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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2025-12-03 has been entered.
Response to Amendment
The amendment filed on 2025-12-03 has been entered. Claim(s) 1-14 remain pending in this application. Claim 1 has been amended. No Claim(s) have been canceled. No Claim(s) have been newly added.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and its dependents 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in 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 reference application or patent either is shown to be commonly owned with 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 § 2146 et 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. US-12461124-B2 in view of Arai (US-20230341436-A1).
Regarding Claim 1, The instant application and the reference US Patent in view of Arai are related as identified in the table below:
Instant Application: 18/220,328
Reference Patent No: US-12461124-B2
Claim 1: A contact pin comprising:
a plurality of contacts having electrical conductivity, each of the contacts extending from a base end to a tip and having an elastic deformation part formed between the base end and the tip, and
the elastic deformation part being elastically expandable and compressible in an extending direction; and
wherein the plurality of contacts are laterally stacked adjacent to each other and movable independent of each other,
wherein the casing bundles the plurality of laterally stacked contacts,
at least one casing having electrical conductivity,
and the casing is in contact with the contacts so as to form a path bypassing the elastic deformation part.
Claim 1: A contact pin comprising:
a plurality of electrically conductive contacts, each of the contacts extending from a base end to a tip and having an elastic deformation part formed between the base end and the tip, and
the elastic deformation part being elastically expandable and compressible in an extending direction,
wherein the plurality of contacts are laterally stacked adjacent to each other in a direction orthogonal to the extending direction and are movable independently of each other in the extending direction, and wherein the contacts adjacent to each other are directly in contact with each other in a stack direction.
Claim 2: The contact pin according to claim 1 further comprising at least one casing that bundles the plurality of laterally stacked contacts.
Arai Teaches
(Fig 2 or 3, support, 10 | Para [0034] teaches electrically conductive support)
(Can be seen in Figure 2)
The reference patent teaches the claimed limitations a plurality of contacts having electrical conductivity, each of the contacts extending from a base end to a tip and having an elastic deformation part formed between the base end and the tip, and the elastic deformation part being elastically expandable and compressible in an extending direction; and
wherein the plurality of contacts are laterally stacked adjacent to each other and movable independent of each other,
wherein the casing bundles the plurality of laterally stacked contacts.
As shown in the table above.
The reference patent does not explicitly claim at least one casing having electrical conductivity, and the casing is in contact with the contacts so as to form a path bypassing the elastic deformation part. However, Arai teaches at least one casing having electrical conductivity, (Fig 2 or 3, support, 10 | Para [0034] teaches electrically conductive support) and the casing is in contact with the contacts so as to form a path bypassing the elastic deformation part (Can be seen in Figure 2 of Arai). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the contact of the reference patent to include the conductive casing of Arai. A motivation for this modification is to allow for an increased path for current flow as taught by Arai (Abstract).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 2, 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Swart et al. (US-5865641-A) in view of Arai (US-20230341436-A1).
Regarding Claim 1, Swart teaches a plurality of contacts having electrical conductivity (Figs 5-7: multi-layer contacts, 68), each of the contacts extending from a base end to a tip (Can be seen in Figs 6-7) and having an elastic deformation part formed between the base end and the tip (Fig 6: spring section, 77), and the elastic deformation part being elastically expandable and compressible in an extending direction (Col. 6 ln. 34-38 teach the spring is compressible); and wherein the plurality of contacts are laterally stacked adjacent to each other and movable independent of each other (col. 6 ln. 38-40 teach the contact plates of the multi-layer contact may independently slip face-to-face relative to one another). Swart does not teach at least one casing having electrical conductivity, wherein the casing bundles the plurality of laterally stacked contacts, and the casing is in contact with the contacts so as to form a path bypassing the elastic deformation part.
However, Arai teaches at least one casing having electrical conductivity (Fig 2 or 3, support, 10 | Para [0034] teaches electrically conductive support), wherein the casing bundles the plurality of contacts (Can be seen in Figure 2), and the casing is in contact with the contacts so as to form a path bypassing the elastic deformation part (Can be seen in Figure 2). The combination of Swart in view of Arai would therefore bundle the plurality of laterally stacked contacts. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the contacts of Swart with the casing of Arai. A motivation for this modification is to allow for an increased path for current flow as taught by Arai (Abstract).
Regarding Claim 2, the combination of Swart in view of Arai teaches wherein the casing has the same electrical conductivity as or higher electrical conductivity than the contacts (Arai - Para [0034] teaches support and contacts being made of a similar conductive material). This feature is necessarily taught by the combination of Swart in view of Arai.
Regarding Claim 9, the combination of Swart in view of Arai teaches wherein the casing has a stopper configured to restrict an amount of compression of the contact (See Fig 2 of Arai: first and second faces, 11 and 12). This feature is necessarily taught by the combination of Swart in view of Arai.
Regarding Claim 13, the combination of Swart in view of Arai teaches a socket for inspection comprising: a plurality of contact pins according to claim 1 (See claim 1 rejection); and a housing configured to accommodate the contact pins (Swart – Fig 4: connector block, 62). This feature is necessarily taught by the combination of Swart in view of Arai.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Swart in view of Arai and in further view of Wu et al. (US-20240094249-A1).
