DETAILED ACTION
This Office action is in response to the request for continued examination filed on October 8th, 2025. Claims 1-20 are pending, with claims 1, 11-12, 14-15, and 20 being directed to the elected species, or generic.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation – 112(f)
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 means or 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 element in a claim for a combination may be expressed as a means or 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “an adjustment member for adjusting the clamping force” in claims, 11-12, 14, and 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
In particular, the specification discloses the following adjustment members
Species A – magnet on lid (lid movement adjusts), both magnets if electromagnets (energizing of electromagnet adjusts)
Species B – capillary tube on lid (lid movement and flow through adjusts)
Species C – actuator on lid (actuator adjusts)
Species D – expandible ballon (balloon adjusts size)
Species E – fluid blower (adjusts fluid pressure)
Species F – unclear, see rejection below, could be either a valve or integrated vacuum pump
If applicant does not intend to have this/these limitation(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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112 (a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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 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 or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 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.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing 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-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 15 recites “a plurality of second states, each of which is discretely selectable”. The original disclose does not specify whether the plurality of second states are discretely selectable.
Applicant points to the following disclosures to support their contention that discrete settings are disclosed;
“An improved control over the clamping force can be obtained as the clamping unit includes a plurality of second positions each having different pre-determined forces” and
“the plurality of second positions providing different clamping forces for restricting the probe device to a different extent”.
However, neither of these passages state or imply that the plurality of second states are discretely selected. They merely state that the adjustable parameter can take on a plurality of settings (called positions by the disclosure) which correlate with different forces. Nothing in those passages or the original disclosure specify whether the selection of the setting is done in a discrete, stepwise manner or using a continuously adjustable control.
The only selection that is disclosed to be discrete is the selection of the first vs second states (“the clamping unit is selectively operable from a first position, in which the clamping force is insufficient to provide clamping of the probe device at the receptacle, to a plurality of second positions,”). For species A-E at least, the first state (lid open) is clearly discrete and distinct from the plurality of second states (with lid closed) because of the discrete lid positions.
Switching between second states, however, requires adjusting a parameter (“The clamping device is adjustable in a plurality of second positions in which the probe device is clamped, each second positions having a different clamping force.”) wherein the parameters are analog (gap distance, inflation level of a balloon, etc.). The adjustment *could* be done in a discretized manner, by programming the control to select only certain values, but the adjustment could just as easily be done using an analog controller. Hence, it cannot be assumed that the controller of the original disclosure necessarily includes a discretized control.
Claim Rejections - 35 USC § 112 (b)
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-AIA ), second paragraph:
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.
Claims 1, 11-12, 14, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “an adjustment member for adjusting the clamping force” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function for species F, which is the elected species. The vacuum clamp adjusts the clamping force by adjusting the pressure (“Optionally, the vacuum clamping member is adjustable between a first position, in which the vacuum pressure is sufficiently low for enabling vacuum clamping of the probe device, and a second position, in which the vacuum pressure is sufficiently high for allowing release of the probe device.”)
No structures for adjusting the vacuum pressure appears to be disclosed however. A sealing structure to prevent leakage is disclosed, but this is not adjustable. It is known in the art to adjust pressure in vacuum systems by changing the pumping strength or including a valve in the path connecting to the pump. The device is disclosed to include either an internal pump (“The cassette may include a vacuum source integrated therein for delivering a vacuum pressure. The vacuum may be generated by using a vacuum pump.”) or be connected to an external pump. In the case of an internal pump, the internal pump could achieve the function of adjusting the pressure, but the pump is not clearly linked to a function of adjustment in the specification, only to the function of pumping. In the case of an external pump, the adjustment could be carried out either via control of that external pump, in which case no adjustment member would be included in the device, or via a valve, which does not appear to be disclosed. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 1, 11-12, 14-15, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims define a first state, in which the “clamping force is insufficient to provide clamping” and a plurality of second states which each “provide a different clamping force that restricts the probe device to a different extent”. The first state is defined as a binary state of clamping/not clamping and the second states provide different levels of clamping. These differing meanings of the clamping state make the first and second states potentially overlapping and unable to be discriminated. It is possible, for example, to imagine a weak clamping force that restricts the probe movement to an extent that would be considered insufficient to provide clamping and is therefore both a first and a second state.
