DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
The status of the claims as amended/presented in the response received [date response was filed], is as follows:
- Claims 1-20 are pending.
- Claims 1, 3, 5, 7, 11, 14-16 and 18 have been amended.
Response to Arguments
Applicant's arguments filed 11/24/2025 with regards to claims 1, 7 and 14 as amended have been fully considered. The amendments resolve the issues noted in the Non-Final Office Action mailed 8/25/2025, specifically the rejection under 35 USC 112(b). Accordingly, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the US Patent US 5,394,100 by Bohler et al., the US Patent US 11,054,465 by Lou et al., and the US Patent US 9,702,930 by Edwards et al., (Edwards hereafter).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL
Claim Rejections - 35 USC § 103
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4, 7-10 and 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over the US Patent US 5,394,100 by Bohler et al., (Bohler hereafter) in view of the US Patent US 11,054,465 by Lou et al., (Lou hereafter).
Regarding claim 1, 7 and 14, Bohler teaches in Figure 1, a method, and a probe system and a method of operating a probe system configured to test one or more under-test devices that have a plurality of pads, the probe system comprising:
a chuck (12) configured to support a substrate (DUT 10) that has one or more under-test devices (circuitry within DUT, see col. 4, line 46);
a plurality of probe assemblies (20+16 and 22+18) having at least one fixed probe assembly (20+16) and at least one motorized probe assembly (22+18, motorized by unit 26, see col. 2, lines 43-44) ** The examiner notes that, Bohler shows both probe assemblies 20+16 and 22+18 include a motor 24 and 26 respectively that allows the probes to move while the probes are aligned. The examiner interprets the word “fixed” as it pertains to probe assembly 20+16, to mean the entire assembly 20+16 is fixed in place with respect to the upper surface of motor 24;
an imaging device (44) configured to obtain an optical image related to at least one of the under-test devices and the probe assemblies (in the manner illustrated in Figure 1); and
a controller (48) programmed to perform a positioning method, comprising the steps of:
placing the under-test device (10) on the chuck (12) that is movable (col. 3, lines 40-41);
conducting a first positioning step that is of arranging all of the probe assemblies to be in a standby position-on (position of the probe tips 16 and 18 while camera 44 determines their x and y locations, see col. 4, lines 4-7), wherein each of the probe assemblies has at least one probe tip (16 or 18), and the plurality of pads are situated at a predetermined distance below the at least one probe tip of each of the probe assemblies along a vertical direction for subsequent contact (col. 4, lines 40-42);
conducting a second positioning step that is of positioning a first probe tip of the fixed probe assembly according to a first pad of the under-test device (moving probe needle 16 in the X-Y directions, prior to moving them towards the DUT in the vertical direction, see col. 4, lines 35-41), wherein the first pad is to be contacted by the first probe tip of the fixed probe assembly by moving the chuck along the vertical direction, (**The examiner notes that the recitation “to be contacted” describes a step that is meant to happen in the future but not required by the method as claimed. That is, the method doesn’t require the step of making a contact, only that the positioning is such that the contact can be made. Although Bohler doesn’t teach the first pad is “to be contacted” by moving the chuck, Bohler teaches the positioning step. The examiner notes that a recitation of a step that may or not happen in the future is not limiting to the method as recited as long as every positively recited step is taught by the prior art); and
conducting a third positioning step (repeating the process above) that is of positioning a first probe tip (18) of the motorized probe assembly according to a second pad of the under-test device (moving the probe tip 18 in the X-Y directions, prior to moving them towards the DUT in the vertical direction), wherein the second pad is to be contacted by moving the first probe tip of the motorized probe assembly along the vertical direction (see comments above, regarding the recitation “to be contacted”).
Bohler substantially teaches all of the recited elements as discussed above, except for the step of setting the under-test device at a first preset temperature.
LOU teaches a system for aligning probes with respect to DUTs, including the step of setting the temperature of the components disposed on a chuck to a first preset temperature (ambient/room temperature which the examiner equates to the first preset temperature; achieved by placing the DUT on a chuck without lowering or raising its temperature) before aligning the probes with respect to the DUT. LOU further teaches the method includes a further step of setting the temperature of the DUT to a second temperature, before performing the alignment of probes once again (see col. 7, lines 29-35: “In some embodiments, the temperature-controlling device 112 heats the chuck 111 after operation S803 and before operation S805. Because the DUT 200 directly contacts the chuck 111, the temperature of the DUT200 is also adjusted”).
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of setting the DUT under inspection to a first preset temperature (ambient/room temperature) then heating the DUTs after an alignment of the probes is completed, and before a subsequent alignment of the probes is performed as taught by Lou, in the system/method of Bohler, in order to gain the advantage of accounting for temperature related position variations in the DUT as the DUT heats up during regular testing, avoiding misalignment of the probes with respect to the DUT pads.
As to claims 2, 8 and 15, in addition to that explained with regards to the rejection of claim 1 above, Bohler teaches:
a fourth positioning step that is of moving the probe tip along the vertical direction, so as to enable the first pad to be in physical contact with the first probe tip of the fixed probe assembly within a working region (interpreted as the step of joining the probe tip 16 to the pad in the DUT by moving the probe towards the DUT, see col. 4, lines 35-42), and
conducting a fifth positioning step that is moving the at least one motorized probe assembly along the vertical direction, so as to enable the first probe tip of the motorized probe to be in physical contact with the second pad within a working region (interpreted as the step of joining the probe tip 18 to the pad in the DUT by moving the probe towards the DUT, see col. 4, lines 35-42).
