Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 120-128 in the reply filed on 08/18/2026 is acknowledged.
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.
The disclosure is objected to because of the following informalities: at ¶0250 of the specification the phrase "the volume-defining ring 608" should read --the first volume-defining ring 608--
The disclosure is objected to because of the following informalities: at ¶0061, the phrase "of Fig. 5" should read --of Fig. 4--
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.
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 120-128 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 9,250,291 in view of Ishaka et al. (US 2002/0190740 A1) hereafter Ishaka. Regarding claim 120, Patent claim 14 discloses all the elements except for a distribution board substrate including a plurality of layers having a plurality of different stiffnesses, one of the layers of the distribution board substrate being a core layer that is stiffer than a majority of the layers. Ishaka discloses a distribution board substrate [layers of 16, 17, 18, 19] including a plurality of layers [16, 17, 18, 19] having a plurality of different stiffnesses [different elasticity, see ¶0072], one of the layers of the distribution board substrate being a core layer [16, ¶0087] that is stiffer than a majority of the layers [¶0068, ¶0087 and ¶0072]. Ishaka also discloses a contactor substrate 11 mounted to the distribution board substrate [layers of 16, 17, 18, 19] to jointly form a contactor support structure held by the apparatus frame 20. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to add the distribution board substrate as taught by Ishaka to the an apparatus of claim 14 of the patent, in order to obtain claim invention and advantages that Ishaka have to offer i.e. compensate the warpage for uniform load applied everywhere on the conductor substrate 11.
Regarding claim 121, Ishaka disclose at least two core layers [17, 18, 19] in opposing haves of the distribution board.
Regarding claims 122-128, Patent claims 10, 11, 12, 14, 14, 17, 18 discloses all the limitations.
Claims 120-121 and 125-128 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 7,800,382 in view of Ishaka et al. (US 2002/0190740 A1) hereafter Ishaka. Regarding claim 120, Patent claim 10 discloses all the elements except for a distribution board substrate including a plurality of layers having a plurality of different stiffnesses, one of the layers of the distribution board substrate being a core layer that is stiffer than a majority of the layers; a contactor substrate mounted to the distribution board substrate to jointly form a contactor support structure held by the apparatus frame. Ishaka discloses a distribution board substrate [layers of 16, 17, 18, 19] including a plurality of layers [16, 17, 18, 19] having a plurality of different stiffnesses [different elasticity, see ¶0072], one of the layers of the distribution board substrate being a core layer [16, ¶0087] that is stiffer than a majority of the layers [¶0068, ¶0087 and ¶0072]. Ishaka also discloses a contactor substrate 11 mounted to the distribution board substrate [layers of 16, 17, 18, 19] to jointly form a contactor support structure held by the apparatus frame 20. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to add the distribution board substrate and the a contactor substrate as taught by Ishaka to the an apparatus of claim 10 of the patent, in order to obtain claim invention and advantages that Ishaka have to offer i.e. compensate the warpage for uniform load applied everywhere on the conductor substrate 11.
Regarding claim 121, Ishaka disclose at least two core layers [17, 18, 19] in opposing haves of the distribution board.
Regarding claims 125-128, Patent claims 15, 16, 17, 18 discloses all the limitations.
Claims 120-127 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 10,677,843 B2 in view of Ishaka et al. (US 2002/0190740 A1) hereafter Ishaka. Regarding claim 120, Patent claim 6 discloses all the elements except for one of the layers of the distribution board substrate being a core layer that is stiffer than a majority of the layers. Ishaka discloses a distribution board substrate [layers of 16, 17, 18, 19] including a plurality of layers [16, 17, 18, 19] having a plurality of different stiffnesses [different elasticity, see ¶0072], one of the layers of the distribution board substrate being a core layer [16, ¶0087] that is stiffer than a majority of the layers [¶0068, ¶0087 and ¶0072]. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to add the stiffer core layer as taught by Ishaka to the an apparatus of claim 6 of the patent, in order to obtain claim invention and advantages that Ishaka have to offer i.e. compensate the warpage for uniform load applied everywhere on the conductor substrate 11.
