UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO.
FILING DATE
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
CONFIRMATION NO.
18/038,639
05/24/2023
Yoshihiro TODA
KIPKYO-PT086
1786
3624
7590
10/01/2025
EXAMINER
VOLPE KOENIG
ROBINSON, KRYSTAL
30 SOUTH 17TH STREET, 18TH FLOOR
PHILADELPHIA, PA 19103
ART UNIT
2848
PAPER NUMBER
NOTIFICATION DATE
DELIVERY MODE
10/01/2025
ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eoffice@vklaw.com
PTOL-90A (Rev. 04/07)
Application No.
18/038,639
Applicant(s)
TODA, Yoshihiro
Office Action Summary
Examiner
KRYSTAL ROBINSON
Art Unit
2848
AIA (First Inventor to
File) Status Yes
- THE MAILING DATE of this communication appears on the cover sheet with the correspondence address --
Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTHS FROM THE MAILING
DATE OF THIS COMMUNICATION.
Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
date of this communication.
If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
adjustment. See 37 CFR 1.704(b).
Status
1) Responsive to communication(s) filed on 5/24/25.
2a)
A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
2b) This action is non-final.
This action is FINAL.
3) An election was made by the applicant in response to a restriction requirement set forth during the interview
on; the restriction requirement and election have been incorporated into this action.
4) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
Disposition of Claims*
5) Claim(s) 1-19 is/are pending in the application.
5a) Of the above claim(s)
is/are withdrawn from consideration.
6) Claim(s)
is/are allowed.
7) Claim(s) 1-19 is/are rejected.
8) Claim(s)
is/are objected to.
9) Claim(s)
are subject to restriction and/or election requirement
* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
participating intellectual property office for the corresponding application. For more information, please see
http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
Application Papers
10) The specification is objected to by the Examiner.
11) The drawing(s) filed on 5/24/23 is/are: a)☑ accepted or b)☐ objected to by the Examiner.
Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
Priority under 35 U.S.C. § 119
12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
Certified copies:
a) All b) Some** c) None of the:
1. Certified copies of the priority documents have been received.
2. Certified copies of the priority documents have been received in Application No.
3. Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
** See the attached detailed Office action for a list of the certified copies not received.
Attachment(s)
1) Notice of References Cited (PTO-892)
2) Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
Paper No(s)/Mail Date 3/4/23, 5/24/23.
U.S. Patent and Trademark Office
PTOL-326 (Rev. 11-13)
Office Action Summary
3) Interview Summary (PTO-413)
4) Other:
Paper No(s)/Mail Date
Part of Paper No./Mail Date 20250925
Application/Control Number: 18/038,639
Art Unit: 2848
Page 2
DETAILED ACTION
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
This application is a 371 of PCT/JP2021/043263 November 25, 2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on March 4, 2025 and March 4, 2025 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 1-19 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
Application/Control Number: 18/038,639
Art Unit: 2848
Page 3
inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards
as the invention.
Claims 1, 3, 4, 9-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to
particularly point out and distinctly claim the subject matter regarded as the invention, due to
inconsistent and unclear use of “conductor" as a singular collective.
In claim 1, "a wiring conductor" is later said to "comprise" an "electrode pad" and "a first solid
conductor." It is unclear whether "a wiring conductor" is a single conductive member or a collection of
multiple distinct conductors. If it is a single conductor, it is unclear how it "comprises" multiple distinct
conductors; if it is a collection, "wiring conductor" should be pluralized or otherwise clarified as a
network of conductors. For examining purposes the examiner will interpret the terms "wiring
conductor" to read "wiring conductors."
part."
