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 .
Election/Restrictions
Applicant’s election without traverse of Species A, fig. 5 and claims 17-20 in the reply filed on 08/06/2026 is acknowledged.
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 17-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,196,779 B2. 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 1 is generic to all that is recited in claim 4 of the patent. That is, claim 1 is anticipated by claim 4 of the patent. Similarly claims 18-20 are generic to all that is recited in claim 4 of the patent.
Claim Rejections - 35 USC § 102
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.
Claim(s) 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karl Suss Dresden (DE 20119157 U1).
Regarding claim 17, Dresden at fig. 1-3, particularly at fig. 2 discloses a probe system, comprising: a temperature control carrier module [5 at -200°C] configured for carrying at least one predetermined object 6; a machine frame structure 1/3 configured for partially covering the temperature control carrier module, wherein the machine frame structure has a frame opening 4 for exposing the temperature control carrier module 5; and a temperature shielding structure [structure for 11 and 12 as shown under 3 at fig. 2] disposed on the machine frame structure for partially covering the frame opening 4; wherein, when at least one probe assembly 7/8/9 is optionally and detachably disposed above the temperature control carrier module, the at least one probe assembly 7/8/9 is configured to optionally contact the at least one predetermined object 6; wherein the temperature shielding structure has a guiding channel [channel as shown for 12] formed there inside for allowing a predetermined fluid [gas 12] in the guiding channel; wherein, when the predetermined fluid is discharged from the guiding channel of the temperature shielding structure to generate a fluid curtain [through slots 11], the fluid curtain is configured as a fluid barrier [implicit to direction of 12 through 11].
Regarding claim 18, Dresden at fig. 1-2, particularly at fig. 2 discloses the probe system according to claim 17, wherein the guiding channel is configured as a gas guiding channel for allowing a predetermined gas in the gas guiding channel [channel as shown for gas 12].
Regarding claim 19, Dresden at fig. 1-2, particularly at fig. 2 discloses the probe system according to claim 17, wherein the at least one probe assembly includes a frequency extender 9 and a probe structure [structure as shown between 7 and 9] for cooperating with the frequency extender, and the fluid curtain is configured as a vertical gas curtain [see direction of arrow at 11] formed between the frequency extender and the probe structure, and the fluid barrier is configured as a vertical gas barrier [at least one as shown].
Regarding claim 20, as stated at rejection of claim 17 above, Dresden at fig. 1-2, particularly at fig. 2 discloses a machine apparatus being configured for optionally carrying at least one probe assembly, characterized in that the machine apparatus comprises the temperature control carrier module, the machine frame structure and the temperature shielding structure that are claimed in claim 17.
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 2, 2026
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