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 .
Response to Arguments
Applicant's arguments filed on 6/22/2026 have been fully considered and are persuasive. However, the Examiner has used a different interpretation of Frankel et al. (US 20210096176) to reject the claims 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 11, 13-16, 21 and 22 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 11, the metes and bounds of wherein the rotation section is configured to rotate the probe and rotation section during a screening operation is unclear. The claims appears to claim that the rotation section rotates the rotation section.
Claims 13-16, 21 and 22 are rejected for containing 112 rejections above and depending on rejected base claim.
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Frankel et al. (US 20210096176).
Regarding claim 1, Frankel et al. teach A system for screening an electronic component, comprising:
a device under test; (DUT 120, Fig. 1)
a body having (entirety of Fig, 1 broadly interpreted as a body), a plurality of conductors; ([0017] Optical probe 30 may include and/or be any suitable structure that may be adapted, configured, designed, and/or constructed to form a portion of probing assembly 20, to define probe tip 32, to receive photons 38 from optical device 140, and/or to convey photons 38 to optical device 140. Examples of optical probe 30 include an optical fiber, a cleaved optical fiber, a lensed optical fiber, a 3-D printed fiber, and/or a faceted optical fiber.) Examiner interprets the fiber as a conductor. Also, a conductor is implicit to electrostatic chuck 50 as a voltage or current is applied to the electrostatic chuck for the generation of the electrostatic field, also note par. 0019 and Fig. 1)
a rotation section; implied by (probe tip 32 of optical probe 30 may be positioned within trench 130. ) [Note 0014] During operation of probe systems 10, and as discussed in more detail herein with reference to methods 200 of FIG. 3, probe tip 32 of optical probe 30 may be positioned within trench 130. This may include positioning of the probe tip such that a predetermined, predefined, desired, and/or specified gap 36 spatially separates the probe tip and trench side-wall 132. Subsequently, probe tip 32 may be scanned vertically (i.e., in the Z-direction of FIG. 2) and/or horizontally (i.e., in the Y-direction of FIG. 2) along trench side-wall 132 and/or may be rotated, such as about the X-, Y-, and/or Z-axes of FIG. 2.] Examiner’s position is that the rotation section is any area where the rotation takes place which is implicitly taught. and
a probe associated with the rotation section, by (probe tip 32 of optical probe 30 may be positioned within trench 130. ) [Note par. 0014] the probe (30, Fig. 1) configured to house at least a portion of one or more of the plurality of conductors; ([0017] Optical probe 30 may include and/or be any suitable structure that may be adapted, configured, designed, and/or constructed to form a portion of probing assembly 20, to define probe tip 32, to receive photons 38 from optical device 140, and/or to convey photons 38 to optical device 140. Examples of optical probe 30 include an optical fiber, a cleaved optical fiber, a lensed optical fiber, a 3-D printed fiber, and/or a faceted optical fiber.) Examiner’s position is that the optical fiber is the conductor.
a nest (Note stage 50, par. 0019, Fig. 1) having at least one terminal,( the surface of the electrostatic chuck 50, par. 0019 and Fig. 1 is interpreted as a terminal)
the nest configured to couple to the device under test (120, Fig. 1) and to permit at least a portion of the probe to pass through an opening of the device under test, (Note trench 130, wherein the rotation section is configured to rotate the probe within the opening of the device under test. (This process may be referred to herein as raster scanning and/or may be utilized to produce and/or generate a two-dimensional, or a multi-dimensional, representation of optical coupling between the probe tip and the optical device as a function of location on the trench side-wall and/or as a function of rotation of the probe tip relative to the trench side-wall.) [Note par. 0014, Fig. 1)
Regarding claim 10, Frankel et al. a rotation mechanism coupleable to at least one of the rotation section or the probe, the rotation mechanism configured to cause the probe to rotate or translate relative to the device under test. Implied by (This process may be referred to herein as raster scanning and/or may be utilized to produce and/or generate a two-dimensional, or a multi-dimensional, representation of optical coupling between the probe tip and the optical device as a function of location on the trench side-wall and/or as a function of rotation of the probe tip relative to the trench side-wall.) (Note par. 0014, Fig. 1) Examiner’s position is that a mechanism is coupled to the probe in order for the probe to rotate.
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.
Claims 2-5, 11, 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Frankel et al. (US 20210096176) in view of Endo (US 20010028255).
Frankel et al. teach the instant invention except the following claim limitations.
