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 .
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.
Response to Amendment
3. The amendments filed on 01/17/2025 have been fully considered and are made of record.
a. Claims 1-8 have been amended.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/992,880 (reference application) in view of Patent NO. US 6,019,612. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of Instant application
Claim 1 of copending Application No. 18/992,880
A probe apparatus that electrically connects an
electrode terminal of a device to be inspected and an electrode pad connected to an inspection
device, the probe apparatus comprising:
A probe apparatus that electrically connects an electrode terminal of a device to be inspected and an electrode pad connected to an inspection device, the probe apparatus comprising:
a housing that has a first surface and a second surface facing the first surface;
a housing that has a first surface and a second surface facing the first surface;
a conductive probe that has a first contact portion exposed on the first surface and a second contact portion exposed on the second surface and is supported by the housing,
a probe that has a first contact portion exposed on the first surface and a second contact portion exposed on the second surface and is supported by the housing, and
a posture of the probe changing inside the housing such that a position of a contact region in the second contact
portion in contact with the electrode pad changes in response to a displacement of the first contact
portion; and
a posture of the probe changing inside the housing such that a position of a contact region in the second contact portion in contact with the electrode pad changes in response to a displacement of the first contact portion; and
an elastic portion that is arranged inside the housing, and
an elastic portion that is arranged inside the housing by abutting on the probe and the housing,
copending Application No. 18/992,880 is silent about elastic member has a first elastic member and a second elastic member integrated with the first elastic member to reinforce an elastic force of the first elastic member.
Patent NO. US 6,019,612 teaches elastic member has a first elastic member (first elastic member 36 in Fig. 5; See Col. 5, Lines 55-65) and a second elastic member (second elastic member 34 in Fig. 5; See Col. 5, Lines 55-65) integrated with the first elastic member to reinforce an elastic force of the first elastic member (second elastic 34 integrated with first elastic member 36 in Fig. 5 and Fig. below; See Col. 5, Lines 55-65).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to modify claim 1 of copending Application No. 18/992,880 by using elastic member has a first elastic member and a second elastic member integrated with the first elastic member to reinforce an elastic force of the first elastic member, as taught by Patent NO. US 6,019,612 in order to achieve accurate testing (Patent NO. US 6,019,612; Col. 2, Lines 5-10).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 1-8 are rejected under 35 U.S.C. 102(a1) as being anticipated by Hasegawa et al. (Patent NO. US 6,019,612; hereinafter Hasegawa).
Regarding Claim 1, Hasegawa teaches a probe apparatus that electrically connects an electrode terminal of a device to be inspected and an electrode pad connected to an inspection device (device in fig. 5 and Fig. below; See Col. 7, Line 1 through Col. 8, Line 20), the probe apparatus comprising:
a housing (housing 26 in Fig. 5 and Fig. below; See Col. 7, Line 1 through Col. 8, Line 20) that has a first surface and a second surface facing the first surface (See first surface and second surface in Fig. 5 and Fig. below; See Col. 7, Line 1 through Col. 8, Line 20);
a conductive probe (probe 22 in Fig. 5 and Fig. below; See Col. 7, Line 1 through Col. 8, Line 20) that has a first contact portion exposed on the first surface (first contact exposed in first surface of housing 26 n Fig. 5 and Fig. below; See Col. 7, Line 1 through Col. 8, Line 20) and a second contact portion exposed on the second surface and is supported by the housing (second contact exposed in second surface of housing 26 n Fig. 5 and Fig. below),
a posture of the probe changing inside the housing (posture of probe 22 changes with electrode pad 16 inside housing 26 in fig. 5 and Fig. below; See Col. 7, Line 1 through Col. 8, Line 20) such that a position of a contact region in the second contact portion in contact with the electrode pad changes in response to a displacement of the first contact portion (first and second contact portion change with electrode pad 16 in fig. 5 and Fig. below); and
an elastic portion (34, 36 in Fig. 5 and Fig. below; See Col. 5, Lines 55-65) that is arranged inside the housing (134, 36 is inside housing 26 in Fig. 5 and Fig. below; See Col. 5, Lines 55-65), and the has a first elastic member (first elastic member 36 in Fig. 5 and Fig. below) and a second elastic member integrated with the first elastic member (second elastic 34 integrated with first elastic member 36 in Fig. 5 and Fig. below; See Col. 5, Lines 55-65) to reinforce an elastic force of the first elastic member (34 reinforce an elastic force of the first elastic member 36 in Fig. 5 and Fig. below), the elastic portion being elastically deformed in response to a change in the posture of the probe inside the housing (36 deforms with posture of probe 22 in fig. 5 and Fig. below; See Col. 5, Lines 55-65), and biasing the probe in a direction that cancels the displacement of the first contact portion (See Col. 5, Lines 55-65).
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Regarding Claim 2, Hasegawa teaches the probe apparatus according to claim 1, wherein the first elastic member is an elastomer (first elastic member 36 is silicon rubber, therefore elastomer in Fig. 5; See Col. 5, Lines 55-65).
Regarding Claim 3, Hasegawa teaches the probe apparatus according to claim 1, wherein the second elastic member is embedded in the first elastic member (second elastic member 34 is embedded into first elastic member 36 in Fig. 5; See Col. 5, Lines 55-65).
Regarding Claim 4, Hasegawa teaches the probe apparatus according to claim 1, wherein at least a part of the second elastic member is exposed on a surface of the first elastic member (second elastic member 34 exposed to surface of 36 in fig. 5; See Col. 5, Lines 55-65).
Regarding Claim 5, Hasegawa teaches the probe apparatus according to claim 3, wherein the second elastic member is a cylindrical coil spring (second elastic member 34 is conductive cylindrical, therefore cylindrical coil spring in Fig. 5; See Col. 5, Lines 55-65).
Regarding Claim 6, Hasegawa teaches the probe apparatus according to claim 3, wherein the second elastic member is a mesh-like cylindrical body (second elastic member 34 is conductive cylindrical all around surface of 36, therefore mesh-like cylindrical coil spring in Fig. 5; See Col. 5, Lines 55-65).
Regarding Claim 7, Hasegawa teaches the probe apparatus according to claim 3, wherein the first elastic member has a hollow portion therein (first elastic member 36 has hollow portion where 34 is inserted in Fig. 5).
Regarding Claim 8, Hasegawa teaches the probe apparatus according to claim 7, wherein
an elastic force of the elastic portion is set in such a way that a displacement amount of the first contact portion caused by coming into contact with the electrode terminal is set to a predetermined value by adjusting a thickness of the first elastic member from an outer peripheral portion to the hollow portion of the first elastic member (See Col. 7, Lines 30 through Col. 8, Line 20), and
the predetermined value of the displacement amount is set in such a way that a length of a contact mark generated on the electrode terminal when the probe comes into contact with the electrode terminal (See the contact mark when probe 22 comes to electrode terminal 16 in Fig. 5-Fig. 6) is set to a predetermined constraint value or less (See Col. 7, Lines 30 through Col. 8, Line 20).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KOPPEL et al. (Pub NO. US 2021/0302504 A1) discloses Measuring Assembly.
Pagani et al. (Patent NO. US 10,186,463 B2) discloses Method of Filling Probe Indentations.
Vallauri et al. (Pub NO. US 2017/0307656 A1) discloses Manufacturing Method of Contact Probe.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZANNATUL FERDOUS whose telephone number is (571)270-0399. The examiner can normally be reached Monday through Friday 8am to 5pm (PST).
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/ZANNATUL FERDOUS/Examiner, Art Unit 2858
/JERMELE M HOLLINGTON/Primary Examiner, Art Unit 2858
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