DETAILED ACTION
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/20/2025 has been entered.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
With regard to the arguments on pages 9-12 towards the previous 102 rejections in view of Sakai et al. (Sakai) (US 2014/0218062 A1),
Applicant argues that Sakai does not disclose the connecting portions and the fixing portion do not extend in parallel to each other. The Examiner respectfully disagrees. The connecting portions all extend in the up/down direction. The fixing portion 32 is formed from two teeth and the material between them. Collectively ,this fixing portion also extends in the up/down direction. The fixing portion and connecting portion therefore extend in the same direction, and thus parallel to each other.
Applicant argues that no separate bent portion is provided that connects them in the width direction. The Examiner respectfully disagrees. First, a “separate” bent portion is not claimed, and instead only a bent portion is claimed. That stated, the various portions for the elements can be redefined to include the new claim limitations. A bent portion does exist, and that the connects the connecting portion and fixing portion together in the width direction as seen below:
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Here it can be seen that the bent portion extends from the connecting portion downward, but then to the right (width direction) towards the fixing portion. The claim does not limit the interconnecting solely to a width direction, and thus the above interpretation is reasonable.
Applicant then argues various benefits of the disclosure, but the Examiner respectfully notes that these secondary considerations do not reasonably rebut the anticipated rejection. Furthermore the prior art is not required to meet any of the argued benefits, and is instead, only required to meet the claim features as recited. Applicant further argues that it is difficult to expect Sakai to achieve the same effects as claim 1. However, Sakai discloses the claim feature, which is all that is required of the prior art. The prior art is not required to achieve any of the benefits disclosed by applicant, as the prior art is only required to disclose those features actually claimed. Furthermore Sakai would reasonably achieve any argued benefit because it discloses the claim features. As it is the claim features that provide the argued benefits, the prior art would reasonably therefore disclose these benefits. Lastly, the Examiner respectfully notes that arguing what is difficult to expect does not reasonably rebut the rejection, because it does not reasonably establish that that the prior art fails to disclose the claim features. Arguing that a feature is difficult or that it is difficult to expect a prior art reference to disclose a claim feature does not reasonably establish the prior art fails to disclose such a feature. Furthermore, the Examiner respectfully notes that applicant is relying upon what applicant believes a person of ordinary skill in the art would know without evidence, but where evidence is necessary (See MPEP 2145(I)). Applicant has not presented any evidence to support applicant’s arguments or that the prior art fails to disclose the claim features. As such, the Examiner respectfully disagrees.
As such, the Examiner respectfully disagrees.
With regard to the arguments on pages 12-16 directed towards the previous 103 rejections in view of by TAE (KR 10-2018-0095315 A),
Applicant argues that TAE does not disclose a plurality of metal layers are stacked in the thickness direction of the elastic portion, and an actual width of the thin plate and the overall thickness (H) have a ratio in a range of 1:5 to 1:30,, the actual width (t) of each conductive plate is in a range of 5 μm to 15 μm, The Examiner respectfully disagrees.
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First, the Examiner respectfully notes that the layers are not claimed to be laminated. Note that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Second, as seen above and in paragraphs [0059],[0060], the reference does disclose a plurality of stacked metal layers. Applicant, respectfully, provides no explanation or argument as to why these plurality of stacked metal layers, stacked in the thickness direction of both the pin and elastic portion, do not reasonably meet the claim requirements.
Third, the Examiner has previously explained that TAE disclosed that different ratios of thickness and length can be used for the probe pin in Figures 1, 5, 9, 12, thereby demonstrating that the ratio of thickness to length is a result effective variable, and that the device is a MEMS device and thus the measurements must reasonably be in micrometers for the device (see paragraph [0032]). The Examiner explained why this feature would therefore have been obvious by way of optimization. The Examiner respectfully notes that this feature is taught by way of the an obviousness rejection as explained below.