Regarding claim 11, Frankel et al. teach An apparatus for screening a device under test comprising:
a body having (entirety of Fig. 1 is broadly interpreted as a body), a plurality of conductors; ([0017] Optical probe 30 may include and/or be any suitable structure that may be adapted, configured, designed, and/or constructed to form a portion of probing assembly 20, to define probe tip 32, to receive photons 38 from optical device 140, and/or to convey photons 38 to optical device 140. Examples of optical probe 30 include an optical fiber, a cleaved optical fiber, a lensed optical fiber, a 3-D printed fiber, and/or a faceted optical fiber.) Examiner interprets the fiber as a conductor. Also, a conductor is implicit for to electrostatic chuck 50 as a voltage or current is applied to the electrostatic chuck for the generation of the electrostatic field, also note par. 0019 and Fig. 1)
a rotation section; implied by (probe tip 32 of optical probe 30 may be positioned within trench 130. ) [Note 0014] During operation of probe systems 10, and as discussed in more detail herein with reference to methods 200 of FIG. 3, probe tip 32 of optical probe 30 may be positioned within trench 130. This may include positioning of the probe tip such that a predetermined, predefined, desired, and/or specified gap 36 spatially separates the probe tip and trench side-wall 132. Subsequently, probe tip 32 may be scanned vertically (i.e., in the Z-direction of FIG. 2) and/or horizontally (i.e., in the Y-direction of FIG. 2) along trench side-wall 132 and/or may be rotated, such as about the X-, Y-, and/or Z-axes of FIG. 2.] Examiner’s position that any area where the probe rotates is interpreted as a rotation section. and
a probe associated with the rotation section, by (probe tip 32 of optical probe 30 may be positioned within trench 130. ) [Note par. 0014] the probe (30, Fig. 1) configured to house at least a portion of one or more of the plurality of conductors; implicitly taught ([0017] Optical probe 30 may include and/or be any suitable structure that may be adapted, configured, designed, and/or constructed to form a portion of probing assembly 20, to define probe tip 32, to receive photons 38 from optical device 140, and/or to convey photons 38 to optical device 140. Examples of optical probe 30 include an optical fiber, a cleaved optical fiber, a lensed optical fiber, a 3-D printed fiber, and/or a faceted optical fiber.) Examiner’s position is that the optical fiber is the conductor.
and
a nest (Note stage 50, par. 0019, Fig. 1) having at least one terminal, ,( the surface of the electrostatic chuck 50, par. 0019 and Fig. 1 is interpreted as a terminal)
the nest configured to couple to the device under test (120, Fig. 1) and to permit at least a portion of the probe to pass through an opening of the device under test, (Note trench 130, wherein the rotation section is configured to rotate the probe and rotation section during a screening operation. (This process may be referred to herein as raster scanning and/or may be utilized to produce and/or generate a two-dimensional, or a multi-dimensional, representation of optical coupling between the probe tip and the optical device as a function of location on the trench side-wall and/or as a function of rotation of the probe tip relative to the trench side-wall.) [Note par. 0014, Fig. 1)
Frankel et al. does not teach wherein the rotation section includes an eccentric section, the eccentric section configured to receive at least one of the plurality of conductors.
Endo teach wherein the rotation section includes an eccentric section, the eccentric section configured to receive at least one of the plurality of conductors. (Note [0042] More specifically, the drive device 13 grips each end of the third guide board 12 by an arm, and moves the third guide board 12 so as to cause the hole 12a rotate with the axis of the probe needle 5 as the center when the device 13 receives an electrical signal or the like at an over-drive. With this arrangement, the bent part 5b of the probe needle 5 inserted to the hole 12a of the third guide board 12 is forcibly rotated with the axis of the probe needle 5 as the center, and as a result, the tip 5c is also rotated on the pad 8a, and scrapes off the natural oxide film formed on the surface of the pad 8a.) and Fig. 5 below.
PNG
media_image1.png
501
664
media_image1.png
Greyscale
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frankel et al. to include the teaching of teach wherein the rotation section includes an eccentric section, the eccentric section configured to receive at least one of the plurality of conductors to provide space for the conductor during rotation.
Regarding claim 2, Frankel et al. does not teach wherein the rotation section includes an eccentric section, the eccentric section configured to receive at least one of the plurality of conductors, the eccentric section being further configured to be placed adjacent to the device under test during a screening operation.
Endo teach wherein the rotation section includes an eccentric section, the eccentric section configured to receive at least one of the plurality of conductors, the eccentric section being further configured to be placed adjacent to the device under test (8, Fig. 5) during a screening operation.
PNG
media_image1.png
501
664
media_image1.png
Greyscale
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frankel et al. to include the teaching of teach wherein the rotation section includes an eccentric section, the eccentric section configured to receive at least one of the plurality of conductors, the eccentric section being further configured to be placed adjacent to the device under test during a screening operation to provide space for the conductor during rotation.
Regarding claims 3 and 13, Frankel et al. does not teach the eccentric section comprises a plurality of notches at an outer surface configured to receive at least a portion of at least one of the plurality of conductors.
