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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2026-04-03 has been entered.
Response to Amendment
The amendment filed on 2026-04-03 has been entered. Claim(s) 1-12 remain pending in this application. Claim(s) 1, 7 have been amended.
Response to Arguments
Applicant’s arguments, filed 2026-04-03, with respect to the 35 USC 112 rejections have been fully considered and are persuasive. The previous 35 USC 112 rejections of claims 1-12 has been withdrawn.
However, amendments made introduce a new grounds of rejection under 35 USC 112. See rejection below.
Applicant's arguments with respect to the 35 USC 103 rejection made in the office action dated 2026-01-23 have been fully considered but they are not persuasive.
Applicant Argues, the combination of Kim in view of Mo in view of Jang (herein referred to as “the combination”) does not teach the features of the amended claim 1. Specifically, the combination does not teach returning the probe card directly to the DUT testing apparatus during an intermediate stage of use.
The examiner respectfully disagrees, the amended claim 1 requires that the DUT testing device be configured to transmit a signal to instruct the conveying device to move the first probe card from the DUT testing device to the inspection device after a process of using the first probe card on the DUT testing device. Since the length of time of “after a process…” is not limited AND the combination is configured perform a test on the DUT testing device and to transmit device control signals (as established in prior rejection and reiterated below) it necessarily follows that the combination is configured to transmit a conveying device control signal at some point after such a process is performed.
The amended claim 1 further requires the first probe card be “moved to the DUT testing device to allow the DUT testing device to perform a related test using the first probe card after the function of the first probe card is inspected as normal.” This is similar to the above in that it requires that the first probe card be moved to the DUT testing device after it has been inspected as normal. Since the term “after” is not limited it may occur at any point and since the combination may convey probe cards between inspection device, storage device and DUT testing device, without limitation, it follows that this would occur after a probe card is inspected. Refer to 35 USC 103 rejection below.
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 1-12 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.
Refer to the following regarding Claim 1:
Claim 1 states “…so as to use the first probe card on the DUT testing device” in lines 10-11. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, MPEP 2173.05(p). In the limitation above it is unclear if a system that is configured to use a probe card on a DUT testing device would read on the claim, or if the act of using said probe card would be required. For the purposes of compact prosecution, the examiner will interpret this such that if a system is capable of using a first probe card on a DUT testing device and conveying to said testing device then it shall be sufficient to read on the claim.
Claim 1 further states “wherein the inspection device inspects whether a function of the first probe card is normal, and the first probe card is moved to the DUT testing device to allow the DUT testing device to perform a related test using the first probe card” in lines 16-19. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, MPEP 2173.05(p). in the limitation above, it is unclear if an apparatus that is capable of moving a probe card, as described in the cited limitation, but has not, would read on the claim. For the purposes of compact prosecution, the examiner will interpret this limitation to read -- wherein the inspection device inspects whether a function of the first probe card is normal, and the first probe card is configured to be moved to the DUT testing device to allow the DUT testing device to perform a related test using the first probe card after the function of the first probe card is inspected as normal. –
Claim 1 further states “wherein, after a process of using the first probe card on the DUT testing device, the DUT testing device is configured to transmit the first conveying device control signal to the conveying device to instruct the conveying device to move the first probe card from the DUT testing device to the inspection device” in lines 12-15. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, MPEP 2173.05(p). in the limitation above, it is unclear if an apparatus that is configured to transmit at any time would read on the limitation above or if it only infringes if it is transmitted after the claimed process. For the purposes of compact prosecution, the examiner will interpret the limitation to read -- wherein, the DUT testing device is configured to transmit the first conveying device control signal to the conveying device, after a process of using the first probe card on the DUT testing device, to instruct the conveying device to move the first probe card from the DUT testing device to the inspection device, --
Regarding Claims 2-12, these claims stand rejected for incorporating and reciting the above rejected subject matter of their respective parent claim(s) and therefore stand rejected for the same reasons.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-3 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR-100939835-B1 – refer to machine translation attached in office action dated 2026-01-23) in view of Mo et al. (CN-103400238-A – from applicant IDS – Refer to machine translation from office action dated 2025-08-09 for references cited) in view of Jang et al. (KR-20180047819-A – From applicant IDS – Refer to machine translation from office action dated 2025-08-09 for references cited).