Applicant then argues various benefits of the disclosure, but the Examiner respectfully notes that these secondary considerations do not reasonably rebut the prime facie case of obviousness made below. Applicant further argues that it is difficult to expect TAE to achieve the same effects as claim 21. However, TAE discloses the claim feature, in the combination, which is all that is required of the prior art. The prior art is not required to achieve any of the benefits disclosed by applicant, as the prior art is only required to disclose those features actually claimed. Furthermore TAE would reasonably achieve any argued benefit because it would, in the combination, disclose the claim features. As it is the claim features that provide the argued benefits, the prior art would reasonably therefore disclose these benefits. Lastly, the Examiner respectfully notes that arguing what is difficult to expect does not reasonably rebut the rejection, because it does not reasonably establish that that the prior art fails to disclose the claim features. Arguing that a feature is difficult or that it is difficult to expect a prior art reference to disclose a claim feature does not reasonably establish the prior art fails to disclose such a feature. Furthermore, the Examiner respectfully notes that applicant is relying upon what applicant believes a person of ordinary skill in the art would know without evidence, but where evidence is necessary (See MPEP 2145(I)). Applicant has not presented any evidence to support applicant’s arguments or that the prior art fails to disclose the claim features. As such, the Examiner respectfully disagrees.
Claim Rejections - 35 USC § 112
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.
Claims 1, 7, 8, 10, 12, 13, and 21-24 are 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.
As to Claim 1,
The phrase “a connecting portion … connecting the pin portion and the fixing portion to each other; and a bent portion interconnecting, in the width direction, a lower end of the fixing portion and a lower end of the connecting portion” on lines 5-10 introduces new matter and lacks proper written description.
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As seen above, applicant discloses a fixing portion (200), a connecting portion (300), and a bent portion (400). Applicant claiming that the connecting portion connects the pin portion and fixing portion together, but is then claiming that the bent portion connects the fixing portion and connecting portion together. As such, the connecting portion does not reasonably connect the pin portion and fixing portion to each other, because the connecting portion does not connect to the fixing portion. Instead, the connecting portion connects to the bent portion, and it is the bent portion that connects the fixing and connecting portions together. The combination of the above claim phrase therefore introduces new matter, because the connecting portion cannot connect the fixing portion to the pin portion when it does not actually contact the fixing portion. Instead, the bent portion is now claimed to be in between the fixing and connecting portion, thereby preventing the connecting portion from connecting the pin and fixing portions together. This phrase therefore introduces new matter. Furthermore, only to the extent that it is held that the above phrase does not introduce new matter, this phrase is further indefinite because applicant does not reasonably disclose the manner in which the above combination of features are implemented, where the connecting portion connects the fixing and pin portions together, but where connecting portion does not physically connect to the fixing portion because a bent portion exists in between the connecting and fixing portions.
As to Claim 21,
The phrase “a plurality of metal layers are stacked in the thickness direction of the elastic portion” on lines 12-13 introduces new matter. Applicant already claims a plurality of metal layers are stacked in the thickness direction on lines 5-6, and as best understood, these stacked layers include all of the stacked layers of the disclosure. As such, no other layers exist that could be the stacked layers now distinctly recited in the above phrase. This phrase therefore introduces new matter, because applicant does not reasonably disclose two distinct pluralities of stacked metal layers.
As to Claims 7, 8, 10, 12, 13, 22, 23, and 24,
These claims stand rejected for incorporating and reciting the above rejected subject matter of their respective parent claim(s) and therefore stand rejected for the same reasons.
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, 7, 8, 10, 12, 13, and 21-24 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.
As to Claim 1,
The phrase “a connecting portion … connecting the pin portion and the fixing portion to each other; and a bent portion interconnecting, in the width direction, a lower end of the fixing portion and a lower end of the connecting portion” on lines 5-10 is indefinite.