Endo teach the eccentric section comprises a plurality of notches at an outer surface configured to receive at least a portion of at least one of the plurality of conductors. (Note Fig. 5)
PNG
media_image2.png
501
664
media_image2.png
Greyscale
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frank et al. to include the teaching of the eccentric section comprises a plurality of notches at an outer surface configured to receive at least a portion of at least one of the plurality of conductors to provide space for the conductor during rotation.
Regarding claims 4 and 14, Frankel et al. does not teach wherein the eccentric section further comprises at least one groove associated with at least one of the plurality of notches, the at least one groove configured to receive at least a portion of at least one of the plurality of conductors.
Endo teach wherein the eccentric section further comprises at least one groove associated with at least one of the plurality of notches, the at least one groove configured to receive at least a portion of at least one of the plurality of conductors. (Note Fig. 5)
PNG
media_image2.png
501
664
media_image2.png
Greyscale
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frankel et al. to include the teaching of wherein the eccentric section further comprises at least one groove associated with at least one of the plurality of notches, the at least one groove configured to receive at least a portion of at least one of the plurality of conductors to provide space for the conductor during rotation.
Regarding claim 5 and 15, Frankel et al. does not teach wherein the plurality of notches comprises two notches, and further wherein the at least one groove comprises two grooves.
Endo teach wherein the plurality of notches comprises two notches, and further wherein the at least one groove comprises two grooves. (Note left and right side, Fig. 5)
PNG
media_image2.png
501
664
media_image2.png
Greyscale
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frankel et al. to include the teaching of wherein the plurality of notches comprises two notches, and further wherein the at least one groove comprises two grooves to provide space for the conductor during rotation.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Frankel et al. (US 20210096176) in view of Li et al. (CN 15356664 A, cited by applicant)
Frankel et al. teach the instant invention except the following claim limitations.
Regarding claims 6 , Frankel et al. does not teach wherein the system further includes a rail, the rail configured to couple to the nest and further configured to translate movement of the nest relative to the probe.
Li et al. teach wherein the system further includes a rai (T-slot 15, Fig. 1), the rail configured to couple to the nest and further configured to translate movement of the nest relative to the probe. (A T-slot 15 connected with a bracket 8, coupled with a clamping sleeve 19 of a plug 10, the T-slot allowing the plug to move relative to the connector socket (11, Fig. 1 and par. 0024)
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frankel et al. to include the teaching of a rail, the rail configured to couple to the nest and further configured to translate movement of the nest relative to the probe to allow the test device to be replaced providing good interchangeability. (Note Li et al. par n0014)
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Frankel et al. (US 20210096176) in view of Unsworth et al. (US 20040046568).
Frankel et al. teach the instant invention except the following claim limitations.
Regarding claims 7, Frankel et al. does not teach wherein the device is a current transformer having at least one winding.
Unsworth et al. teach wherein the device is a current transformer having at least one winding. (Note abstract and par. 0003)
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frankel et al. to include the teaching of the device is a current transformer having at least one winding to detect any partial discharge in the transformer. (Note Unsworth et al. abstract)
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Frankel et al. (US 20210096176) in view of Endo (US 20010028255) further in view of Li et al. (CN 15356664 A, cited by applicant)
Frankel et al. teach the instant invention except the following claim limitations.
Regarding claim 16, Frankel et al. does not teach wherein the system further includes a rail, the rail configured to couple to the nest and further configured to translate movement of the nest relative to the probe.
Li et al. teach wherein the system further includes a rail (T-slot 15, Fig. 1), the rail configured to couple to the nest and further configured to translate movement of the nest relative to the probe. (A T-slot 15 connected with a bracket 8, coupled with a clamping sleeve 19 of a plug 10, the T-slot allowing the plug to move relative to the connector socket (11, Fig. 1 and par. 0024)
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frankel et al. to include the teaching of a rail, the rail configured to couple to the nest and further configured to translate movement of the nest relative to the probe to allow the test device to be replaced providing good interchangeability. (Note Li et al. par n0014)
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Frankel et al. (US 20210096176) in view of Endo (US 20010028255) further in view of Unsworth et al. (US 20040046568).
Frankel et al. teach the instant invention except the following claim limitations.
Regarding claim 21, Frankel et al. does not teach wherein the device is a current transformer having at least one winding.
Unsworth et al. teach wherein the device is a current transformer having at least one winding. (Note abstract and par. 0003)
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frankel et al. to include the teaching of the device is a current transformer having at least one winding to detect an y partial discharge in the transformer. (Note Unsworth et al. abstract)
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Frankel et al. (US 20210096176) in view of Suzuki et al. (US 20080079426).
