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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 22313-1450
`
`17/298,671
`
`06/01/2021
`
`HIDEKI SUMI
`
`PIPMM-65392
`
`8297
`
`banpans
`
`ORI
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`TUGBANG, ANTHONY D
`
`2896
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/09/2024
`
`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*
`____ 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`5a) Of the above claim(s) __ is/are withdrawn from consideration.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) 1-4 is/are rejected.
`(J Claim(s) _ is/are objected to.
`C) Claim(s
`are subjectto 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
`is/are: a)C] 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)2) 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)L) All
`1. Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.4.) 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)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240503
`
`Application No.
`Applicant(s)
`17/298,671
`SUMI etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`A. DEXTER TUGBANG
`2896
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 6/1/21.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) 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)(2) 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: 17/298,671
`Art Unit: 2896
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined
`
`underthe first inventor to file provisions of the AIA.
`
`Claim Interpretation
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An element in a claim for a combination may be
`expressed as a meansor 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.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An elementin a claim for a combination may be expressed as a meansor step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`suchclaim shall be construed to cover the correspondingstructure, material, or acts
`described in the specification and equivalents thereof.
`
`This application includes one or more claim limitations that use the word “means”
`
`or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AlA 35
`
`U.S.C. 112, sixth paragraph becausethe claim limitation(s) recite(s) sufficient structure,
`
`materials, or acts to entirely perform the recited function.
`
`Suchclaim limitations are:
`
`In Claim 1 “a characteristic inspection device” (lines 11-13), and “a management
`
`device” (lines 14-15). These limitations fail to comply with the 3-prong analysis. See
`
`MPEP § 2181(I).
`
`In this case, they do not meet prong (C) as each generic placeholder
`
`is further modified by additional and sufficient structure. The “characteristic inspection
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`device” is modified to include the structure of “an error information transmitter” (lines 27-
`
`

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`Application/Control Number: 17/298,671
`Art Unit: 2896
`
`Page 3
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`30). The “managementdevice” is modified to include a “stop command transmitter”
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`(lines 37-38).
`
`Becausethis/these claim limitation(s) is/are not being interpreted under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being
`
`interpreted to cover only the corresponding structure, material, or acts described in the
`
`specification as performing the claimed function, and equivalents thereof.
`
`If applicant intends to have this/theselimitation(s) interpreted under 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
`
`(1) amend the claim
`
`limitation(s) to remove the structure, materials, or acts that performs the claimed
`
`function; or (2) present a sufficient showing that the claim limitation(s) does/do notrecite
`
`sufficient structure, materials, or acts to perform the claimed function.
`
`Claim Objections
`
`Claim 1
`
`is objected to becauseofthe following informalities.
`
`In Claim 1, “an transmitter” (line 16) should be changed to —a transmitter--.
`
`Appropriate correction is required.
`
`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.
`
`

`

`Application/Control Number: 17/298,671
`Art Unit: 2896
`
`Page 4
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`Claims 1 through 4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112
`
`(pre-AlA), second paragraph, as being indefinite for failing to particularly point
`
`out and distinctly claim the subject matter which the inventor or a joint inventor
`
`(or for applications subject to pre-AlA 35 U.S.C. 112, the applicant), regards as the
`
`invention.
`
`In Claim 1, the phrase of “mounters that convey”(line 2) is misleading and
`
`renders the claim as indefinite. The term “mounters” has a widevariety of
`
`interpretations in the manufacturing art related to circuits and how components are
`
`mounted on boards, bases or substrates.
`
`It can mean an individualstructural element
`
`(e.g. nozzle) that can mount a componentto a board. Or it can mean an entire machine
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`(e.g. head) that includes a numberof structural elements that mount components to a
`
`board. What it may not mean is something that “convey(s)” a board. For example, a
`
`conveyor is a structure that would typically convey a board. This is supported by the
`
`applicants’ own example disclosed as a transport conveyor (11 or 71) in Figure 1
`
`in their
`
`specification, which is a separate structural element from a component mounter(5). So
`
`the phrase provides a contradiction between what mounts and what conveys, which
`
`raises a great deal of confusion.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basisfor all
`
`obviousness rejections set forth 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 effectivefiling date of the claimed invention to a person having
`
`

