DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/16/2024 and 01/10/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant's election with traverse of Species II, readable on claims 1-5, 7-13 in the reply filed on 5/13/2023 is acknowledged. In the traversal, the applicant states:
“Applicant respectfully traverses this restriction on the grounds that the Examiner has not established a serious search burden as required for a proper restriction. The Examiner acknowledged that "claim 1 appears generic to all Species." Office Action at 3. It is respectfully submitted that the subject matter of all claims and species is sufficiently related that a thorough search for the subject matter of any one Group of claims and species would encompass a search for the subject matter of the remaining claims and species. For at least these reasons, it is respectfully submitted that the search and examination of the entire application could be made without serious burden. See MPEP §803 in which it is stated that "if the search and examination of an entire application can be made without serious burden, the examiner must examine it on the merits, even though it includes claims to independent or distinct inventions" (emphasis added). It is respectfully submitted that this policy should apply in the present application in order to avoid unnecessary delay and expense to Applicant and duplicative examination by the Patent Office.”
The arguments are not found persuasive. First, the presence of a claim that is generic to all Species doesn’t negate the appropriateness of a restriction requirement, where an application includes claims directed to different embodiments or species that could fall within the scope of the generic claim, as long as the species are independent or distinct (MPEP 806.04). As explained in the Restriction requirement mailed 12/22/2025, the Species are independent or distinct because claims to the different species recite the mutually exclusive characteristics of such species (see Restriction requirement, page 2). Second, the examiner notes that the claims recite or encompass such a multiplicity of species that there would be a serious search burden, as evidenced for example, by the fact the prior art relied upon in the rejection of the elected claims (see grounds for rejection below) do not appear applicable to the non-elected claims.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6 and 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim. The examiner notes that the claim listing labels claim 6 “Original”. The response however, identifies claim 6 as non-elected (Remarks, page 6, second paragraph). The examiner believes this is due to a minor typographical error where the listing of claims was meant to identify claim 6 as “Withdrawn”.
Furthermore, 12-13 recite a “fluid dispenser configured to deposit a fluid on a portion of the substrate” which is exclusive to the non-elected Species of Figure 8 (see element 804 in Figure 8). Accordingly, claims 12-13 are being withdrawn from consideration as being directed to a non-elected Species.
Status of Claims
The status of the claims as amended/presented in the response received 2/12/2026, is as follows:
- Claims 1-27 are pending.
- New claims 21-27 are entered.
- Claims 6 and 12-13 and 14-20 are withdrawn from consideration.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4, 7-10, 21, 23, 25 and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the US Patent Application Publication PGPub 2006/0109015 by Thacker et al., (Thacker hereafter).
Regarding claim 1, Thacker teaches in Figure 5A, a system comprising:
a probe assembly (100) comprising:
an optical probe head (110+510+160) comprising one or more optical elements (optical probe 160) configured to optically couple one or more optical fibers (optical fiber that is used as an equivalent to waveguide 250 – see paragraph 0050, lines 1-3), to one or more transceivers (input/output interface 310) of a test substrate (140); and
an electrical probe head (120+150) comprising one or more electrical probe elements (electrical probes 150) configured to electrically test one or more electrical circuits (520) of the test substrate (see claim 1, in paragraph 0111).
Regarding claim 4, Thacker shows in Figure 5A, the optical probe head is further configured to engage the one or more optical fibers (at least portions 160 and 510 engage the optical fiber 250 in a functional manner, interacting with it to send/receive signals to and element 310. See paragraph 0050).
Regarding claim 7, Thacker teaches in Figure 5A, a system comprising:
a first probe head (120+150) configured to electrically test one or more electrical circuit (520) of a test substrate (140 - see claim 1, in paragraph 0111: “the probe substrate includes at least a first probe element to test an electrical signal”); and
a second probe head (110+510+160) configured to optically test one or more optical circuits (310- see claim 1 in paragraph 0111: “a second probe element to test an optical signal of an optoelectronic device under test”) of the substrate, wherein the first probe head and the second probe head are configured to electrically test and optically test, in parallel, the substrate (in the manner shown in Figure 5A and described for example, in paragraph 0038: “The probe module 100 is designed to be scalable to allow testing of a single I/O connection or multiple I/O connections in parallel. Similarly, the probe module 100 can be used for testing one device or multiple devices in parallel.”).
Regarding claim 8, Thacker shows in Figure 5A, one or more optical fibers (waveguide element 250, described as optical fiber paragraph 0050, lines 1-3), connected to the second probe head (110+510+160).
