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 22313-1450
`
`17/637,101
`
`02/22/2022
`
`SYOICHI NISHI
`
`PIPMM-66482
`
`9490
`
`rnsans
`
`ORI
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`KIM, PAUL D
`
`3729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/08/2024
`
`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)
`
`

`

`Office Action Summary
`
`Application No.
`17/637,101
`Examiner
`PAUL D KIM
`
`Applicant(s)
`NISHI etal.
`Art Unit
`3729
`
`AIA (FITF) Status
`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)C) Responsive to communication(s) filed on
`CA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon
`
`2a)C) 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)() 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.
`
`Disposition of Claims*
`1-15 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) 1,4,6-8,11 and 13-15 is/are rejected.
`Claim(s) 2-3,5,9-10 and 12 is/are objected to.
`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:/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)0) The drawing(s) filedon__ 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)(¥) 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)Y) 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.
`3.2.) 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)
`
`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 20240702
`
`

`

`Application/Control Number: 17/637,101
`Art Unit: 3729
`
`Page 2
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`DETAILED ACTION
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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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`underthe first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 102
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`2.
`
`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 —
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
`application for patent published or deemed published under section 122(b), in which the
`patent or application, as the case may be, names another inventor and waseffectively filed
`before the effective filing date of the claimed invention.
`
`3.
`
`Claims 1, 4, 6-8, 11 and 13-15 are rejected under 35 U.S.C. 102(a)(2) as being
`
`anticipated by Sakurayama etal. (PGPub 2019/0133010 A1).
`
`Sakurayama et al. teach a process of making a mounting board, comprising
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`steps of: a first outer shape position acquisition step of imaging a componentfromafirst
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`direction (upper surface) to acquire a first outer shape position of the component (S440,
`
`Fig. 9); a feature portion position acquisition step of imaging the component from the
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`first direction to acquire a position of a feature portion formed on the component(taking
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`an image of the componentfrom the upper surface, S440, paragraph [0044]); a
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`calculation step of calculating a deviation amountof the position of the feature
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`portion with respectto the first outer shape position from the first outer shape position
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`and the position of the feature portion (S460); a holding step of holding the component
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`with a holding member (S430, paragraph [0044]); a second outer shape position
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`

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`Application/Control Number: 17/637,101
`Art Unit: 3729
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`Page 3
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`acquisition step of imaging, from a second direction (S450), the componentheld by the
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`holding memberto acquire a second outer shapeposition of the component (S470), the
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`second direction being different from the first direction (paragraph [0044]); and a
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`mounting step of mounting the componentto a board so that the feature portion of
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`the componentis positioned on a target position of the board based on the second outer
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`shape position and the deviation amount (S48, paragraphs [0044]-[0045)).
`
`Re. claim 4: The first outer shape position acquisition step and the feature portion
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`position acquisition step are executed for the componentstored in a pocket of a
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`component tape (Paragraph [0031]).
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`Re. claim 6: In the first outer shape position acquisition step, the componentis
`
`imaged in a state in which the componentislit undera first lighting condition, and in the
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`feature portion position acquisition step, the componentis imaged in a state in which the
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`componentis lit under a secondlighting condition different from the first lighting
`
`condition (paragraphs [0019]-[0024}).
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`Re. claim 7: The secondlighting condition is to light the feature portion with light
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`having a wavelength suitable for lighting the feature portion (paragraphs [0023]-[0024]).
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`Re. claim 8: Sakurayama et al. also teach a component mounter, as applied to
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`claim 1 above, including a component supply mechanism (14, Fig. 1) that supplies a
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`component(60, paragraph [0031]), and a controller (40) that controls an operation of
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`the component mounting unit wherein the controller causes the component mounting
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`unit to mount the component to a board so that the feature portion of the componentis
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`positioned on a target position of the board based on the second outer shape position
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`and the deviation amount(Fig. 5, paragraphs [0036)]).
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`

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`Application/Control Number: 17/637,101
`Art Unit: 3729
`
`Page 4
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`Re. claim 11: The component supplied by the component supply mechanism is
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`stored in a pocket of a componenttape, and the first outer shape position acquisition
`
`unit and the feature portion position acquisition unit image the componentstored in the
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`pocket(paragraphs [0030]-[0031]).
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`Re. claim 13: The first outer shape position acquisition unit images the
`
`componentin a state in which the componentis lit undera first lighting condition, and
`
`the feature portion position acquisition unit images the componentin a state in which
`
`the componentis lit under a secondlighting condition thatis a lighting condition different
`
`from the first lighting condition (paragraphs [001 9]-[0024]).
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`Re. claim 14: The secondlighting condition is to light the feature portion with light
`
`having a wavelength suitable for lighting the feature portion (paragraphs [0023]-[0024]).
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`Re. claim 15: The first outer shape position acquisition unit and the feature
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`portion position acquisition unit share a camera (component camera 15, Fig. 1,
`
`paragraph [0044]) that images the component.
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`Allowable Subject Matter
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`4.
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`Claims 2, 3, 5, 9, 10 and 12 are objected to as being dependent upon a rejected
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`base claim, but would be allowable if rewritten in independent form including all of the
`
`limitations of the base claim and anyintervening claims.
`
`The Prior Art
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`5.
`
`The prior art madeof record and not relied upon is considered pertinent to
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`applicant's disclosure. Baba et al. (US PAT. 11,304,351), Hayashi et al. (US PAT.
`
`

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`Application/Control Number: 17/637,101
`Art Unit: 3729
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`Page 5
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`8,194,241), and Kawadaet al. (US PAT. 6,853,874) are cited to further show the state
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`of the art with respect to a component mounterincluding a process of making a
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`mounting board.
`
`Conclusion
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`6.
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`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to PAUL D KIM whosetelephone number is (571)272-
`
`4565. The examiner can normally be reached Monday-Friday: 6:00 AM-2:00 PM.
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Aneeta Yodichkas can be reached on 571-272-9773. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
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`
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`

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`Application/Control Number: 17/637,101
`Art Unit: 3729
`
`Page 6
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`/PAUL D KIM/
`Primary Examiner, Art Unit 3729
`
`