DETAILED ACTION
This Office action is in response to the amendment filed on June 29th, 2026. Claims 1-10, 13, and 15-19 are pending. Applicant has amended the independent claims to include the language relating specifically to the clamp type of species A, that being a vacuum clamp comprising an aperture, hence all claims are now elected.
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 Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-10, 13, and 16-19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant has amended independent claims 1 & 15 to require the clamp take the form of a vacuum clamp comprising an aperture in the probe receptacle. Claims 2-10, 13, and 16-19 all specify forms of clamps that do not comprise such an aperture, hence they do not further limit the vacuum clamp of the parent claim but attempt to claim a distinct form of clamp that is not such a vacuum clamp. Claims 2-10 and 13 all refer to “the clamp” clearly indicating they refer to the same clamp, and not to a device comprising a combination of a vacuum clamp and a second clamp of the specified type. Claims 16-19 cite a second clamp, but depend on claims 2, 5-6, and 8, and therefore include the improper dependency. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 3 of prior U.S. Patent No. 12,523,678. This is a statutory double patenting rejection.
Regarding claim 1, the patented claim 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 (“a body having at least one probe receptacle arranged to accommodate a probe device,”),
a lid connectable to the cassette body, the lid in a closed position being configured to substantially cover the at least one receptacle (“wherein the cassette further includes a lid mountable on the cassette substantially covering the at least one receptacle, the lid being configured to retain the one or more probe devices on the body of the cassette,”), and
a clamp configured to retain the probe device at the receptacle by exerting a clamping force on said probe device (“wherein, at the probe receptacle, a vacuum clamping member is arranged for selectively holding the probe device under a retaining force,”) when the lid is in the closed position (“wherein the first fluid port is connectable to the first source of vacuum with the lid in a closed position.”),
wherein the clamp is selectively operable to provide multiple vacuum clamping forces, includes a first state, in which no clamping force is exerted on the probe device at the receptacle, to a second state in which no clamping force is exerted on the probe device at the receptacle, to a second state, in which the clamping force restricts movement of the probe device at the receptable (“a vacuum clamping member is arranged for selectively holding the probe device under a retaining force,” where it is understood that a vacuum clamping member is inherently operable to a first state, in which no clamping force is exerted because the vacuum pumping can always be turned off),
wherein the clamp comprises a vacuum clamping member arranged for selectively holding the probe device under the clamping force, wherein at the receptacle at least one aperture is connectable to a vacuum pressure through a passageway in the cassette body (“wherein at the receptacle at least one aperture is arranged, which is, during selective holding of the probe device, connectable to a vacuum pressure through a passageway arranged in the cassette body,”), and
wherein the probe cassette further includes first fluid port connectable to a first source of vacuum for delivering the vacuum pressure, and a second fluid port, different from the first fluid port, connectable to a second source of vacuum for delivering the vacuum pressure, wherein the vacuum clamping member is configured for fixating the probe device using the clamping force as a result of the vacuum pressure provided via either the first fluid port or the second fluid port (“wherein the cassette includes a first fluid port connectable to a first source of vacuum for delivering the vacuum pressure, wherein the probe cassette includes a second fluid port connectable to a second source of vacuum, said second fluid port being arranged to provide vacuum to the vacuum clamping member, independently of vacuum provided by the first fluid port.”).
Claim 15 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 15 of prior U.S. Patent No. 12,523,678. This is a statutory double patenting rejection.
Regarding claim 15, the patented claim discloses a method comprising using a probe cassette for storing, transporting and/or handling one or more probe devices for a probe based system, wherein the cassette includes:
a cassette body having at least one probe receptacle arranged to accommodate a probe device (“providing a probe cassette including a body having at least one probe receptacle arranged to accommodate a probe device,”),
a lid connectable to the cassette body, the lid in a closed position being configured to substantially cover the at least one receptacle (“Wherein a lid is mounted on the probe cassette substantially covering the at least one receptacle,”),
a clamp comprising a vacuum clamping member having at least one aperture at the receptacle and being selectively operable to provide multiple vacuum clamping forces on the probe device (“wherein the probe device is selectively held under a retaining force at the probe receptacle by a vacuum clamping member, wherein at the receptacle at least one aperture is provided, which is during selective holding of the probe device connected to a vacuum pressure, through a passageway arranged in the cassette body,” note that any vacuum clamp is inherently operable to provide multiple vacuum clamping forces because the vacuum clamping force is a function of the pressure settings of the vacuum source, not a function of the vacuum clamping member itself), and
a first fluid port and a second fluid port (“wherein the probe cassette is provided with a first fluid port connectable to a first source of vacuum for delivering the vacuum pressure, wherein the probe cassette is provided with a second fluid port connectable to a second source of vacuum, said second source of vacuum being different from said first source of vacuum,”),
the method comprising:
connecting the first fluid port to a first source of vacuum to provide a vacuum pressure at the aperture to exert a clamping force on said probe device, thereby retaining the probe device at the receptacle when the lid is in the closed position (“the lid being configured to retain the one or more probe devices on the body of the probe cassette, wherein the method includes holding the probe device in position by the vacuum clamping member when the lid is to be opened and/or removed”),
removing the lid from the cassette while the probe device is held in position by the vacuum clamping member (“wherein the method includes holding the probe device in position by the vacuum clamping member when the lid is to be opened and/or removed”);
moving the probe cassette to the probe based system with the first fluid port connected to the first source of vacuum (“moving the probe cassette to the probe based system with the first fluid port connected to the first source of vacuum,”);
connecting the second fluid port to a second source of vacuum of the probe based system (“connecting the second source of vacuum to the second fluid port of the probe cassette, the second source of vacuum being a machine vacuum of the probe based system,”); and
disconnecting the first fluid port from the first source of vacuum such that the probe device remains retained at the receptacle under the clamping force provided by the second source of vacuum (“disconnecting the first fluid port from the first source of vacuum.”).
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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/ELIZA W OSENBAUGH-STEWART/Primary Examiner, Art Unit 2881
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