Regarding claim 9, Thacker shows in Figure 5A, the second probe head (110+510+160) comprises one or more optical elements (160) configured to optically couple a transceiver (310) of the substrate to the second probe head.
Regarding claim 10, Thacker teaches that the one or more optical elements (160) comprise a substantially flat mirror (200) configured to turn a light beam, from a substantially horizontal orientation, toward the test substrate (as shown for example, in Figure 3B, element 220. See also paragraph 0052: “The optical elements 200, such as, but not limited to, diffractive elements 210 (focusing or non-focusing) or reflective elements 220 (metallic or total internal reflection mirrors)”).
Regarding claim 21, Thacker teaches in Figure 5A, a probe assembly comprising optical probe elements (160) comprising one or more mirrors (as shown for example, in Figure 3B, element 220. See also paragraph 0052: “The optical elements 200, such as, but not limited to, diffractive elements 210 (focusing or non-focusing) or reflective elements 220 (metallic or total internal reflection mirrors)”) configured to optically couple an optical fiber (waveguide element 250, described as optical fiber paragraph 0050, lines 1-3) to a transceiver (310) of a test substrate; and
electrical probe elements (150) configured to electrically test one or more electrical circuits (520) of the test substrate (140 - see claim 1, in paragraph 0111: “the probe substrate includes at least a first probe element to test an electrical signal”);
wherein the probe assembly is configured to optically test and electrically test,
in parallel, the test substrate (in the manner shown in Figure 5A and described for example, in paragraph 0038: “The probe module 100 is designed to be scalable to allow testing of a single I/O connection or multiple I/O connections in parallel. Similarly, the probe module 100 can be used for testing one device or multiple devices in parallel.”).
Regarding claim 23, Thacker teaches the electrical probe elements are configured to electrically test the test substrate (see claim 1, paragraph 0111) provide a voltage to the test substrate (inherently, since the probe elements are resistive and configured to transmit electrical signals to the device under test, the probes are also configured to provide a voltage to the test substrate).
Regarding claim 25, Thacker teaches in paragraph 0111, claim 12, that the optical probe elements are further configured to optically test one or more optical circuits of the test substrate (the system as a whole, including both optical and electrical probe elements are configured to optically test optical circuits of the test substrate 140. See paragraph 008).
Regarding claim 27, Thacker teaches the probe assembly is further configured to engage the optical fiber (at least portions 160 and 510 engage the optical fiber 250 in a functional manner, interacting with it to send/receive signals to and element 310. See paragraph 0050).
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 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.
Claim(s) 5 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thacker in view of the US Patent US 4,808,815 by Langley et al., (Langley hereafter).
In terms of claim(s) 5 and 22, Thacker substantially teaches all of the elements disclosed above, except for explicitly mentioning a mechanical fine alignment feature configured to engage with a second mechanical alignment feature of the test substrate.
Langley teaches an optical prober comprising an alignment system including a first mechanical fine alignment feature (Figure 3, element 33) configured to engage with a second fine alignment mechanical feature of the substrate (Figure 3, 31).
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 mechanical alignment features as taught by Langley, and include them in the system of Thacker, in order to ensure the optical and electrical probes in Thacker's system are correctly aligned with respect to the surface of the substrate under inspection.
In terms of claim(s) 22, Thacker substantially teaches all of the elements disclosed above, except for explicitly mentioning an alignment mark configured to align with a second alignment mark of the test substrate.
Langley teaches an optical prober comprising an alignment system including a first mechanical mark (Figure 3, element 33) configured to engage with a second alignment mark of the substrate (Figure 3, 31).
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 alignment marks as taught by Langley, and include them in the system of Thacker, in order to ensure the optical and electrical probes in Thacker's system are correctly aligned with respect to the surface of the substrate under inspection.
Claim(s) 2-3 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thacker in view of the US Patent US 8,885,157 by Masuda et al., (Masuda hereafter).
Regarding claim(s) 2 and 22, Thacker substantially teaches all of the elements disclosed above, except for explicitly mentioning a sensor configured to detect one or more alignment marks of the test substrate to align the one or more optical elements with the one or more transceivers.
Masuda teaches a probing apparatus (see col. 4, lines 40-56).
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 sensors and alignment marks as taught by Masuda, and include them in the device of Thacker, in order to ensure the optical and electrical probes in Thacker's system are correctly aligned with respect to the surface of the substrate under inspection.
