Detailed Office Action
Election/Restrictions
Applicant’s election without traverse of Gr. I, claims 97-108 in the reply filed on 08/12/2026 is acknowledged.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "162" and "170" have both been used to designate a locking actuator. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “700” has been used to designate a filter, the contactor interface and the connector interface. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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.
The drawings are objected to because at fig. 6 the reference character “4” should read --42--. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claims 97-104 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.
Claim 97 recites the limitations "the contactor substrate" in line 5-6. There is insufficient antecedent basis for this limitation in the claim. .
Claim 102 recites the limitation "the distribution board" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Dependent claims 98-101 and 103-104 are also rejected.
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 97, 99-101 and 103, rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 4, 8, 9, and 11 of U.S. Patent No. 8,947,116. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader in every aspect than the patent claim and is therefore an obvious variant thereof. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 97 is generic to all that is recited in claim 8 of the patent. That is, claim 97 is anticipated by claim 8 of the patent. Similarly claims 99-101 and 103 are obvious to claims 8, 4, 8, 9, and 11 of the patent.
Claims 97 and 99-104 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, 2, 11, 13, 14, 12, 12 of U.S. Patent No. 8,228,085. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader in every aspect than the patent claim and is therefore an obvious variant thereof. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 97 is generic to all that is recited in claim 12 of the patent. That is, claim 97 is anticipated by claim 12 of the patent. Similarly claims 99-104 are obvious to claims 2, 11, 13, 14, 12, 12 of the patent.
Claims 97, 99-101, 103 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 4, 7, 9 and 8 of U.S. Patent No. 11,977,098. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim is broader in every aspect than the patent claim and is therefore an obvious variant thereof. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 97 is generic to all that is recited in claim 8 of the patent. That is, claim 97 is anticipated by claim 8 of the patent. Similarly claims 99-101, 103 are obvious to claims 4, 7, 9, 8 of the patent.
Claim 98 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,977,098 in view of Mok et al. (US 2003/0099097 A1). Mok et al. discloses the stand-off component is a layer with a plurality of holes for the components (see rejection at section 15 for claim 97 below) to protect them.
Claim 98 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 8,228,085. in view of Mok et al. (US 2003/0099097 A1). Mok et al. discloses the stand-off component is a layer with a plurality of holes for the components (see rejection at section 15 for claim 97 below) to protect them.
Claim 98 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 8,947,116.8 in view of Mok et al. (US 2003/0099097 A1). Mok et al. discloses the stand-off component is a layer with a plurality of holes for the components (see rejection at section 15 for claim 97 below) to protect them.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 97-98 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Mok et al. (US 2003/0099097 A1) hereafter Mok.
Regarding claim 97, Mok at fig. 43, 63 and 1 discloses a method of testing an integrated circuit of a device, [0137] comprising: holding the device 92 against a surface of a holder [chuck for 92]; moving [ “the probe card assembly 60 must still exert a controlled downward force in the Z direction 84, for engaging the probe spring contacts 61a-61n located on the bottom surface 62a of the substrate 16 against a semiconductor wafer 92” see ¶0150 ] a contactor board assembly [361c-d] relative to the holder to bring terminals 61a-61n of the contactor board assembly into contact with contacts on the device [0021, 0125], wherein the electrical components [Bypass Capacitors (172) on 304, see fig. 43] are located between a force distribution substrate 302 and the contactor board assembly [361c, 309/361d]; transferring force [using 322] from 304 to the force distribution substrate 302 through a stand-off component [layer for Bypass Capacitors in 302, see fig. 43]; and providing signals through the terminals and contacts to the integrated circuit [¶0023, ¶0117]. Although separate stand-off component is not shown, separating parts from a single piece is not patentable. It would have been obvious for a person having skill in the art before the effective filing date to modify a single structure i.e. stiffener 302 into two pieces (flat rectangle (to keep the mother board 304 flat) and a layer with holes to retain the electric component of 304 i.e. bypass capacitors for protection as also disclosed by Mok (¶0225 and fig. 43) to obtain same purpose i.e. to keep motherboard 304 flat, as Applicant. See holes in 302 to accommodate electrical components (bypass capacitors 172) and force distribution using 302 of Mok. In reDulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
Regarding claim 98, Mok at fig. 43, 63 and 1 discloses the method of claim 97, wherein the stand-off component is a layer [layer with holes of 302] with a plurality of holes [as shown at fig. 43, 63 for bypass capacitor 170] formed therein and the components are located in the holes.
Regarding claim 99, Mok at fig. 43, 63 and 1 discloses the method of claim 97, further comprising: actuating first 826 and second components 828 of an actuator 824 to move a contactor support structure 342 relative to an apparatus frame [frame of 12] and urge terminals 61 on the contactor support structure against contacts on the device [ “the probe card assembly 60 must still exert a controlled downward force in the Z direction 84, for engaging the probe spring contacts 61a-61n located on the bottom surface 62a of the substrate 16 against a semiconductor wafer 92” see ¶0150 ].
Regarding claim 100, Mok at fig. 43, 63 and 1 discloses the method of claim 97, wherein the electrical components [bypass capacitors 172] are mounted on a side on the contactor board assembly 361c-d opposing the terminals 61 held by the contactor board assembly [as shown at 43, 63].
Regarding claim 101, Mok at fig. 43, 63 and 1 discloses the method of claim 97, wherein the contactor board assembly includes a distribution board substrate 346 and a contactor substrate 304 mounted to the distribution board substrate.
Regarding claim 103, Mok at fig. 43, 63 and 1 discloses the method of claim 97, further comprising: removably mounting a cartridge frame of a cartridge 300 to the apparatus frame [frame of 280] , the contactor board assembly 361c-d forming part of the cartridge 280; and connecting a surface of a connector interface 344 to a surface of a contactor interface 346.
Regarding claim 104, Mok at fig. 43, 63 and 1 discloses the method of claim 103, wherein a plurality of conductors [conductors as shown at 346] is held by a connector body [body of 346] to form a connector [body forms a connector], the connector interface being surfaces of the conductors [conductors as shown between two opposite surfaces] .
Allowable Subject Matter
Claim 102 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Please note: Examiner has cited particular columns, line numbers, and figures in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teaching of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicants are reminded that MPEP 2141.02 states: A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. V. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Conclusion
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/PARESH PATEL/Primary Examiner, Art Unit 2858
September 30, 2026
