www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/008,829
`
`09/01/2020
`
`HIDEKI SUMI
`
`PIPMM-58220US1
`
`2854
`
`wees
`
`ORI
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`CAZAN,LIVIUS RADU
`
`3729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/28/2021
`
`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*
`1-7 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-7 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 9/1/2020 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
`1.4) Certified copies of the priority documents have been received.
`2.2) 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 9/1/2020.
`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 20211023
`
`Application No.
`Applicant(s)
`17/008,829
`SUMI, HIDEKI
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`LIVIUS R CAZAN
`3729
`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 9/1/2020.
`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: 17/008,829
`Art Unit: 3729
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined under the first
`
`inventor to file provisions of the AIA.
`
`2.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`Claim Rejections - 35 USC § 112
`
`(a) IN GENERAL.—The specification shall contain a written description of the invention, and of
`the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable
`any person skilled in the art to whichit pertains, or with which it is most nearly connected, to make and
`use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of
`carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AlA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the
`same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
`
`3.
`
`
`
`Claims 2-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 first paragraph, as failin (pre-AlA),
`
`
`
`to comply with the written description requirement. The claim(s) contains subject matter which was not
`
`described in the specification in such a way as to reasonably convey to one skilled in the relevant art that
`
`the inventor or a joint inventor, or for applications subject to pre-AlA 35 U.S.C. 112, the inventor(s), at the
`
`time the application was filed, had possession of the claimed invention.
`
`4.
`
`Claim 2 requires normally alternate mounting, which includes “sucking the first component”,
`
`“mounting the first component”, “sucking the second component”, and “mounting the second
`
`component”. However, the first and second componenthave already been sucked and mounted, as part
`
`of the cross lane alternate mounting recited in claim 1. Claim 2 requires performing both the cross lane
`
`alternate mounting, and the normally alternate mounting. There is no supportin the original disclosure
`
`

`

`Application/Control Number: 17/008,829
`Art Unit: 3729
`
`Page 3
`
`of sucking and mounting the same componentin both the cross lane alternate mounting and the normally
`
`alternate mounting.
`
`Claim 3 refers to a determining step performed for each mounting turn in which the first componentis
`
`mounted to the first board and the second component is mounted to the second board. However, the
`
`cross lane alternate mounting mounts the first component on the second board, and the second
`
`componentto thefirst board. Therefore, according to claim 3, the determining step is only performed
`
`during normally alternate mounting, i.e. when the first component may be mountedto the first board,
`
`and the second component may be mounted to the second board (as claimed in claim 2). There is no
`
`supportin the original disclosure for performing the determining step as claimed, because as claimed the
`
`mounting type is already preselected prior to determining which mounting process to execute
`
`(preselected by the fact that the determiningis claimed as occurring when the first component is mounted
`
`to the first board and the second componentis mounted to the second board).
`
`5.
`
`Claims 4, 6 and 7 include the limitation “for each mounting turn in which the first mounting head
`
`and the second mounting head mountthefirst component and the second component, respectively, on
`
`the first board and the second board”. As claimed, it appears the same first and second components can
`
`be mounted in multiple mounting turns. There is no support for this limitation in the original disclosure.
`
`6.
`
`Claims 5 and 6 include independent mounting,
`
`including “sucking the first component” and
`
`“mounting the first component on the first board”. The disclosure as originally filed does not provided
`
`support for the same component(i.e. the first component) to be sucked in three different operating
`
`modes: cross lane alternate mounting, normally alternate mounting, and independent mounting.
`
`7.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall conclude with one or moreclaims 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:
`
`

`

`Application/Control Number: 17/008,829
`Art Unit: 3729
`
`Page 4
`
`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming
`the subject matter which the applicant regards as his invention.
`
`8.
`
`Claims 2-7 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.
`
`9.
`
`Claim 2 requires normally alternate mounting, which includes “sucking the first component”,
`
`“mounting the first component”, “sucking the second component”, and “mounting the second
`
`component”. However, the first and second component have already been sucked and mounted,as part
`
`of the cross lane alternate mounting recited in claim 1. The scope of the claim is therefore indefinite,
`
`becauseit is unclear how the same first and second components can beinvolved in two separate sucking
`
`and mounting processes.
`
`10.
`
`Regarding claim 3, claim 2 positively requires performing both the cross lane alternate mounting
`
`and the normally alternate mounting. Claim 3 on the other hand gives the normally alternate mounting
`
`as an alternative when the cross lane alternate mounting cannot be executed. It is unclear if claim 3
`
`therefore still requires performing both processes at least once, thereby not resulting in a conflicting
`
`interpretation with respect to what is required in claim 2, or if claim 3 allows for only the cross lane
`
`alternate mounting to be performed, without performing the normally alternate mounting, if the cross
`
`lane alternate mounting can always be performed. Similarly, claim 5 depends upon claim 2, yet it provides
`
`an alternative between independent mounting, cross lane alternate mounting, and normally alternate
`
`mounting, making it unclear whether performing the cross lane alternate mounting and normally
`
`alternate mounting at least once, as implicitly required by claim 2.
`
`11.
`
`Claims 4 and 7 include thelimitation “for each mounting turn in which the first mounting head
`
`and the second mounting head mountthefirst component and the second component, respectively, on
`
`