Regarding claim(s) 3, Thacker substantially teaches all of the elements disclosed above, except for explicitly mentioning a sensor configured to detect one or more features of the test substrate, the system further comprising a computing device comprising: one or more processors; and memory storing instructions that, when executed by the computing device, cause the one or more processors to: cause, based on the detected one or more features, alignment of the one or more optical elements with the one or more transceivers enabling the optical coupling of the one or more optical fibers to the one or more transceivers.
Masuda teaches a probing apparatus (Figure 1) including an alignment system that uses a sensor (see column 4, line 38) to detect an alignment feature (col. 4, line 51) on the test substrate and aligns the probes to the device under inspection by using a processor (within control section 180) that is program to execute alignment of the probes with respect to the substrate under inspection (see col. 4, lines 40-56).
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 sensors and alignment marks as taught by Masuda, and include them in the device of Thacker, in order to ensure the optical and electrical probes in Thacker's system are correctly aligned with respect to the surface of the substrate under inspection.
** The examiner notes that, although not explicitly mentioned by Masuda, the control section 108 is inherently automated to perform alignment steps through the outputting of control signals (col. 4, line 34). Inherently, the control section includes a processor that is programmed to perform the steps required in col. 4, lines 35-36. Alternatively, the examiner takes Official Notice of the fact a person having ordinary skill in the art would before the invention was effectively filed, would have found it obvious to include such processor and memory unit within the control section, to store instructions allowing the control section to perform the steps described in col. 4, lines 35-36, in order to automate the process and make efficient and less prone to human error.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thacker.
Regarding claim(s) 11, Thacker teaches the optical element (160) comprise a substantially flat mirror (as shown for example, in Figure 3B, element 220. See also paragraph 0052: “The optical elements 200, such as, but not limited to, diffractive elements 210 (focusing or non-focusing) or reflective elements 220 (metallic or total internal reflection mirrors)”).
Thacker doesn’t show the optical element (160) includes an optical focusing element. However, Thacker teaches in the embodiment of Figure 16B, the use of a focusing element (1630) allowing the optical signals to converge on the transceiver (1310).
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 focusing elements as presented in the embodiment of Figure 16B taught by Thacker, and include a focusing element in the optical element of the embodiment of Figure 5A, in order to gain the advantage of ensuring optical signals are focused and directed towards the surface of the transceiver.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thacker.
Regarding claim(s) 21, Thacker substantially teaches all of the elements disclosed above, except for explicitly mentioning that the probe elements (150) are subject to a spring force substantially in a direction toward the test substrate.
However, in a separate embodiment of the system, illustrated in Figures 9, 12 and 13, Thacker teaches a variation of the probes where, due to their geometry and construction, the probes are subject to a spring force while coupling to a contact (880) of the substrate under inspection (see paragraph 0072, lines 11-12).
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 springy probes as presented in the embodiment of Figures 9, 12 and 13 taught by Thacker, and include springy probes in the embodiment of Figure 5A, in order to gain the advantage of engaging the substrate contact with a resilient force that ensures a constant connection.
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thacker in view of the US Patent US 12,442,990 by Krichevsky et al., (Krichevsky hereafter).
Regarding claim 26, Thacker teaches that, to maximize power efficiency the light used in free space directed between the tilted reflective element (mirror 220, paragraph 0043, line 2) and the transceiver can be collimated (light directed towards the transceivers as illustrated in Figure 3A – see paragraph 0046, and specifically, line 8). However, Thacker doesn’t explicitly mention that to achieve the reflection of collimated light, the mirror should be curved.
Krichevsky teaches in Figure 2, a probing device used in testing photonic elements, including a curved mirror (112) that allows for a beam of light to be reflected in a collimated manner (130). 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 curved mirrors reflecting collimated light rays as taught by Krichevsky, and allow a curve in the mirror of the device Krichevsky, in order to gain the advantage of ensuring the reflected rays are collimated, maximizing power efficiency.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
- The US Patent US 8,907,696 by Masuda et al., particularly Figure 1.
- The US Patent US 11,747,363 by Piels et al., particularly Figure 7.
- The US Patent Application Publication PGPub 2008/0095531 A1 by Yeo et al., particularly Figure 8.
- The US Patent US 7,109,739 by Gothoskar et al., particularly Figure 4.
- The US Patent US 10,782,342 by Saadany et al., particularly Figure 9.
- The US Patent US 6,686,993 by Karpman et al., particularly Figure 1
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.
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, 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.
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.
/RICHARD ISLA/ Primary Patent Examiner, Art Unit 2858 February 25, 2026