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 .
Response to Arguments
Applicant's arguments filed 09/30/2025 have been fully considered but they are not persuasive. Applicant argues that “a shielding portion integrally formed with the main body portion” is not disclosed by Miyagawa because the ground bush 60 and contact probe 40A are separate components that are assembled together during installation. The Examiner disagrees, because as stated in the office action, the probe is 40A/60. Miyagawa at ¶0062 and fig. 9B, 11 discloses the shielding portion 63 integrally formed with the main body portion 61.
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Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Election/Restrictions
The limitations of Markush claims that read on different species are strikethrough in the rejection below. Applicant should delete them in response to this office action. Claim 18 is withdrawn because it reads on non-elected species E, F and G.
Claim Objections
Claim 16 is objected to because of the following informalities: the limitation “… shielding portion provides electromagnetic shielding for adjacent test probes positioned within a test socket.” appears to have no support in the specification. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 10, 13, 16-17 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyagawa (US 2016/0154024 A1).
Regarding claim 1, Miyagawa at fig. 9B, 11, ¶0062 and ¶0065 discloses a test probe 40A/60 comprising: a hollow outer casing 60 made of an electrically conductive material, a resilient member 44/40A installed within the outer casing in a manner permitting contraction and expansion in an axial direction [because of 42, 43, 44, see fig. 7 for detail], and contact members 42/43 installed within the outer casing in a state of being constantly biased by the resilient member 44 while partially protruding outside of the outer casing, wherein the probe is configured such that the outer casing includes a cylindrical main body portion [61, ¶0045] extending in the axial direction and one of: a shielding portion 63 integrally formed with the main body portion, the shielding portion being provided along the axial direction as a protrusion in a radial direction of the main body portion 61 in part of the peripheral surface of the main body portion [63 with 60/61 as shown at fig. 11 and 9B],
Regarding claim 2, Miyagawa at fig. 9B, 11, ¶0062 and ¶0065 discloses the test probe according to claim 1, wherein a plurality of the shielding portions 63
Regarding claim 3, Miyagawa at fig. 9B, 11, ¶0062 and ¶0065 discloses the test probe according to claim 1, wherein the shielding portions 63
Regarding claim 10, Miyagawa at fig. 11, ¶0062 and ¶0065 discloses the test socket 30 comprising a support 50 having opening configured to accommodate the main body portion 61/62/63 of the test probe 40A/60 according to claim 1.
Regarding claim 13 (new), Miyagawa at fig. 8-10 discloses the test probe according to claim 1, wherein the shielding portion has a rectangular plate-like 63 configuration extending radially outward from the main body portion 61.
Regarding claim 16 (new), as best understood by the Examiner, Miyagawa at fig. 8-10 discloses the test probe according to claim 1, wherein the test probe is configured as a ground probe [¶0002] and the shielding portion provides electromagnetic shielding [because of metal structure] for adjacent test probes [plural probes as shown e.g. fig. 1-2] positioned within a test socket.
Regarding claim 17 (new), Miyagawa at fig. 8-10 discloses the test probe according to claim 1, wherein the outer casing 60 includes the shielding portion 63.
Regarding claim 19 (new), Miyagawa at fig. 8-10 discloses the test probe according to claim 1, wherein the shielding portion and the main body portion are integrated as a single piece [63 with 60/61 as shown at fig. 11 and 9B].
Regarding claim 20 (new), Miyagawa at fig. 8-10 discloses the test probe according to claim 1, wherein an entirety of the shielding portion and an entirety of the main body portion are integrated as a single piece [63 with 60/61 as shown at fig. 11 and 9B].
Claim(s) 14 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Miyagawa.
Regarding claim 14 (new), Miyagawa at fig. 8-10 discloses the test probe according to claim 1, wherein the shielding portion is formed integrally with the main body portion [as shown] by stamping and bending [these are product by process limitations “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)] a sheet of metal [conductive metal, ¶0045].
Allowable Subject Matter
Claim 15 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: No prior art has been found that meets the limitations of claim 15 calling for a test probe comprising: the shielding portion extends substantially an entire length of the main body portion in the axial direction.
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.
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/PARESH PATEL/Primary Examiner, Art Unit 2858
December 11, 2025