Regarding Claim 1, Kim teaches a storage device for storing at least one probe (Fig 4: stocker device, 30);
a DUT testing device configured to transmit (Fig 4: measuring system, 70, which is networked to RFID transceiver, 40 and capable of transmitting signals to identify/read individual probe cards in storage, see page 4)
Kim does not teach an inspection device; wherein the inspection device inspects whether a function of the first probe card is normal, and the first probe card is moved to the DUT testing device to allow the DUT testing device to perform a related test using the first probe card after the function of the first probe card is inspected as normal.
However, Mo teaches an inspection device (Para [0045-0050] teaches a method for using a device for inspecting probe cards, therefore such a device exists); wherein the inspection device inspects whether a function of the first probe card is normal, and a location for the first probe card is determined after the function of the first probe card is inspected as normal (Para [0048-0049] teaches inspecting a probe card and determining a status of the probe card. Para [0054] teaches that depending on the determination of the probe card, it may be sent to storage among many other things which includes maintenance and scrapping. The determination can therefore determine where a card needs to go).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the probe management system of Kim to include the inspection device of Mo. A motivation for this modification is to automate the inspection process and avoid time-consuming and error-prone problems of human judgement improving efficiency as taught in Mo in paragraph [0055].
The combination of Kim in view of Mo does not teach a conveying device; a first or fourth conveying device control signals,
transmitting a first conveying device control signal to the conveying device, after a process of using the first probe card on the DUT testing device, to instruct the conveying device to move the first probe card from the DUT testing device to the inspection device.
or transmitting a fourth conveying device control signal, to the conveying device to instruct the conveying device to move a first probe card of the at least one probe card from the storage device to the DUT testing device, so as to use the first probe card on the DUT testing device.
However, Jang teaches a conveying device (Fig 5: probe card transport cart, 50);
a first or fourth conveying device control signals (Para [0078] teaches the transport cart, 30, as being capable of being automated thus requiring a signal for control), and
a fourth conveying device control signal to instruct the conveying device to move a first probe card of the at least one probe card from the storage device to the DUT testing device, so as to use the first probe card on the DUT testing device (Para [0055-0056] teach transporting the chambers, 550, equivalent to 320 (Para [0080]), to a test device which come from the storage unit as seen in Figure 3 and Para [0073-0075] teaches the transport cart transporting the probe card from storage device where it is preheated to the test equipment).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the management system of the combination to include the automatic conveying devices of Jang. A motivation for this modification is to automate the process as taught in Jang in paragraph [0078].
The combination of Kim in view of Mo in view of Jang does not teach sending the first conveying device control signal to the conveying device, after a process of using the first probe card on the DUT testing device, to instruct the conveying device to move the first probe card from the DUT testing device to the inspection device.
However, the combination teaches all the claimed elements. In particular, Kim and Jang teach the storage device, Jang teaches the conveying device for conveying a first probe card according to a conveying device control signal and Mo teaches the inspection device. The difference between the prior art and the claimed invention is using the conveying device to convey the probe card from a DUT testing device to an inspection device, rather than only conveying the probe card from the storage device to the DUT testing location. The combination of known elements is achieved by a known method of using a conveying device to convey the probe card between the claimed locations of the DUT testing station and inspection device. Since all the elements would continue to operate in the same manner, specifically the inspection device would still perform the inspection and the conveying device would still convey the probe card, the results would be predictable to one of ordinary skill in the art. As such, it would have been obvious to one of ordinary skill in the art to convey the probe card from the DUT testing station with the conveying device taught by Jang to the inspection device as taught by Mo as being no more than predictable use of prior art elements according to established functions. MPEP 2143 KSR Rationale (A). Since the combination is configured to convey a probe card at any time it would necessarily be configured to convey a probe card after a process of using said probe card.
