DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/20/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
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.
Claim 4 is 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.
Claim 4 recites the limitation "wherein a peripheral portion of the tapered portion of the wide portion" in line 2. There is insufficient antecedent basis for the limitation “the tapered portion of the wide portion” in the claim. It appears the issue is the result of a typo. For the purpose of examination, the examiner interprets the claim as reciting: “wherein a peripheral portion of
Correction is required.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: PROBE HEAD AND PROBE SUPPORTED BY TAPERED THROUGH HOLE
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.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/571,734 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of reference application 18/571,734 anticipates all elements recited in claims 1 and 2 in the manner shown in the table below. It’s noted that the examiner interprets the recitation “to receive” as equivalent to “to support” in the context of claim 1 of the reference application.
Instant application: 18/721,869
Reference application: 18/571,734
Claim 1: A probe head comprising:
a probe; and
an insulating support provided with a tapered hole to support a plurality of portions of the probe.
Claim 2: The probe head according to claim 1, wherein the plurality of portions of the probe includes a tapered portion having a tapered angle less than a tapered angle of the tapered hole.
Claim 1: A socket comprising:
A probe having a first tapered portion; and
and insulating support provided with a through-hole having a second tapered portion to receive the first tapered portion,
wherein a tapered angle of the first tapered portion is less than a tapered angle of the second tapered portion.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the US Patent Application Publication PGPub 2021/0175658 A1 by Nakamura et al., (Nakamura hereafter).
Regarding claim 1, Nakamura teaches in Figure 19, a probe head comprising:
a probe (80a); and
an insulating support (40 + 50. It’s noted that portion 50 includes an insulating layer on the inner surface of the through holes 50c as explained in paragraph 0108, lines 8-11, thus insulating adjacent probes from making electrical contact) provided with a tapered hole (formed between the top and bottom surfaces of 50) to support a plurality of portions of the probe (the inner surface of the tapered portion contacts and thus supports multiple portions around the circumference of the probe in the manner illustrated for example, in Figure 11).
Regarding claim 2, Nakamura teaches in Figure 19, the probe head according to Claim 1, wherein the plurality of portions of the probe includes a tapered portion (tapered portion pressing against the insulating support tapered portion, in the manner illustrated for example, in Figure 11) having a tapered angle less than a tapered angle of the tapered hole (the tapered angle “A” in annotated Figure below is lower/less than the tapered angle “B”).
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Annotated Figure 19
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.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of the Japanese publication JP-2006300581-A by Todoroki Takeshi, (Todoroki hereafter). A copy of the foreign document and partial translation are provided with this Office Action.
In terms of claim(s) 3, Nakamura substantially teaches all of the elements disclosed above, except for the plurality of portions of the probe including a wide portion having a width wider than the tapered portion.
Todoroki teaches in Figure 9, a probe (18+20) supported by a support (10), the support provided with a tapered hole (formed by inner surface 16 and 30) to support a plurality of portions of the probe (first shoulder 20c and second shoulder 20d). Todoroki further teaches the plurality of portions includes a wide portion (20d) having a width wider than the first portion (20c). By doing so, Todoroki effectively creates separate points of support within the inner surface of the tapered hole, increasing stability.
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of using multiple points of support within a tapered hole as taught by Todoroki, and add a second portion wider than the tapered portion of Nakamura’s probe, in order to gain the advantage of add another point of contact between the probe and the insulating support, thus increasing stability and ensuring alignment.
Regarding claim 4, Todoroki teaches in Figure 19, a peripheral portion of the wide portion (surface adjacent to shoulder 20d parallel to the horizontal x-axis) is substantially parallel to a direction perpendicular to an extension direction of the probe (extension direction being the y-axis).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
- The US Patent US 8,493,085 by Barabi et al., directed to spring loaded contacts including probes held within tapered holes. See figure below:
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- The Chinese publication CN 118159850A by Yamamoto et al. directed to contacts including probes held within tapered holes, where the tapered angle in the support is different from that of the probe.
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- The US Patent US 11,821,915 by Nakashima et al., directed to spring loaded contacts held within tapered holed of a support, where the tapered angle in the support is different from that of the probe. See figure below:
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard Isla whose telephone number is (571)272-5056. The examiner can normally be reached Monday-Friday 9a - 5:30p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Huy Phan can be reached at 571 272-7924. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD ISLA/ Primary Patent Examiner, Art Unit 2858 January 5, 2026