At least for species A-E, the first state correlates with the lid being opened so that the adjustment element does not reach the probe and cannot exert any force. Therefore, examiner will resolve the inconsistency by assuming that the first state refers to a state in which no force is applied, and any state with even a weak clamping force is a second state, and a second state only.
Claims 1, 11-12, 14, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims recite “wherein each of the plurality of second states is an indexed, stable setting associated with a pre-determined clamping force”. It is unclear it means for a state to be an “indexed” setting. The word “index” does not appear in the original disclosure, and dictionary definitions of index do not appear to be particularly relevant. For example, Merriam-Webster gives the following definitions (verb meanings only, since the settings are claimed as being “indexed” which implies an action or state of being applied to the setting)
To provide with an index
To serve as an index of
To regulate (wages, prices, interest rates, etc.) by indexation
Providing with an index would relate to providing a list of settings in a particular order. While it is certainly possible to create or provide such a list of settings, the provision of such a list has no effect on the settings or states themselves, so there is no difference between an “indexed” setting and a non-indexed setting that would seem relevant to the claims.
To serve as an index of would require the settings to be indicators of something, most likely force. The settings are already indicators of force, as shown by “setting associated with a pre-determined clamping force”, so the addition of the word “indexed” would seem to add nothing to the limitation in such a case. While this appears to add nothing, it is the interpretation that examiner will use for comparison to the prior art, because it the only one that makes any sense at all.
The last definition relates to economics and does not appear to be relevant to the method.
Claims 1, 11-12, 14, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims recite “wherein each of the plurality of second states is an indexed, stable setting”. It is unclear what it means for a “state” to be a “stable” setting. If the setting changes, the state changes with it. Therefore, if the settings were unstable, the system would move between states in an erratic manner, but the correlation of states to settings would not be affected.
The purposes of examination, the limitation will be treated as requiring that the correlation of the settings with states/forces does not change or evolve over time (i.e. a particular pressure will always exert the same amount of force, provided all other parameters are identical). This would appear to be consistent with the remarks filed on October 8th, 2025 (“a controller that ensures each index stably and reproducibly maintains its associated, predetermined clamping force.”) and is also inherent in each of the parameters used in the application.
Claims 1, 11-12, 14, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims recite a controller for “maintaining the pre-determined clamping force at each of said plurality of second states”. It is unclear what it means to maintain the force at each of a plurality of states. Maintaining the force requires the state/force to be kept constant, yet the maintaining step references a plurality of states with different forces. This apparent contradiction is impossible to resolve into a meaningful control method.
The most obvious potential interpretation is that that applicant intended to claim maintaining each state as separate steps, for example a sequential process where a state is held for a period of time, then adjusted to a new state, and held again. However, there is no support for such a repeated adjust and hold process in the original disclosure. The original disclosure only specifies that the controller is configured to control or adjust the clamping force. No control algorithm involving maintaining the clamping force for any specific period of time appears to be disclosed, even for a single state, much less a plurality of states.
It is generally understood that a controller for controlling a parameter will be able to maintain parameter at the desired level for as a long as the settings remain the same (inherent in such a controller), and the disclosure does disclose controlling the force depending on the activity (‘The clamping force can be accurately controlled, for instance depending on the activity, e.g. storage, handling, transportation of the probe cassette.’) which provides ample reason for maintaining the force during the course of said activity.
However, no algorithm involving maintaining the force for specific periods of time is disclosed, hence, the only supported method of doing this is passive – that is, maintaining simply by not adjusting. As stated above, a controller for controlling a parameter is inherently configured for maintaining the parameter at the desired value until the setting is changed or other instructions given
Therefore, examiner will interpret the limitation to cover any controller configured to control the clamping force. Coupled with the wherein clauses above, this could be further interpreted to mean a controller configured to control a parameter with a known, stable relationship to the clamping force, such as pressure.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites a step of “adjusting the clamping force to selectively operate from a first state, in which the clamping force is insufficient to clamp the probe device at the receptacle, to a plurality of second states”. It is unclear if this is a single adjustment step to one of a plurality of selectable second states or multiple adjustment steps to each of the plurality of second states. Because examiner can find no evidence of a method involving multiple adjustments, examiner will assume a single adjustment step to one of the plurality of second states. For the elected species, this correlates with turning on the vacuum pump or opening the valve.