Regarding Claim 3, the combination of Swart in view of Arai teaches that the casing may be made of a plurality of members, Swart in view of Arai does not explicitly teach the contact pin comprising two casings, wherein the casings are overlapped with each other to bundle the plurality of laterally stacked contacts. However, Wu teaches two casings (Fig 13A4: second frame structure elements, 1363-1 and 1363-2), wherein the casings are overlapped with each other to bundle the plurality of laterally stacked contacts (From Fig 13A4 it can be seen the many layers of contacts between the two cases and that the casing overlap and 'sandwich' the contacts). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the casing of Swart in view of Arai to be the two casings of Wu. A motivation for this change is that two casings may allow for differing number of contacts between the casings as may be required.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Swart in view Arai in view of Wu and in further view of Mostoller et al. (US-20170003010-A1).
Regarding Claim 4, Swart in view of Arai in view of Wu teaches two casings where the faces of the casings contact an outermost face of the plurality of stacked contacts and that these casings contact at opposite faces (Wu - Fig 13A4). Swart in view of Arai in view of Wu does not teach that each of the casings has a stationary piece and a movable piece that is elastically contacted to a contact. However, Mostoller teaches wherein each casing has a stationary piece and a movable piece, and that the stationary piece and movable piece contact at opposite faces of the contact (See annotated Figure 8 of Mostoller). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the casing of Swart in view of Arai in view of Wu to incorporate the stationary and movable pieces as taught by Mostoller. A motivation for this modification is to use the movable piece to press against and hold the contact into place as taught by Mostoller in paragraph [0047].
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285
681
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Annotated Figure 8 of Mostoller
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Swart in view Arai in view of Wu and in further view of Horning et al. (US-20220029333-A1).
Regarding Claim 6, the combination of Swart in view of Arai does not teach wherein the casing has a first plate-like part and a second plate-like part that face each other and between which the laterally stacked contacts are arranged. However, Wu teaches wherein the casing has a first plate-like part and a second plate-like part that face each other and between which the laterally stacked contacts are arranged (Fig 13A4: second frame structure elements, 1363-1 and 1363-2). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the casing of Swart in view of Arai to be the two casings of Wu. A motivation for this change is that two casings may allow for differing number of contacts between the casings as may be required.
The combination of Swart in view Arai in view of Wu does not teach plate like parts that protrude toward each other. However, Horning teaches a first and second plate like part that protrude toward each other (See annotated Figure 6 of Horning). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the casing of Swart in view Arai in view of Wu to incorporate the protruding feature of Horning. A motivation for this change is apply a force to a connection in order to maintain mechanical and electrical connection between the objects, as taught by Horning in paragraph [0031].
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445
652
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Annotated Figure 6 of Horning
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Swart in view of Arai and in further view of An Yun Tae (KR-10-2018-0095315).
Regarding Claim 12, the combination of Swart in view of Arai does not teach wherein a protruding part protruding in the extending direction is formed on the base end of some of the contacts, wherein the base end of the others of the contacts is formed planar, and wherein the base end formed planar is at substantially the same height position as the protruding part. However, An Yun Tae teaches wherein a protruding part protruding in the extending direction is formed on the base end of some of the contacts (Fig 8: Tip of 500 contains protrusion from the base), wherein the base end of the others of the contacts is formed planar (Fig 8: Tip of 520 is formed planar), and wherein the base end formed planar is at substantially the same height position as the protruding part (Can be seen in Fig 27 that both are substantially the same height). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the contacts of Swart in view of Arai to incorporate the protruding and planar parts of An Yun Tae. A motivation for this change is that the planar part may provide strength and/or protection for the protruding parts.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Swart in view of Arai and in further view of Suzuki et al. (US-20040137767-A1).
Regarding Claim 14, the combination of Swart in view of Arai does not teach wherein the housing has an upper housing and a lower housing that define a space in which the elastic deformation parts of the contact pins are accommodated, and wherein the contact pins are configured such that the elastic deformation parts are compressed by the upper housing and the lower housing. However, Suzuki teaches wherein the housing has an upper housing (Fig 6A-6C: IC package, 1) and a lower housing (Fig 6A-6C: conversion substrate, 70) that define a space in which the elastic deformation parts of the contact pins are accommodated (See Figure 6A-6C, elastic portions are located between 1 & 70), and wherein the contact pins are configured such that the elastic deformation parts are compressed by the upper housing and the lower housing (Can be seen from Figure 6A-6C). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the housing of Swart in view of Arai to incorporate the upper and lower housing of Suzuki. A motivation for this change is so that the compression happens evenly and when the contact is properly seated between the upper and lower housing.
Allowable Subject Matter
Claims 7 and 8 are 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.
Regarding Claim 7, the primary reason for allowance is the inclusion of two casings and that a first plate-like part of one of the casings faces the second plate-like part side of the other of the casings, and the second plate-like part of each of the casings faces the laterally stacked contacts. The closest prior art is Wu in view of Horning. Wu in view of Horning teaches two casings and two-plate like parts, but does not teach that a first plate-like part of one case faces the second plate-like part of another and the second plate-like part of each casing faces the contacts. It is these features found in the claim, as they are claimed in the combination that has not been found, taught or suggested by the prior art of record, which makes this claim allowable over the prior art.
Regarding Claim 8, claim 8 depends from claim 7 and therefore contains allowable subject matter for the same reasons as stated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH J BARRON whose telephone number is (571)272-0902. The examiner can normally be reached M-F 09:30-17:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lee Rodak can be reached at (571) 270-5628. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEREMIAH J BARRON/Examiner, Art Unit 2858
/LEE E RODAK/Supervisory Patent Examiner, Art Unit 2858