normally be reached on
`Monday-Friday 8am-5pm, EST.
`If Applicant
`Communications via Internet email are at the discretion of Applicant.
`wishes to communicate via email, a written authorization form mustbefiled by Applicant:
`Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. The form may be
`filed
`via EFS-Web using
`the document description
`Internet Communications
`Authorized. A written authorization for electronic communication may NOT be filed
`through an email communication.
`In limited circumstances, the Applicant may make an
`oral authorization for Internet communication. See MPEP § 502.03.
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`supervisor, Keith Walker can be reached on 571-272-3458. The fax phone number for
`the organization where this application or proceeding is assigned is 571-273-8300.
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`Status information for published
`applications may be obtained from either Private PAIR or Public PAIR. Status information
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`USA OR CANADA)or 571-272-1000.
`
`/DEVANG R PATEL/
`Primary Examiner, AU 1735
`
`