Bohler is silent regarding the specific sequence of displacing the chuck towards the probe during the fourth positioning step. That is, the prior art does not disclose coupling the first probe tip to the first pad by moving the chuck towards the probe; instead, it teaches the coupling the probe tip to the first pad by moving the probe towards the chuck. The distinction between the two approaches - moving the chuck toward the probe versus moving the probe toward the probe - does not appear to be critical to the functionality of the overall method. Both approaches are functionally equivalent for purposes of coupling the probe with the substrate under inspection.
Moreover, LOU teaches in Figure 1, a method step by which coupling of probes to a DUT is performed by moving a chuck (Figure 1, step 804 or 807). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed, to move the Bohler’s chuck instead of the probe tip, as such variation in the sequence of movements would not produce a meaningful or critical difference in operation and would have yielded the same result.
As to claim 20, in addition to that stated in regards to the rejection of claim 7 above, Bohler in view of Lou teaches performing the method as claimed in claim 7; and testing the semiconductor device (Bohler, col. 4, lines 44-46).
Regarding claims 3, 4, 9, 10, 16 and 17 as mentioned in regards to the rejection of claims 1, 7, 14 and 20, above Lou teaches in Figure 1, a method of aligning probes with respect to DUTs, wherein the DUT is set at a first temperature (ambient/room temperature, which the examiner equates to the first preset temperature), an alignment of probes with respect to the DUT is performed (step 803), followed by a step of moving the chuck towards the probe (S804) and then heating of the DUT (second preset temperature; see col. 7, lines 29-35: “In some embodiments, the temperature-controlling device 112 heats the chuck 111 after operation S803 and before operation S805. Because the DUT 200 directly contacts the chuck 111, the temperature of the DUT200 is also adjusted”). Lou further teaches a step of determining a of the probes (S806) and performing a second alignment of the probes based on the second position of the probes (S807).
It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of heating the DUTs after an alignment of the probes is completed, and before a subsequent alignment of the probes is performed as taught by Lou, in the system/method of Bohler in order to gain the advantage of accounting for temperature related position variations in the DUT as the DUT heats up during regular testing, avoiding misalignment of the probes with respect to the DUT pads.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohler in view of Lou and further in view of the US Patent US 9,702,930 by Edwards et al., (Edwards hereafter).
In terms of claim(s) 13, Bohler substantially teaches all of the elements disclosed above, except for explicitly mentioning the method .
However, the use of computer-executable instructions to automate computer processes is well known in the art. For example, Edwards teaches a wafer probing system that manipulates probes as they are aligned and to make contact with a semiconductor under inspection. Edwards teaches that the process (described in col. 8, claims 1-2) can be computer implemented through instructions stored in a computer-readable storage medium (see col. 7, lines 50-53). It would have been obvious to a person having ordinary skill in the art before the invention was effectively filed, to apply the teaching of computer-executable programs storing instructions to perform probing processes as taught by Edwards, and include such instructions in the system controller (48) of Bohler’s system, in order to gain the advantage of automate the process and allow for modifications to the process as needed.
Allowable Subject Matter
Claims 5-6, 11-12, 18-19 are 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.
Regarding claim 5, the prior art of record doesn’t teach alone or in combination a probe system wherein the controller is program to perform a positioning method including the step of conducting a restoring step that is of returning the first probe tip of the fixed probe assembly and the first probe tip of the motorized probe assembly to an original relative position in a working region according to the relative pitch recorded, in combination with all other elements recited in the claim and claims it depends from.
Regarding claim 6, the prior art of record doesn’t teach alone or in combination a probe system wherein the controller is program to perform a positioning method including the step of conducting a restoring step that is of returning the first probe tip of the motorized probe assembly and the chuck to the position in the vertical direction and in the horizontal direction according to the position recorded, in combination with all other elements recited in the claim and claims it depends from.
Regarding claim 11, the prior art of record doesn’t teach alone or in combination a positioning method including the step of conducting a restoring step that is of returning the first probe tip of the fixed probe assembly and the first probe tip of the motorized probe assembly to an original relative position in a working region according to the relative pitch recorded, in combination with all other elements recited in the claim and claims it depends from.
Regarding claim 12, the prior art of record doesn’t teach alone or in combination a positioning method including the step of conducting a restoring step that is of returning the first probe tip of the motorized probe assembly and the chuck to the position in the vertical direction and in the horizontal direction according to the position recorded, in combination with all other elements recited in the claim and claims it depends from.
Regarding claim 18, the prior art of record doesn’t teach alone or in combination a positioning method including the step of conducting a restoring step that is of returning the first probe tip of the fixed probe assembly and the first probe tip of the motorized probe assembly to an original relative position in a working region according to the relative pitch recorded, in combination with all other elements recited in the claim and claims it depends from.
Regarding claim 19, the prior art of record doesn’t teach alone or in combination a positioning method including the step of conducting a restoring step that is of returning the first probe tip of the motorized probe assembly and the chuck to the position in the vertical direction and in the horizontal direction according to the position recorded, in combination with all other elements recited in the claim and claims it depends from.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
- The US Patent US 4,677,474 by Sato et al.
- The US Patent US 7,119,566 by Kim.
- The US Patent US 6,111,421 by Takahashi et al.
- The US Patent US 8,497,693 by Kiesewetter et al.
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 Richard Isla whose telephone number is (571)272-5056. The examiner can normally be reached Monday-Friday 9a - 5:30p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Huy Phan can be reached at 571 272-7924. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD ISLA/Primary Patent Examiner, Art Unit 2858 February 4, 2026