Regarding claim 23, Frankel et al. teach A system for screening a device under test, the device under test having an opening therethrough, comprising:
a body having (Entire Fig. 1 is interpreted as a body), a plurality of conductors; implicitly taught ([0017] Optical probe 30 may include and/or be any suitable structure that may be adapted, configured, designed, and/or constructed to form a portion of probing assembly 20, to define probe tip 32, to receive photons 38 from optical device 140, and/or to convey photons 38 to optical device 140. Examples of optical probe 30 include an optical fiber, a cleaved optical fiber, a lensed optical fiber, a 3-D printed fiber, and/or a faceted optical fiber.) Examiner interprets the fiber as a conductor. Also a conductor is implicit to electrostatic chuck 50 as a voltage or current is applied to the electrostatic chuck for the generation of the electrostatic field, also note par. 0019 and Fig. 1)
a probe enclosing, at least in part, the plurality of conductors; (Note at least one conductor must be present for supplying energy to probe 30, Fig. 1)
a rotation section operatively coupled to and configured to rotate the probe, the probe projecting out from the rotation section; implied by (probe tip 32 of optical probe 30 may be positioned within trench 130. ) [Note 0014] During operation of probe systems 10, and as discussed in more detail herein with reference to methods 200 of FIG. 3, probe tip 32 of optical probe 30 may be positioned within trench 130. This may include positioning of the probe tip such that a predetermined, predefined, desired, and/or specified gap 36 spatially separates the probe tip and trench side-wall 132. Subsequently, probe tip 32 may be scanned vertically (i.e., in the Z-direction of FIG. 2) and/or horizontally (i.e., in the Y-direction of FIG. 2) along trench side-wall 132 and/or may be rotated, such as about the X-, Y-, and/or Z-axes of FIG. 2.] Examiner’s position that any area where the probe rotates is interpreted as a rotation section. a nest (Note stage 50, par. 0019, Fig. 1) configured to seat the device under test (120, Fig. 1) in an orientation to permit at least a portion of the probe enclosing the plurality of conductors to pass through and rotate within the opening of the device under test.
Frankel et al. does not explicitly teach enclosing, at least in part, enclosing a plurality of conductors.
Suzuki et al. teach a probe enclosing (Note 19, Fig. 2), at least in part, enclosing a plurality of conductors. [0029] The probe 8 has an ECT sensor 12 is mounted in a main probe body 8a, as shown in FIGS. 3A and 3B. The ECT sensor 12 including ECT coils 12a and 12b is disposed at the end portion of the main probe body 8a. The ECT coils 12a and 12b are disposed side by side in the main probe body 8a,
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frankel et al. to include the teaching of enclosing at least in part, a plurality of conductors in order to provide excitation and output detection signals. (Note Suzujki et al. par. 0029)
Claims 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Frankel et al. (US 20210096176) in view of Suzuki et al. (US 20080079426) further in view of Li et al. (CN 115356664 A, cited by applicant)
Frank et al. teach the instant invention except the following claim limitations.
Regarding claims 24, Frankel et al. does not teach a rail on which the nest is movably positioned, wherein the nest is configured to translate along the rail to position the probe, at least in part, within the opening of the device under test.
Li et al. teach a rail (T-Slot 15) on which the nest is movably positioned, wherein the nest is configured to translate along the rail to position the probe, at least in part, within the opening of the device under test. (A T-slot 15 connected with a bracket 8, coupled with a clamping sleeve 19 of a plug 10, the T-slot allowing the plug to move relative to the connector socket (11, Fig. 1 and par. 0024)
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frankel et al. to include the teaching of a rail, the rail configured to couple to the nest and further configured to translate movement of the nest relative to the probe to allow the test device to be replaced providing good interchangeability. (Note Li et al. par n0014)
Regarding claim 25, Frankel et al. does not teach wherein the probe has a major axis substantially parallel to the rail.
Li et al. teach wherein the probe has a major axis substantially parallel to the rail. (Note 5, Fig. 1) Examiner’s position is that any axis of the probe 5 is interpreted as a major axis.
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Frankel et al. to include the teaching of the probe has a major axis substantially parallel to the rail to make adjustments.
Allowable Subject Matter
Claims 8 and 22 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 8, wherein the system is further comprises a test module configured to receive a voltage signal associated with at least one winding of the current transformer as the probe rotates within the opening of the device under test, wherein the test module is configured to determine whether the current transformer is functioning within a set threshold as the probe rotates.
Regarding claim 22, further comprising a test module configured to receive a voltage signal associated with at least one winding of the current transformer as the probe rotates within the opening of the device under test, wherein the test module is configured to determine whether the current transformer is functioning within a set threshold as the probe rotates.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEMETRIUS R PRETLOW whose telephone number is (571)272-3441. The examiner can normally be reached M-F, 5:30-1:30.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DEMETRIUS R PRETLOW/Examiner, Art Unit 2858
/JERMELE M HOLLINGTON/Primary Examiner, Art Unit 2858
Prosecution Insights