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`Application/Control Number: 17/298,671
`Art Unit: 2896
`
`Page 5
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`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.
`
`Claims 1 through 4, as best understood, are rejected under 35 U.S.C. 103 as
`
`being unpatentable over U.S. Publication 2015/0289426 to Mantani etal
`
`(hereinafter “Mantani”) in view of the teachings of U.S. Publication 2012/0317804
`
`to Endo et al (hereinafter “Endo”) and U.S. Publication 2008/0014772 to Ogura et
`
`al (hereinafter “Ogura”).
`
`Claim1: Mantani discloses a component mounting system comprising:
`
`a plurality of component mounters (e.g. M4, M5, M6, in Fig. 1);
`
`conveyors (e.g. 21, 41, in Fig. 2) that convey, sequentially from upstream, a
`
`board (e.g. 4) having a product area and an inspection area (e.g. E) in which an
`
`inspection electrode (e.g. 6) for inspection of electrical characteristics (e.g. solder) is
`
`disposed,
`
`each of the component mountersinstalling a component (e.g. 5) supplied by a
`
`component feeder(e.g. 43) in the product area,installing an inspection-required
`
`component(e.g. another 5) that requires the inspection of the electrical characteristics
`
`among the component supplied by the componentfeederin the inspection area, and
`
`conveying out the board;
`
`a characteristic inspection device (e.g. 32, in Fig. 3) that inspects the electrical
`
`characteristics (solder) of the inspection-required componentinstalled in the inspection
`
`area by any of the plurality of component mounters (e.g. 4 [0035]); and
`
`a managementdevice(e.g. 3, in Fig. 1) that managesthe plurality of component
`
`mounters and the characteristic inspection device (e.g. § [0026]), wherein
`
`

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`Application/Control Number: 17/298,671
`Art Unit: 2896
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`Page 6
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`each of the plurality of component mountersincludes a transmitter (e.g. 50, in
`
`Fig. 6b) for transmitting inspection area componentinformation (related to solder) to the
`
`managementdevice, the inspection area componentinformation including identification
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`information of the component mounter, identification information of the board, and
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`identification information of the inspection-required componentinstalled in the
`
`inspection area to record aninstalled state of the inspection-required componentin the
`
`inspection area (e.g. {FJ [0048], [(0049]),
`
`the characteristic inspection device includes an error determiner (e.g. 24, in Fig.
`
`3) for determining whetheror not the inspection-required componentinstalled in the
`
`inspection area is an error component (e.g. one not correctly position, 7J [0036],
`
`[0037]), and
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`an error information transmitter (e.g. 36, in Fig. 3) for transmitting error
`
`information (e.g. flag “O” of “invalidity, § [0049]) to the managementdevice, the error
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`information being information on the inspection-required component determined to be
`
`the error component by the error determiner (e.g. also see JJ [0039], [0048], and
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`the managementdevice includes an error occurrence location identifier (e.g. 37,
`
`in Fig. 7a) for identifying an error component mounter based on the error information
`
`transmitted by the error information transmitter, the error component mounterbeing
`
`includedin the plurality of component mountersandinstalling the inspection-required
`
`component is installed in the inspection area (e.g. Ff [0050], [0051)).
`
`While Mantani does not appear to mention the term of “error”, an error can be
`
`interpreted as any condition or operation thatis incorrect. As is in the example noted
`
`above, the error determiner is read as an inspection camera (24) for determining
`
`