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As seen above, applicant discloses a fixing portion (200), a connecting portion (300), and a bent portion (400). Applicant claiming that the connecting portion connects the pin portion and fixing portion together, but is then claiming that the bent portion connects the fixing portion and connecting portion together. As such, the connecting portion does not reasonably connect the pin portion and fixing portion to each other, because the connecting portion does not connect to the fixing portion. Instead, the connecting portion connects to the bent portion, and it is the bent portion that connects the fixing and connecting portions together. The combination of the above claim phrase therefore is indefinite, because it is unclear how the terms “connecting” or “interconnecting” should be interpreted. The connecting portion does not reasonably connect the fixing portion to the pin portion when it does not actually contact the fixing portion. The metes and bounds of what can and cannot be considered connecting two components together is therefore unclear.
As to Claim 21,
The phrase “a plurality of metal layers are stacked in the thickness direction of the elastic portion” on lines 12-13 is indefinite. Applicant already claims a plurality of metal layers are stacked in the thickness direction on lines 5-6, and as best understood, these stacked layers include all of the stacked layers of the disclosure. As such, no other layers exist that could be the stacked layers now distinctly recited in the above phrase. This phrase is therefore unclear because the difference and relationship between the distinctly recited stacked metal layers is unclear. For the purpose of compact prosecution, the Examiner is interpreting that the stacked layers from both recitations refer to the same stacked metal layers.
As to Claims 7, 8, 10, 12, 13, 22, 23, and 24,
These claims stand rejected for incorporating and reciting the above rejected subject matter of their respective parent claim(s) and therefore stand rejected for the same reasons.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 7, 8, 10, 12, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakai et al. (Sakai) (US 2014/0218062 A1).
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As to Claim 1,
Sakai discloses An electrically conductive contact pin, comprising: a pin portion comprising a first contact portion (For all claims but 13, (10,40), and (31) for claim 13) a second contact portion (For all claims but 13 (31), and (10,40) for claim 13) and an elastic portion (20) between the first contact portion and the second contact portion (Figure 5); a fixing portion (32) provided outside the pin portion (Figure 5); and a connecting portion (33 or 33,42 plus the above indicated portion) configured to be disposed in a width direction (left/right direction) between the pin portion and the fixing portion (Figure 5), (see above figure), the connecting portion being spaced apart from both the pin portion and the fixing portion, between an outerside of the pin portion and an inner side of the fixing portion (Figure 5), (see above figures / note (33) is located between the pin and fixing portions as claimed), and connecting the pin portion and the fixing portion to each other (Figure 5), (see above figure / note the connecting portion includes elements 33,42 on both sides of the pin portion, and the portion of 30 as indicated above),(Paragraphs [0014]-[0017],[0027]), (Abstract), and a bent portion (see above figure) interconnecting, in the width direction, a lower end of the fixing portion and a lower end of the connecting portion (see above figures); wherein at least a part of the fixing portion and at least a part of the connecting portion are provided parallel to and spaced apart from each other in the width direction (see above figure), the first contact portion is located above the elastic portion and the second contact portion is located below the elastic portion (see above figure), and the bent portion is located below the first contact portion and above the second contact portion (see above figure).
(Note that the claim is being interpreted as best understood. As such, the connecting portion is configured to connect the pin portion at the top of the figure, through the connecting potion, and down to the fixing portion by way of the bent portion. This interpretation is consistent with the manner in which applicant is interpreting the claims.)
As to Claim 7,
Sakai discloses the connecting portion is formed to extend in the same length direction as a length direction of the fixing portion (Figure 5).
As to Claim 8,
Sakai discloses the connecting portion is relatively movable with respect to the fixing portion so that a separation space between the fixing portion and the connecting portion is changed (Figure 5 / note that the top connecting portion elements (42) are relatively moveable with respect to the fixing portion 32, and a separation space between them is changed).
As to Claim 10,
Sakai discloses the connecting portion is connected to at least a part of the pin portion and is connected to a lower end of the fixing portion to connect the pin portion and the fixing portion to each other (see above figure), (Figure 5 / note the connecting portion connects the fixing portion 32 to pin portion 30).
As to Claim 12,
Sakai discloses the fixing portion comprises a protrusion protruding outwardly (Figure 5).