Regarding Claim 2, The combination of Kim in view of Mo in view of Jang does not explicitly teach wherein the conveying device conveys the first probe card to the storage device according to a second conveying device control signal when the function of the first probe card is inspected as normal. However, the combination of Kim in view of Mo in view of Jang does teach inspecting a probe card and returning a status to return the card to storage in Para [0054] of Mo. Additionally, As discussed in the claim 1 rejection, the combination teaches all the claimed elements, Kim and Jang teach the storage device, Jang teaches the conveying device and Mo teaches inspecting a probe card and determining if it is suitable for storage. The difference between the prior art and the claimed invention is the conveying to a storage device. The combination of known elements is achieved by a known method of using a conveying device to convey the probe card to the storage device. The inspection device would still determine the card status as normal and suitable for storage and the conveying device would still convey a probe card. The results would be predictable to one of ordinary skill in the art. As such it would have been obvious to one of ordinary skill in the art to convey the probe card with the conveying device taught by Jang to a storage site after an inspection has been performed as taught by Mo as being no more than predictable use of prior art elements according to established functions. MPEP 2143 KSR Rationale (A).
Regarding Claim 3, The combination of Kim in view of Mo in view of Jang teaches a probe card recycling station (Mo - Para [0054] teaches a cards may be designated for maintenance or scrapping and therefore a place must exist for these cards to be fixed). The combination does not teach wherein when the first probe card is inspected to be malfunctioning, the first probe card is conveyed by the conveying device to the probe card recycling station according to a third conveying device control signal. However, the combination does teach inspecting a probe card and determining a status, the statuses may include maintenance or scrapping. (Para [0048 & 0050] teaches inspecting a probe card and if the inspection is bad sending probe card to a designated process. Para [0054] teaches this may include maintenance, warehousing or scrapping.). Additionally, As discussed in the claim 1 rejection, the combination teaches all the claimed elements, Jang teaches the conveying device and Mo teaches inspecting a probe card and determining a status as suitable for maintenance or scrapping. The difference between the prior art and the claimed invention is the conveying to a recycling station. The combination of known elements is achieved by a known method of using a conveying device to convey probe cards to the claimed recycling station. Since all the elements would continue to operate in the same manner, specifically the conveying device would still convey a probe card and the inspection device would still return a signal to designate a probe card for maintenance or scrapping. The results would be predictable to one of ordinary skill in the art. As such it would have been obvious to one of ordinary skill in the art to convey the probe card with the conveying device taught by Jang to the recycling station as taught in Mo as being no more than predictable use of prior art elements according to established functions. MPEP 2143 KSR Rationale (A).
Regarding Claim 10, The combination of Kim in view of Mo in View of Jang, as presented with respect to claim 1, teaches a central control device (Kim - Fig 4: server, 50) for transmitting a plurality of device control signals to the storage device, the inspection device and the conveying device to control the storage device, the inspection device and the conveying device (Kim - Page 4 of the machine translation teaches the server, 50, sends signals to and from the various system components and processes information related to those components). These features are necessarily taught by the combination.
Regarding Claim 11, The combination of Kim in view of Mo in view of Jang does not teach another inspection device for inspecting a third probe card of the probe cards. However, it has been held In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. One of ordinary skill in the art would recognize that adding an additional inspection device would allow the predictable result of the inspection of an additional probe card. One of ordinary skill in the art would be motivated to add an additional inspection device to allow more probe cards to be inspected, which is the predictable result.
Regarding Claim 12, The combination of Kim in view of Mo in view of Jang does not teach another conveying device for receiving a fifth conveying device control signal and conveying at least one of the probe cards between the storage device, the inspection device and the DUT testing device according to the fifth conveying device control signal. However, it has been held In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. One of ordinary skill in the art would recognize that an additional conveying device would allow the predictable result of conveying a probe card to one of the storage device, the inspection device and the DUT testing device. One of ordinary skill in the art would be motivated to add an additional conveying device as it would allow more probe cards to be conveyed simultaneously, which is the predictable result.
Claims 4-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Mo in view of Jang and in further view of Lee et al. (US-20240183895-A1).