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`Application/Control Number: 17/298,671
`Art Unit: 2896
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`Page 7
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`whetheror not the inspection-requirement component (5) installed in the inspection area
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`(e.g. E) is an error component, based on correction data (58) as to the component being
`
`mounted. Anerror offlag “O”(invalidity) is determined and a correction is initiated (e.g.
`
`{4 [0056], [0057)).
`
`Mantani doesnot explicitly teach a pattern electrode incorporated in an electrical
`
`product and a siop commandtransmitter.
`
`Endo discloses component mounters (e.g. M1, M2, M3, in Fig. 1) that include
`
`mounting components to a board (e.g. 3). The boards eachinclude a product area in
`
`which a pattern electrode (e.g. 18a or 18b in Fig 7) is incorporated in an electrical
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`product (PCB application including a bump component 18A or chip 18B) thatis
`
`disposed in an inspection area with an inspection electrode (e.g. 3b) for inspection of
`
`electrical characteristics (solder 19).
`
`It would have been obvious to one ofordinary skill in the art before the effective
`
`filing date of the claimed invention that the componentor inspection-required
`
`componentof Mantani either already includes, or should be modified to add, a pattern
`
`electrode incorporated in the electrical product of the componentor inspection-required
`
`component, in the manner taught by Endo, to provide art-recognized equivalent
`
`electrical connections of components mounted on a board bysolder.
`
`Mantani further discloses an algorithm (flowchart in Fig. 9) for mounting,
`
`management and inspection operations.
`
`Ogura discloses a similar algorithm (flowchart in Fig. 4) for a component
`
`mounting system that includes a stop commandtransmitter (output alarm at 200) for
`
`stopping an operation of an error component mounter(e.g. 240, in Fig. 4) identified by
`
`

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`Application/Control Number: 17/298,671
`Art Unit: 2896
`
`Page 8
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`an error occurrencelocation identifier (e.g. 170 in Fig. 4, § [0053]) . The stop
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`commandtransmitter stops operations (e.g. 230, 240, in Fig. 4) of mounting by
`
`bypassing them.
`
`Regarding Claim 3, Ogura further discloses that the stop command transmitter
`
`stops the operation of the error component mounter by transmitting a stop command
`
`(alarm) for stopping the operation of the error component mounter(e.g. § [0053)).
`
`Regarding Claim 4, Ogura further discloses that the error component mounterto
`
`which the stop commandis transmitted includes display (e.g. 70, in Fig. 1) for displaying
`
`at least one of information of the error component and information of the component
`
`feeder that has supplied the error component(e.g. {4 [0042], [(0043]).
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to have modified the algorithm of Mantani by adding
`
`a stop commandtransmitter with a display, as taught by the algorithm of Ogura,to
`
`provide an addedvalue of safety for stopping operations when an inspection-required
`
`component, or any component, is an error component, or is in error when not positioned
`
`correctly asit relates to electrical characteristics (e.g. solder).
`
`Regarding Claim 2, within the modified system of Mantani in view of Ogura,it
`
`would have been obvious that the stop commandtransmitter would stop all of the
`
`component mounterspositioned on a downstream side of the error component mounter
`
`among the plurality of component mounters, based on the modified algorithm bypassing
`
`all of the component mounters.
`
`

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`Application/Control Number: 17/298,671
`Art Unit: 2896
`
`Page 9
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`Conclusion
`
`The prior art madeof record and not relied upon is considered pertinent to
`
`applicant's disclosure.
`
`a)
`
`Japanese Patent Publication, JP 2010-251398 discloses a component
`
`mounting system that includes an error determiner (30a, in Fig. 3) for determining
`
`whetheror not an inspection-required component installed in an inspection area is an
`
`error component (see SOLUTION).
`
`b)
`
`Non-Patent Literature IEEE Publication to Leta et al, entitled
`
`“Computational System to Detect Defects in Mounted and Bare PCB Based on
`
`Connectivity and Image Correlation”, discloses pattern electrodes incorporated in an
`
`electrical product (Figure 1, see entire document).
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to A. DEXTER TUGBANG whosetelephone numberis
`
`(571)272-4570. The examiner can normally be reached Mon - Fri 8:00 am to 5:00 pm.
`
`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 AutomatedInterview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, JESSICA HAN can be reached on (571) 272-2078. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 17/298,671
`Art Unit: 2896
`
`Page 10
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`
`/A. DEXTER TUGBANG/
`Primary Examiner
`Art Unit 2896
`
`