`

`Application/Control Number: 17/008,829
`Art Unit: 3729
`
`Page 5
`
`the first board and the second board, determining which of the normally alternate mounting and the cross
`
`lane alternate mounting is executed”. Claim 6 includes the limitation “for each mounting turn in which
`
`the first mounting head and the second mounting head mount the first component and the second
`
`components, respectively, on the first board and the second board, determining which of the independent
`
`mounting, the cross lane alternate mounting, and the normally alternate mounting and is executed.”
`
`12.
`
`This limitation renders the claims indefinite because in the cross lane alternate mounting, the
`
`second component is mounted on the first board, and the first component is mounted on the second
`
`board. As claimed, however, the determination of which mounting is executed is performed whenever
`
`the first mounting head mountsthe first component on the first board and the second mounting head
`
`mounts the second componenton the second mounting board.
`
`Claim Rejections - 35 USC § 103
`
`13.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for 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
`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.
`
`14.
`
`Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maenishi
`
`(US2010/0325860A1).
`
`15.
`
`Maenishi reads on the claims as follows(refer to Figs. 18-29):
`
`Claim 1. A component mounting method in a component mounting apparatus including
`
`a first board transport lane (101, Fig. 18; F-lane, Fig. 25) configured to carry a first board,
`
`a first mounting head (104),
`
`

`

`Application/Control Number: 17/008,829
`Art Unit: 3729
`
`Page 6
`
`a second board transport lane (102, Fig. 18; R-lane, Fig. 25) which is disposed along the
`
`first board transport lane configured to carry a second board,
`
`a second mounting head (107),
`
`a first component supplier (106) configured to supply a first component,
`
`the first
`
`componentsupplier being disposed closer to the first board transport lane than to the second
`
`board transportlane, and
`
`a second componentsupplier (109) configured to supply a second component, the second
`
`componentsupplier being disposed closer to the second board transport lane than to the first
`
`board transportlane,
`
`the method comprising:
`
`cross lane alternate mounting (see “alternating mode”in Figs. 23 and 24; see para. [0436]-
`
`[-439]) of alternately performing
`
`an operation of sucking a component frem+thesecendcompenentsuppler by the second
`
`
`
`mounting head, and mounting the componentboardeA+thefirstboard-carriedinthe first
`
`
`
`
`
`
`
`transpertiane, and
`
`an operation of sucking a component frem—+thefirst-component-suppler by the first
`
`
`
`
`
`mounting head, and mounting the componententhesecondbeardcarriedinthesecondbeard
`
`
`
`
`
`
`
`transpertiane.
`
`Claim 2. The component mounting method of Claim 1, further comprising:
`
`normally alternate mounting of alternately performing,
`
`
`
`
`
`an operation of sucking the first componentfrem+hefirst-cormponentsupplerby the first
`
`mounting head, and mounting the first component on anyofthe first board and the second board,
`
`and
`
`

`

`Application/Control Number: 17/008,829
`Art Unit: 3729
`
`Page 7
`
`
`
`an operation of sucking the second componentfrem+the-secondcompenentsupplierby
`
`
`
`
`
`the second mounting head, and mounting the second component on any one ofthe first board
`
`and the second board.
`
`16.
`
`Applicant is respectfully asked to read the detailed description of the second embodiment, at
`
`para. [0431] to para. [0636]. In more detail, Maenishi discloses performing the alternating mode, such
`
`that the two mounting heads 104 and 107 alternate in picking up components and mounting them onto
`
`both the F-board and R-board. There are multiple scenarios that can necessitate utilizing the alternating
`
`mode, essentially wheneverit is not possible for each mounting head to mount componentsonto its own
`
`board. For example, in Fig. 28, the R-board requires small componentsa, b, and c, which are available at
`
`supply 109, and the F-board requires small componentsa, d, e, and f, of which d, e, and f are available at
`
`supply 106. It can be seen that component a is required by both of the boards. Therefore, since the
`
`common componenta is only found in one supply, the mounter is operated in alternating mode, with the
`
`two heads 104 and 107 taking turns picking up components. In some situations (Fig. 29) the head 104 has
`
`two small nozzles and two large nozzles, and head 107 has only small nozzles.
`
`In this situation, the
`
`mounter can only mount large components(on either board) using head 104. In some situations (see Fig.
`
`28), supply 109 holds only large componentsa, B, y, and supply 106 holds only small componentsa, b,c,
`
`d, e, and small components. Here, the head 107 would mount large components onto the R-board, but
`
`components a and c would have to be picked up from, supply 106, by either head 104, which is set up to
`
`mount small components onto the F-board, or by head 107,if it also has some small nozzles. From these
`
`examples, one of ordinary skill in the art, at the time the claimed invention was effectively filed, would
`
`have found it obvious to operate the component mounter of Maenishi in the claimed alternating mode in
`
`certain instances. Please consider the following situation:
`
`