Regarding Claim 4, The combination of Kim in view of Mo in view of Jang teaches wherein the storage device further comprises: a plurality of storage units for storing at least one of the probe cards (Kim – Fig 4: stocker device, 30). The combination does not teach a first moving unit for moving at least one of the probe cards. However, Lee teaches a first moving unit for moving at least one of the probe cards (Fig 3 or 5: first loading module, 510. Para [0076 & 0078] teaches the manipulation unit loads and unloads probe cards with the loading modules 510, 520). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the storage device of the combination to incorporate the moving device of Lee. A motivation for this modification is to allow the loading and unloading of a plurality of probe cards independently, as taught by Lee in the abstract.
Regarding Claim 5, The combination of Kim in view of Mo in view Jang in view of Lee as presented with respect to claim 4 teaches wherein the first moving unit of the storage device is configured to:
receive a first storage device control signal (Jang - Para [0078] teaches the transport cart 30 as being capable of being automated thus requiring a signal for control, Para [0045-0048] teaches a communication network between a control device and a probe card management device, which corresponds to the storage unit 310, containing the storage shelves and chambers. Para [0041] teaches the chambers being controlled individually by the control device);
select a second probe card from the storage units according to the first storage device control signal (Lee - Para [0125-0132] with reference to Fig 23 teaches a method to retrieve a second probe card from a storage device, step S930, this probe card would correspond to the one within the individually controlled chambers); and
move the second probe card from the storage device to the conveying device (Lee - Para [0125-0132] with reference to Fig 23, step S940),
wherein the conveying device conveys the second probe card to the DUT testing device according to a fourth conveying device control signal to allow the second probe card to be mounted on the DUT testing device (Jang - Para [0055-0056] teaches conveying a probe card from storage to a test apparatus) (Lee - Para [0125-0132] with reference to Fig 23 teaches removal of a probe card from a device, in this instance, a probe station, and mounting to a conveying device and inserting a different probe card from conveying device into the probe station). These features are necessarily taught by the combination.
Regarding Claim 6, The combination of Kim in view of Mo in view Jang in view of Lee as presented with respect to claim 5 teaches wherein the first moving unit selects the second probe card conforming with a specification of the DUT testing device from the storage units according to the first storage device control signal (Jang - Para [0055-0056] teaches transporting a probe card with a specification of the DUT, which is one that is properly pre-heated according to the storage device control signal taught in Para [0041]). These features are necessarily taught by the combination.
Regarding Claim 8, The combination of Kim in view of Mo in view Jang in view of Lee teaches wherein the inspection device further comprises: an inspection unit for inspecting the first probe card (Para [0045-0050] teaches a method for using a device for inspecting probe cards, therefore such a device exists). The combination does not teach a second moving unit for moving the first probe card. However, Lee teaches a moving unit for moving at least one of the probe cards (Fig 3 or 5: second loading module, 520. Para [0076 & 0078] teaches the manipulation unit loads and unloads probe cards with the loading modules 510, 520). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the inspection device of the combination to incorporate the moving device of Lee. A motivation for this modification is to allow the loading and unloading of a plurality of probe cards independently, as taught by Lee in the abstract.
Regarding Claim 9, The combination of Kim in view of Mo in view Jang in view of Lee as presented with respect to claim 8 teaches wherein the second moving unit of the inspection device is configured to:
move the first probe card from the conveying device to the inspection unit or moves the first probe card from the inspection unit to the conveying device (Para [0125-0132] with reference to Fig 23 teaches removal of a probe card from a device, in this instance, a probe station, and mounting to a conveying device and inserting a different probe card from conveying device into the probe station). These features are necessarily taught by the combination.
Allowable Subject Matter
Claim 7 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.
Claim 7 states “wherein the first moving unit is configured to confirm the second probe card with a specific probe specification and select the second probe card…” in lines 1-2. The inclusion of the first moving unit confirming the second probe card with a specific probe specification is not found within the prior art of record. It is these features found in the claim, as they are claimed in the combination that has not been found, taught or suggested by the prior art of record, which makes this claim allowable over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH J BARRON whose telephone number is (571)272-0902. The examiner can normally be reached M, T, Th, F 10:30-17:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lee Rodak can be reached at (571) 270-5628. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEREMIAH J BARRON/Examiner, Art Unit 2858
/LEE E RODAK/Supervisory Patent Examiner, Art Unit 2858
Prosecution Insights