Claim Interpretation – Part 2
Because there are significant 112(b) issues, examiner will consolidate her interpretations as discussed above here in an easy to reference table to make the Office action easier to follow.
Text of limitation
Interpreted meaning
An adjustment member for adjusting the clamping force
depends on species, for elected species a vacuum pump or valve
wherein the clamp is selectively operable from a first state, in which the clamping force is insufficient to provide clamping of the probe device at the receptable, to a plurality of second states, in which force restricts movement of the probe device at the receptacle
adjustment member can support a plurality of settings that exert different forces and can also support a configuration that exerts no force (for most species no force configuration is on open lid, for elected species valve closed or pump turned off)
wherein each of the plurality of second states is an indexed, stable setting with a pre-determined clamping force
adjusted parameter has a known, stable relationship to force (pressure differential is an example of a parameter with a known, stable relationship to force)
a controller arranged for maintaining the pre-determined clamping force at each of a plurality of second states
a controller that can control the adjustable parameter (pressure in elected species)
adjusting the clamping force to selectively operate from a first state, in which the clamping force is insufficient to clamp the probe device at the receptacle, to a plurality of second states
switching from a no force configuration to one of the clamped configurations/settings
Claim Rejections - 35 USC § 103
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/0006083 (Feinstein et al.).
Regarding claim 15, Feinstein et al. discloses a method comprising using a probe cassette for storing, transporting md/or handling one or more probe devices for a probe based system, wherein the cassette includes:
a cassette body (element 52) having at least one probe receptacle arranged to accommodate a probe device (element 58), and
a lid connectable to the cassette body, the lid in a closed position being configured to substantially cover the at least one receptacle (element 54),
the method comprising retaining the probe device at the receptacle by exerting a clamping force on said probe device when the lid is in the closed position (‘The lid preferably includes a probe retainer that retains a probe device in the receptacle under a compressive force.’), and
adjusting the clamping force to selectively operate from a first state, in which the clamping force is insufficient to clamp the probe device at the receptacle, to a plurality of second states (‘a method includes loading a probe device into a base of a probe cassette and then applying a compressive force to the probe device to retain the probe device in the base.’ P 36), each of which is selectable, in which the clamping force restricts movement of the probe device at the receptacle to different extents (‘Screws 116, 118 are further tightened until probe retainers 70' contact the probe devices stored in the base. Further tightening of the screws 116, 118 is dictated by the amount of force applied by probe retainer 70' required to retain the probe devices without compromising their operability. The degree to which the spring loaded attachment devices 112, 114 are tightened is preferably determined for the particular type of probe being delivered, and may be determined empirically.’ P 73).
Feinstein et al. does not specify that the selection is done in a discretized manner. However, Feinstein does disclose that the tightening may be based on the particular type of probe, so it would have been obvious to a person having ordinary skill in the art to select the tightness level to take only the discrete values that correlate with known type types.
Claim(s) 1 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0095108 (Baur et al.) in view of US 2008/0006083 (Feinstein et al.).
Regarding claim 1, Baur et al. discloses a probe cassette for storing, transporting and handling one or more probe devices for a probe based system, the cassette including:
a cassette body (element 120) having at least one probe receptacle arranged to accommodate a probe device (element 155),
a clamp configured to retain the probe device at the receptacle by exerting a clamping force on said probe device (‘(c) wherein the probe, the probe storage, and the receptacle apparatus are embodied in such a way that the probe can form a releasable first connection with the probe storage and a releasable second connection with the receptacle apparatus, wherein the first connection and/or the second connection use a magnetic force;’ abstract),
wherein the clamp includes an adjustment member for adjusting the clamping force (‘electrical coil’ P 23), wherein the clamp is selectively operable from a first state, in which the clamping force is insufficient to provide clamping of the probe device at the receptacle, to a plurality of second states in which the clamping force restricts movement of the probe device at the receptacle (‘probe can form a releasable first connection with the probe storage’ abstract, wherein the plurality of second states is shown by ‘The use of an electrical coil allows the magnetic force to be adjusted by varying a coil current.’ P 24),
wherein each of the plurality of second states provides a different clamping force that restricts the probe to a different extent, and wherein each of the plurality of second states is an indexed, stable setting associated with a pre-determined clamping force (‘In combination with the magnetic flux density distribution of the coil 550, the magnetic force of the permanent magnet 545 produces a first releasable magnetic connection 215 between the angled holder 535 and the probe 170.’ P 82),
and wherein the probe cassette further includes a controller arranged for maintaining the pre-determined clamping force at each of the plurality of second states (‘Moreover, a transfer process of the probe from the probe storage or to the probe storage can be carried out in a regulated manner by adjusting the coil current.’ P 24).