`

`Page 8
`
`Application/Control Number: 17/008,829
`
`Art Unit: 3729
`
`17.
`
`Maenishi teaches the overall concept of alternating mode, in which the mounting heads alternate
`
`in mounting components, and that either head can be used to pick up from either of the supplies, and
`
`either head can be used to mount components on either of the two boards, as needed. Applicant is
`
`claiming the more particular situation in which the first head picks up componentsfrom the first supply
`
`and mounts them onto the second board, and the second head picks up components from the second
`
`supply and mounts them ontothe first board. In the scenario given above, it would have been obvious to
`
`

`

`Application/Control Number: 17/008,829
`Art Unit: 3729
`
`Page 9
`
`one ofskill in the art before the effective filing date of the claimed invention to implement the teachings
`
`of Maenishi such that head 104 picks up componenta or c from supply 106 and mountsit onto the R-
`
`board, and head 107 picks up componentfrom supply 109 and mountsit onto the F-board.
`
`18.
`
`With respect to claim 2, the claimed normally alternate mounting, similarly, falls within the
`
`broader concept taught by Maenishi. In the scenario above,it is readily apparent that head 107 can also
`
`pick up a component(such as B) from supply 109 and mountit onto the R-board, and the head 104 can
`
`pick up a component(such as e) and mountit onto the F-board.
`
`19.
`
`The rationale of the rejection is that although Maenishi does not explicitly disclose the specific
`
`scenario claimed by Applicant,
`
`it falls within the broader teaching of the alternating mode taught by
`
`Maenishi, in which the component mounter selects, as applicable, the component source, the target
`
`board, and the head to perform the operation.
`
`Double Patenting
`
`20.
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine groundedin
`
`public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise
`
`extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple
`
`assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not
`
`identical, but at least one examined application claim is not patentably distinct from the reference claim(s)
`
`because the examined application claim is either anticipated by, or would have been obvious over, the
`
`reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman,
`
`11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985);
`
`In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
`
`1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to
`
`overcome an actual or provisional rejection based on nonstatutory double patenting provided the
`
`

`

`Application/Control Number: 17/008,829
`Art Unit: 3729
`
`Page 10
`
`reference application or patent either is shown to be commonly ownedwith the examined application, or
`
`claims an invention made as a result of activities undertaken within the scope of a joint research
`
`agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146et seq. for applications not subject
`
`to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed
`
`in compliance with 37 CFR 1.321(b).
`
`The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit
`
`www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed
`
`determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-
`
`based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal
`
`Disclaimer that meets all requirements is auto-processed and approved immediately upon submission.
`
`For
`
`more
`
`information
`
`about
`
`eTerminal
`
`Disclaimers,
`
`refer
`
`to
`
`www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
`
`21.
`
`Claims 1, 2, 6 and 7 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 1-7 of U.S. Patent No. 10,798,859.
`
`22.
`
`Although the claims at issue are not identical, they are not patentably distinct from each other
`
`because patent claims 1-7 anticipate application claim 1. Patent claims 4 and 6 anticipate application claim
`
`2. Regarding application claims 6 and 7, patent claims 1-7 include the independent mounting, and claims
`
`4 and 6 include the normally alternate mounting. Moreover, patent claims 3 and 5 include the conceptof
`
`determining which mounting is to be used. Therefore, the determining steps of application claims 6 and
`
`7 are deemed obvious in light of patent claims 1-7, as having multiple operating modes necessitates a
`
`selection of one mode from theavailable operating modes.
`
`Conclusion
`
`

`

`Application/Control Number: 17/008,829
`Art Unit: 3729
`
`Page 11
`
`23.
`
`Any inquiry concerning this communication or earlier communications from the examiner should
`
`be directed to LIVIUS R CAZAN whosetelephone number is (571)272-8032. The examiner can normally be
`
`reached Monday- Friday noon-8:30pm.
`
`Examinerinterviewsare 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://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter
`
`Vo can be reached on 571-272-4690. The fax phone number for the organization where this application
`
`or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Center is available to registered users. To
`
`file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit
`
`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
`
`https://www.uspto.gov/patents/docx for
`
`information about
`
`filing in DOCX format. For additional
`
`questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like
`
`assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or
`
`571-272-1000.
`
`/LIVIUS R. CAZAN/
`Primary Examiner, Art Unit 3729
`
`