Claims 1, 3, 9 are rejected under 35 U.S.C. 112(b) as indefinite for use of the term "intersection
The term "intersection part" lacks clear structural meaning. It is unclear whether it is a distinct
conductive member, a region of a conductor, or a gap between the "first connection conductor" and
"second connection conductor." Additionally, claim 1 states the "connection conductor comprises an
intersection part," yet further recites the intersection part is “located between the first connection
conductor and the second connection conductor," creating ambiguity as to whether it is part of, or
separate from, those conductors. The examiner suggests the applicant define this element structurally
(e.g., "an interconnect segment crossing the groove," "a bridge conductor crossing the groove," or "a
gap region between first and second connection conductors") and use terminology consistently.
Application/Control Number: 18/038,639
Art Unit: 2848
Page 4
Claims 1, 3, 4, 9-12 are rejected under 35 U.S.C. 112(b) as indefinite for the phrases "a
first/second wiring layer at which a part of the wiring conductor is included" and "located at the [nth]
wiring layer."
The prepositions "at which ... is included" and "located at" do not clearly convey the spatial
relationship. It is unclear whether the conductors are in, on, or within the stated layer(s).
The examiner suggests replacing with "in or on which a portion of the wiring conductor is located," and
use consistently.
Claims 5-7, 13-19 are rejected under 35 U.S.C. 112(b) as indefinite for the term "see-through
plan view."
- "See-through plan view" is not a standard term and fails to apprise the scope with reasonable
certainty. It is unclear whether this means "in plan view," "in plan view along the board thickness
direction," or "in plan projection ignoring intervening layers." The examiner suggests replacing with "in
plan view" or "in a plan view along the board thickness direction (i.e., projection onto a plane parallel to
the first face)."
Claims 2, 9-10, 13, 15, 17 are rejected under 35 U.S.C. 112(b) as indefinite for the phrase "a
cutout made by a beam."
- "Beam" is ambiguous (e.g., laser beam, ion beam, electron beam) and could significantly affect
scope. The examiner suggest specifying the type (e.g., "laser beam," "ion beam," "electron beam"), or
recite "an energy beam" with an illustrative list.
Claims 3 and 9 are rejected under 35 U.S.C. 112(b) for lack of clear antecedent basis and
resulting ambiguity for "a plurality of the electrode pads."
Application/Control Number: 18/038,639
Art Unit: 2848
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Claim 1 introduces "an electrode pad" (singular). "A plurality of the electrode pads" suggests
pads previously introduced, but no plurality was previously established. While one of ordinary skill might
infer the existence of multiple pads, the phrase lacks precise antecedent basis and renders the scope
uncertain. The examiner suggests replacing with "a plurality of electrode pads."
Claims 11, 12, 18, and 19 are rejected under 35 U.S.C. 112(b) as indefinite due to ambiguity
created by dependency on claims that recite a plurality of electrode pads while reciting “the electrode
pad" (singular).
In claims 11 and 12 (which depend on claims 3 and 9, respectively), "the electrode pad" is
ambiguous as to which of the recited "plurality of electrode pads" is meant, or whether it is meant to
encompass all or any subset. The examine suggests amending the claim to clarify as "respective
electrode pads," "at least one of the electrode pads," or "all of the electrode pads," depending on
intended scope.
Claim Objections
Claim 8 is objected to because of the following informalities: "A probe card comprising;" should
be "A probe card comprising:". Appropriate correction is required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure. Valster et al. (US 5,805,630), Okabe (JP 2012-243836) and Kuindersma (US 5,191,591)
teaches a semiconductor body with a groove in the insulating substrate.
Communication
Application/Control Number: 18/038,639
Art Unit: 2848
Page 6
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to KRYSTAL ROBINSON whose telephone number is (571)272-9258. The examiner
can normally be reached on 9-5 M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a
USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor,
Timothy Dole can be reached on (571)-272-2229. The fax phone number for the organization where
this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application
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Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
CANADA) or 571-272-1000.
/KRYSTAL ROBINSON/
Examiner, Art Unit 2848
Application/Control Number: 18/038,639
Art Unit: 2848
Page 7
Prosecution Insights