Baur et al. does not disclose a lid connectable to the cassette body, the lid in a closed position being configured to substantially cover the at least one receptacle.
Feinstein et al. discloses a probe cassette for storing and transporting probe devices where the probe cassette includes a lid connectable to the cassette body, the lid in a closed position being configured to substantially cover the receptacles (element 54). It would have been obvious to a person having ordinary skill in the art at the time the application was filed to modify the probe cassette of Baur et al. to include the lid of Feinstein et al. to prevent contamination of the probes during transport of the probe cassette.
Regarding claim 14, Baur et al. in view of Feinstein et al. discloses the probe cassette according to claim 1, wherein the cassette includes a controller for adjusting the clamping force exerted by the clamp (‘‘The use of an electrical coil allows the magnetic force to be adjusted by varying a coil current.’ P 24’).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baur et al. in view of Feinstein et al. as applied to claim 1 above, and further in view of US 5,705,814 (Young et al.).
Regarding claim 12, Young discloses a probe cassette including a clamp wherein the clamp arranged at the cassette body for selectively holding the probe device at the receptacle under a clamping force, wherein the clamp is adjustable between a first state of the clamp, in which the clamping force is sufficient to clamp the probe device, and a second state of the second clamp, in which the second clamping force is sufficient to release the probe device (fig. 9B, element 22 & 90).
It would have been obvious to a person having ordinary skill in the art at the time the application was filed to modify Baur et al. to include a second clamp, said second clamp being the vacuum clamp disclosed by Young, as a back-up method of clamping to be used if the electrical coil malfunctions.
Claim(s) 1, 11-12, 14, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,705,814 (Young et al.).
Regarding claim 1, Young et al. discloses a probe cassette for storing, transporting and handling one or more probe devices for a probe based system, the cassette including:
a cassette body having at least one probe receptacle arranged to accommodate a probe device (multiple figures, element 22),
a lid connectable to the cassette body, the lid in a closed position being configured to substantially cover the at least one receptacle (‘The probe cassette 22 may also have a protective shipping cover 81 to allow safe transport of stored probes.’), and
a clamp configured to retain the probe device at the receptacle by exerting a clamping force on said probe device when the lid is in the closed position (clamp as disclosed by Young will retain the probe regardless of the lid position),
wherein the clamp includes an adjustment member for adjusting the clamping force (fig. 9B, element 90), wherein the clamp is selectively operable from a first state, in which the clamping force is insufficient to provide clamping the probe device at the receptacle, to at least one second state, in which the clamping force restricts movement of the probe device at the receptacle (valve 90 can be turned on and off to select states).
Young does not specify whether the valve supports a plurality of second states, wherein each of the plurality of second states provides a different clamping force that restricts the probe to a different extent, and wherein each of the plurality of second states is an indexed, stable setting associated with a pre-determined clamping force and wherein the probe cassette further includes a controller arranged for maintaining the pre-determined clamping force at each of the plurality of second states
However, valves that support a plurality of states with different levels of closure are well known in the art (variable leak valves) and controllers for controlling the level of openings are also well known. It would have been obvious to a person having ordinary skill in the art at the time the application was filed to use a variable valve so that the pressure could be adjusted based on the conditions of use, for example reduced clamping during transfer and increased clamping during storage. Alternatively, it would have been obvious to use a pump with adjustable pressure settings and a controller for controlling such a setting for the same reason.
Young discloses the lid and the vacuum clamp as being alternatively, but it would have been obvious to a person having ordinary skill in the art at the time the application was filed to combine the lid with the vacuum clamping unit to provide a barrier to potential contamination and/or to provide a failsafe retaining mechanism should the vacuum system fail.
Regarding claim 11, Young et al. discloses the probe cassette of claim 1, wherein the clamp is arranged for selectively holding the probe device under the clamping force, wherein at the receptacle at least one aperture is, during the selective holding of the probe device, connectable to a vacuum pressure through a passageway in the cassette body (fig. 9B).