As to Claim 13,
Sakai discloses at least a part of the elastic portion protrudes outwardly below a lower end of the fixing portion, and at least a part of the first contact portion protrudes outwardly upwardly above an upper end of the fixing portion (see above figure), (Figure 5 / note rotating the figure 180 degrees discloses this claim feature).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over TAE (KR 10-2018-0095315 A).
Note the cited paragraphs for the above reference come from the provided English machine translation.
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As to Claims 21-24,
TAE discloses An electrically conductive contact pin having an overall length (L) in a length direction (see above figure), an overall thickness (H) in a thickness direction perpendicular to the length direction (see above figure), and an overall width (W) in a width direction perpendicular to the length direction (see above figure), wherein a plurality of metal layers are stacked in the thickness direction of electrically conductive contact pin (see above figure), and integrally connected to each other in the thickness direction to form a single body form the electrically conductive contact pin (see above figure), (Paragraphs [0059],[0060]), wherein the electrically conductive contact pin has a uniform cross-sectional shape that extends in the thickness direction (see above figure / note the three metal layers in the thickness direction have the same thickness, and further the cross-sectional shape is uniform because one half is reasonably mirror image of another half), (Paragraphs [0059],[0060]), wherein the electrically conductive contact pin comprises an elastic portion provided in the form of a bent leaf spring formed by bending a thin plate a plurality of times (see above figure), (Paragraphs [0059],[0060] / note the manner in which the spring is formed is a product-by-process feature and therefore not given patentable weight as there is no non-obvious difference between the final product and the prior art (see MPEP 2113), and note that element 500 is an elastic member that is reasonably a leaf spring or comparable device bent to form a substantially similar elastic portion as applicant), wherein a plurality of metal layers are stacked in the thickness direction of the elastic portion (see stacked layers 1-3), a ratio of the overall thickness (H) to the overall width (W) is in a range of 1:1 to 1:5 (see above figure / note the thickness must be in the claimed range as seen above), and that different ratios of thickness and length can be used for the probe pin in Figures 1, 5, 9, 12, thereby demonstrating that the ratio of thickness to length is a result effective variable, and that the device is a MEMS device and thus the measurements must reasonably be in micrometers for the device (see paragraph [0032]).
TAE does not disclose an actual width of the thin plate and the overall thickness (H) have a ratio in a range of 1:5 to 1:30, a ratio of the overall thickness (H) to the overall length (L) is in a range of 1:3 to 1:9, the actual width (t) of each conductive plate is in a range of 5 μm to 15 μm, and the overall thickness (H) is in a range of 70 μm to 200 μm, the overall length (L) is in a range of 300 μm to 2 mm.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify TAE to optimize the ratio of overall thickness to overall length of the probe pin and to optimize the dimensions of the probe pin to therefore include an actual width of the thin plate and the overall thickness (H) have a ratio in a range of 1:5 to 1:30, a ratio of the overall thickness (H) to the overall length (L) is in a range of 1:3 to 1:9, the actual width (t) of each conductive plate is in a range of 5 μm to 15 μm, and the overall thickness (H) is in a range of 70 μm to 200 μm, the overall length (L) is in a range of 300 μm to 2 mm given the above disclosure and teaching of TAE because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), and in order to advantageously form the probe pin of a greater thickness, thereby increasing the thickness to length ratio to a required amount for a given inspection process, to prevent the probe pin from being damaged by a transverse force applied during the inspection process (Paragraph [0042]), (MPEP 2144.05).
(Note: While exact dimensions are not provided, it is clear that the width of a plate is less than half of any of the three sections of the plate in the thickness direction as seen above. Even if the width were half of one of the three sections indicated by the vertical lines, this would be half of a third of the thickness, or 0.165, which is less than the claimed ratio of 1:5 or 0.20.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID M. SCHINDLER whose telephone number is (571)272-2112. The examiner can normally be reached 8am-4:30pm.
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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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DAVID M. SCHINDLER
Primary Examiner
Art Unit 2858
/DAVID M SCHINDLER/Primary Examiner, Art Unit 2858