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 .
Election/Restrictions
Applicant’s election without traverse of Group II, Species A i.e. fig. 1 (claims 14-15) where body portion 102 includes a concave portion 103, in the reply filed on 01/14/2026 is acknowledged.
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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.
Claim(s) 14 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kazama (US 2004/0239355 A1).
Regarding claim 14, Kazama at fig. 3 discloses a probe member for inspection, the probe member comprising: a contact portion [9 as an example] formed of a first metal with a sharp point on one side [side of 9 towards an object 6/6a, see fig. 2 as an example] to contact an object to be inspected; and a body portion 2 formed of a second metal on the other side [side of 9 towards 2] of the contact portion, wherein the body portion includes a concave portion or a convex portion 2b formed on a side [as shown] and having a second diameter smaller or greater [diameter of 2b] than a first diameter of the contact portion [diameter of 9], and the contact portion and the body portion are formed through a separate process [2 and 9 are different metal, see Abstract, therefore formed as separate process. [this is product by process limitation “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) “] to form a boundary surface therebetween [surface between 9 and 2].
Claim(s) 14-15 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chung (US 2021/0190823 A1).
Regarding claim 14, Chung as shown at fig. 7 and 9 below discloses a probe member for inspection, the probe member comprising: a contact portion 11 formed of a first metal [high rigidity material such as Carbon, see ¶0102] with a sharp point [as shown] on one side [top side of 11, at 111 as shown] to contact an object [1002,1001] to be inspected; and a body portion [12,13,14] formed of a second metal [conductive material such as gold, see ¶0030, ¶0055, ¶0105 with ¶0095] on the other side [underside of 11, at 121 as shown] of the contact portion, wherein the body portion includes a concave portion [concave portion as shown on side of 12,13,14] and having a second diameter smaller [diameter of 13] [outer diameter of 11 as shown], and the contact portion and the body portion are formed through a separate process [11 and 12-14 have different metal, this is product by process limitation “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) “] to form a boundary surface therebetween [surface between 11 and 12].
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Regarding claim 15, Chung as shown at fig. 9 above discloses the probe member of claim 14, wherein: the contact portion 11 forms an internal space [space under 11] connected to a container space [space of pyramid portion of 12] having a height of a sharp pyramidal space [height of a space of pyramid portion of 12] on the other side, and the contact portion and the body portion form a boundary surface along inner surfaces of the pyramidal space and the container space therebetween [surface between 11 and 12 along inner surfaces of 11 and 12].
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kazama as applied to claim 14 above, and further in view of Chung (US 2020/0182905 A1) hereafter Pub. ‘905.
Regarding claim 15, Kazama discloses the probe member of claim 14, wherein: the contact portion 9 forms an internal space [internal conical space of to 9] connected to a container space [conical space over 2a of 2 as shown] having a height of a sharp conical space [height of 2 above 2a in said sharp conical space i.e. space between 9 and 2, as shown] on the other side, and the contact portion 9 and the body portion 2 form a boundary surface [surface between conical portion of 2 and 9] along inner surfaces [portions of a surface of conical shape] of the conical space and the container space therebetween.
Kazama is silent about said probe member has sharp pyramidal space. Rather, Kazama discloses a sharp conical space [sharp cone shape of 2] as stated above. Use of a different shape for the same purpose that of the reference Kazama is old and well known in the art. In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). Pub. ‘905 at fig. 9 discloses probe member 11 comprising a sharp pyramidal space [pyramid space of 11 as shown] having four inner surfaces [surfaces of 111 as shown] to make contact with a terminal of the semiconductor device during testing. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use pyramidical space as taught by Pub. ‘905 to modify said conical space as taught by Kazama in order to obtain same advantages that Kazama has to offer.
Conclusion
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/PARESH PATEL/Primary Examiner, Art Unit 2858
January 29, 2026