Regarding claim 14, Young et al. discloses the robe cassette according to claim 1, wherein the cassette includes a controller for adjusting the clamping force exerted by the clamp (see analysis for controller as claimed in claim 1).
Regarding claim 12, Young et al. discloses the probe cassette of claim 1, except for a second clamp arranged at the cassette body for selectively holding the probe device at the receptacle under a second clamping force, wherein the second clamp is adjustable between a first state of the second clamp, in which the second clamping force is sufficient to clamp the probe device, and a second state of the second clamp, in which the second clamping force is sufficient to release the probe device, wherein the second clamp is operable when the lid is in an opened position in which the one or more probe devices accommodated in the probe cassette are accessible. It would have been obvious to a person having ordinary skill in the art at the time the application was filed to add a second vacuum clamp to the receptacle in order to provide a failsafe should the first vacuum clamp fail.
Regarding claim 20, Young et al. discloses the claimed invention except for a second clamp, wherein the clamp is operable from the first state to one of the plurality of second states if the lid is closed, wherein the second clamp is arranged at the cassette body for selectively holding the probe device at the receptacle under a second clamping force, wherein the second clamp is adjustable between a first state of the second clamp, in which the second clamping force is sufficient to clamp the probe device, and a second state of the second clamp, in which the second clamping force sufficient to release of the probe device, wherein the second clamp is operable when the lid is in an opened position in which the one or more probe devices accommodated in the probe cassette are accessible. It would have been obvious to a person having ordinary skill in the art at the time the application was filed to add a second vacuum clamp to the receptacle in order to provide a failsafe should the first vacuum clamp fail.
Response to Arguments
Applicant's arguments filed October 8th, 2025 have been fully considered but they are not persuasive.
Applicants argue that the claim limitation to “a controller arranged for maintaining the pre-determined clamping force at each of a plurality of second states” requires that each pre-determined is actually maintained in a stable fashion, “as opposed to being dialed in to an arbitrary, negative pressure on a continuous scale.”
Examiner sees no reason a pressure “dialed in to an arbitrary, negative pressure on a continuous scale” cannot be maintained at that arbitrary, negative pressure. Maintaining a force is about sustaining a parameter at a designated value for a period of time, not whether any adjustments (which cannot occur while maintaining in any case) are done in a discrete or continuous manner.
Applicant further argues with respect of Young that that “In contrast to the invention defined by amended claim 1, nothing in the cited prior art suggests a vacuum clamp (or any clamp) having a built-in control or indexing arrangement that provides discrete, reproducible, pre-determined clamping forces in stable positions.” Applicant further states “The current claim language mandates physically or programmatically selected, stable, reproducible steps.”
Examiner maintains that it would have been obvious to a person having ordinary skill in the art to modify Young to include a control that provides reproducible, pre-determined clamping forces in stable positions for the reasons already detailed above. Such a control would necessarily physically or programmatically select the setting in a stable, reproducible manner. Contrary to what applicant would appear to believe, a setting selected by a continuously adjustable control is no less “physically or programmatically selected” than a setting selected by a discrete control.
Examiner did not address whether it would have been obvious to use discrete, stepped settings in the rejection of claim 1 because claim 1 does not require this. However, examiner does address this with respect to claim 15, and the same lines of reasoning would apply if such a limitation were added to claim 1. It is noted that applicant has not shown that discretization solves any particular problem (despite applicant’s suggestions to the contrary, an analog selection method is no less stable or reproducible than a discretized one). Hence, the difference is also obvious on “obvious to try” grounds.
Suggestions
Examiner suggests that applicant file a divisional to allow the examination of another species. The crux of the invention appears to be the use of an adjustment member attached to a lid, which is present in every species except the elected one. Applicant may of course continue to prosecution this application while also pursuing a divisional. Examiner believes a divisional to another species would be more likely to be useful to applicant because it would protect the crux of the invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZA W OSENBAUGH-STEWART whose telephone number is (571)270-5782. The examiner can normally be reached 10am - 6pm Pacific Time M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Kim can be reached at 571-272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZA W OSENBAUGH-STEWART/Primary Examiner, Art Unit 2881
Prosecution Insights