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 .
Response to Amendment
The amendment filed on 2025-12-04 has been entered. Claim(s) 1-12 remain pending in this application. Claim(s) 1-12 have been amended.
Claim 3 was amended to add the missing period. This amendment is acceptable and the objection to claim 3 is withdrawn.
Claim 7 was amended was amended to overcome the 35 USC 112(b) rejection made in the previous office action. This amendment is acceptable and the 35 USC 112(b) rejection made in the previous office action is withdrawn.
Response to Arguments
Applicant's arguments filed 2025-12-04 have been fully considered but they are not persuasive.
Applicant argues that Jang does not disclose conveying the probe to be inspected and that Jang discloses conveying the probe card in a manner to maintain its temperature and therefore one of ordinary skill in the art would not be motivated to combine Jang with Mo as conveying the probe card of Jang for inspecting as taught in Mo would prevent the original function of Jang, which is to perform electrical testing on the DUT and could also decrease the functionality of the temperature maintenance.
Additionally, applicant argues that Mo discloses a manual/human operated system and Mo does not disclose autonomously generating commands to drive the operation.
Concerning applicant’s first argument, the examiner respectfully disagrees. In response to applicant's argument that the combination of Jang in view of Mo would prevent the original function of Jang, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The references relied upon by the examiner teach all the elements of conveying a device between locations, it is within the ability of one of ordinary skill in the art to program or otherwise setup a conveying a device between and first and second location as well as second and third location. The actual act of conveying between locations is functionally the same regardless of what the two specific locations are. Furthermore, the teachings of Jang in view of Mo would disclose conveying a probe card to an inspection device. Conveying a probe card at a specific temperature for testing or conveying it at room temperature, or any temperature required is within the ability of one of ordinary skill in the art as it is the conveying of the probe card that is being taught in the prior art.
In response to applicant’s argument that Mo does not disclose an autonomous operation of the system. This argument is against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The combination of the references in the rejection below does teach an autonomous operation. Refer to new grounds of rejection.
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.
Regarding Claim 1, 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). Claim 1 states “wherein the DUT testing device transmits the fourth/first conveying device control signal…” in line 10/13. This is indefinite as it is unclear if the device needs to transmit the signal in order to infringe or if it simply needs to be capable of transmitting the signal. For the purposes of compact prosecution, the examiner will interpret this limitation to read – wherein the DUT testing device is configured to transmit the fourth/first conveying device control signal… --.
Regarding Claim 7, 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). Claim 7 states “wherein the first moving unit confirms the second probe card…” in lines 1-2. This is indefinite as it is unclear if a device needs to confirm a second probe card in order to infringe or if it simply needs to be capable of confirming the probe card. For the purposes of compact prosecution, the examiner will interpret this limitation to read -- wherein the first moving unit is configured to confirm the second probe card… --.
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 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR-100939835-B1) in view of Mo et al. (CN-103400238-A – from applicant IDS – Refer to machine translation from previous office action for references cited) in view of Jang et al. (KR-20180047819-A – From applicant IDS – Refer to machine translation from previous office action for references cited).
Regarding Claim 1, Kim teaches an automatic management system for a plurality of probe cards, comprising: a storage device for storing at least one probe (Fig 4: stocker device, 30); a DUT testing device (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.
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 stored in the storage device 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 the first probe card is stored in the storage device 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 between a card suitable for storage and one that needs maintenance or scrapping). 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; and transmitting a first conveying device control signal or a fourth conveying device control signal,
transmitting the 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,
transmitting 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.
However, Jang teaches a conveying device (Fig 5: probe card transport cart, 50); and transmitting a first conveying device control signal or a fourth conveying device control signal (Para [0073-0075] teaches the transport cart transporting the probe card from storage device where it is preheated to the test equipment. Para [0078] teaches the transport cart 30 as being capable of being automated thus requiring a signal for control), transmitting the 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 (Para [0055-0056] & [0078] teach transporting the chambers, 550, equivalent to 320 (Para [0080]), which come from the storage unit as seen in Figure 3 and delivering to a test device). 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 transmitting 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. 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).
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 4-9 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 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 7 states “wherein the first moving unit confirms the second probe card with a specific probe specification and selects 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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-F 09:30-17:30 ET.
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, 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