Regarding claim 121, Ishaka disclose at least two core layers [17, 18, 19] in opposing haves of the distribution board.
Regarding claims 122-127, Patent claims 6, 6, 4, 8, 9, 10 discloses all the limitations.
Claims 120-127 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 10,677,843 B2 in view of Ishaka et al. (US 2002/0190740 A1) hereafter Ishaka. Regarding claim 120, Patent claim 25 discloses all the elements except for one of the layers of the distribution board substrate being a core layer that is stiffer than a majority of the layers. Ishaka discloses a distribution board substrate [layers of 16, 17, 18, 19] including a plurality of layers [16, 17, 18, 19] having a plurality of different stiffnesses [different elasticity, see ¶0072], one of the layers of the distribution board substrate being a core layer [16, ¶0087] that is stiffer than a majority of the layers [¶0068, ¶0087 and ¶0072]. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to add the stiffer core layer as taught by Ishaka to the an apparatus of claim 6 of the patent, in order to obtain claim invention and advantages that Ishaka have to offer i.e. compensate the warpage for uniform load applied everywhere on the conductor substrate 11.
Regarding claim 121, Ishaka disclose at least two core layers [17, 18, 19] in opposing haves of the distribution board.
Regarding claims 122-127, Patent claims 25, 25, 25, 27, 28, 29 discloses all the limitations.
Claim Objections
Claim 121 is objected to because of the following informalities: the phrase “the distribution board” should read --the distribution board substrate-- Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 120-121 is/are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Ishizaka et al. (US 2002/0190740 A1) hereafter Ishizaka.
Regarding claim 120, Ishizaka at Fig. 1-11 discloses an apparatus for testing an integrated circuit of a device, comprising: an apparatus frame 123/127; a holder 31/32/121/131 for the device 41/91, secured to the apparatus frame; a distribution board substrate [layer of 16/17/18/19] including a plurality of layers 16/17/18/19 having a plurality of different stiffnesses [stiffness is implicit to elasticity, both used for deformation when external force is applied, see ¶0072], one of the layers of the distribution board substrate being a core layer16 that is stiffer than a majority of the layers [17, 18 are more elastic than 16, see ¶0072]; a contactor substrate 11 mounted to the distribution board substrate to jointly form a contactor support structure 11/16/17/18/19 held by the apparatus frame 123/127; a plurality of terminals [bumps14a of 14], held by the contactor support structure [fig. 1B], for contacting contacts on a device 41/91, the holder and contactor support structure being movable [for testing 91 using 128, 129, 130, ¶0024] relative to one another so that each one of the terminals makes releasable contact with a respective contact of the device [¶0084]; a power source [¶0002, ¶0038] ; a power electrical path [wires as shown near element 127 fig. 11b] connecting the power source to a power terminal of the terminals [14a] held by the support structure; a signal source; and a plurality of signal electrical paths, each connecting the signal source to a respective signal terminal of the terminals held by the support structure [power and signals thorough electrical path and terminals are implicit to “apparatus used for a burn-in screening or inspection applied to a semiconductor wafer”].
Regarding claim 121, Ishizaka at Fig. 1-11 discloses the apparatus of claim 120, further comprising: at least two core layers [portions of 18, 19 as an example] in opposing halves of the distribution board.
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 through 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 122-123 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ishizaka as applied to claim 120 above, and further in view of Mok et al. (US 2003/0099097 A1) hereafter Mok.
Regarding claim 122, Ishizaka discloses all the elments of the apparatus of claim 120. Ishizaka is silent about a plurality of electrical components mounted on the contactor support structure. Mok in a similar environment at fig. 41 discloses a plurality of electrical components 172 mounted on the contactor support structure 304. Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to add said electrical component to the contactor support structure of Ishizaka to obtain claim invention and to provide low impedance filtering.
Regarding claim 123, modified Ishizaka, particularly Mok discloses apparatus of claim 122, wherein the electrical components 172 are mounted on a side on the contactor support structure 304 opposing the terminals 61a-n held by the contactor support structure.
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
October 7, 2026
