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 Amendment
The amendment filed on 2026-03-02 has been entered. Claim(s) 1-7 remain pending in this application. Claim 1 has been amended.
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.
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 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.
Regarding Claim 1, the inclusion of the limitation “wherein the pin controller is structured to transmit the device signals as is to the test head without comparing the device signals with expected values,” in lines 10-11 is not supported in the specification. The specification is silent as to whether the pin controller is structured to transmit the device signals as is to the test head without comparing the device signals with expected values. While silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure (MPEP 2173.05(i)). Applicant’s disclosure in paragraph [0057] and Fig 13 show the pin electronics (400) as containing comparators and these comparators are configured to receive device signals. The structure of the claimed invention is therefore capable of performing the limitation contained in the claim and the specification does not explicitly state that it does not. Therefore, a person having ordinary skill in the art, before the effective filing date of the claimed invention, would not recognize that applicant had possession of the invention as claimed.
Regarding Claims 2-7, 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.
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 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
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