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 .
This action is in response to the communication filed 7/9/2026.
Response to Arguments
Applicant's arguments filed 7/10/2026 have been fully considered but they are not persuasive.
With regard to the arguments on pages 5-7 directed towards the previous 112 rejections,
The Examiner acknowledges applicant’s arguments and explanation directed towards the prior 112 rejections, but respectfully disagrees that these arguments overcome the previous rejection.
As explained by applicant with regard to the M=2 situation, there are no probes between devices 1, 2, and M. Combined with the discussion during the interview, what applicant is arguing is that Figures 2A-2C show situations where different probes exist between different sets of devices at different times, but at no point do more than one set of probes exist between other sets. A probe head is formed one or more devices together, but where only one overall probe head with its probes would exist at any point in time based upon applicant’s arguments and interview explanation. Using applicant’s example with regard to Figure 2B, this would mean in this figure where M=2, two devices (210A,210B) and probes 242 would collectively form one probe head, but no other probe heads or probes would be present.
This is, respectfully, not originally disclosed, and is not consistent with the claim scope.
First, paragraph [0063] explicitly states that the probe heads are element 132. While applicant presents arguments in the form of attorney argument, applicant does not address the above issue where the original disclosure discloses a specific component as a probe head which is not consistent with the presented arguments. Applicant further, respectfully, does not reasonably identify where the original disclosure interprets a probe head, probes, or devices consistent with what is claimed or in the manner argued. While applicant identifies Figure 2B, applicant does not identify any other sections of the disclosure to explain the claimed invention, such as how the disclosure interprets a probe head or probes. Figure 2B alone does not reasonably provide support for the claim features as claimed.
Second, Claim 1 explicitly states that there are “N-1 probe heads, with N being an integer larger than 1.” As such, regardless of whether the intent of the claim is to capture only a single probe head, the claim expressly includes plural probe heads by expressly claiming N-1 probe heads and then defining N to be larger than 1. N can therefore reasonably be 2, but it can also be 3, or 4, and so on. The claim scope expressly recites and includes plural probe heads, but such a recitation is not definite because applicant’s own explanation is that the final product will only include one probe head with its respective probes at any point in time. Apparatus claims are directed towards the final product, and not any use thereof. As such, if moving the probes between different devices, and thus using the apparatus, is necessary to achieve plural probe heads as claimed, then such a feature is indefinite because it is unclear how many probe heads are required in the claim as the final product does not include more than one probe head with its probes.
As explained in MPEP 2114 (II), [A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original), and MPEP 2173.05(p)(II) explains “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.” While applicant is not expressly reciting a use of the apparatus in the claim, as applicant’s representative explained during the interview, the probes are moved, and thus the apparatus is used, in order to achieve the different probe configurations seen in Figures 2A-2C. As such, in order to achieve plural probe heads as claimed, applicant must use, and thus include, a method of use of the device. Otherwise, applicant cannot have plural probe heads.
A person of ordinary skill in the art would therefore not understand the manner in which applicant achieves plural probe heads as claimed, and such a person would not understand what a probe or probe head is in light of the disclosure.
Therefore, the only reasonable interpretation of the claim must be based upon any one of the figures, such as Figure 2A, where plural probe heads must reasonably exist. Thus, consistent with the original disclosure
Note that the changing or probe heads and a reconfiguring of the device is permitted in a method of use claim, but no such claim is recited.
No specific arguments are presented against Claims 9, 11, and 12, and the Examiner therefore respectfully disagrees for the reasons stated above and in the rejections below.
Furthermore, with regard to Claim 11, the Examiner respectfully notes that this claim is expressly directed towards a method of manufacture but where, like in Claim 1, applicant does not reasonably disclose the manner in which this claim is implemented.
With regard to the arguments on pages 7-9 directed towards Knickerbocker (US 2011/0042820 A1),
First, the Examiner acknowledges the prior statement that a person of ordinary skill would not reasonably recognize interconnects as a probe head. However, the Examiner respectfully notes that the Examiner is not asserting that the interconnects are probe heads. The Examiner is asserting that the probe heads are the devices and their respective interconnects, an interpretation that is consistent with applicant’s disclosure. In order to have plural probe heads as claimed, there must be plural devices, at least one for each probe head, with respective electrical connections therebetween. For example, while applicant shows probes in Figure 2A, because applicant claims plural probe heads, the other electrical connections between the devices must also reasonably be probes. The prior art is being interpreted in the exact same manner.
Second, applicant argues that the prior action fails to articulate that if the bottom device is to be tested, then the top two devices and the top two sets of probes form the M-th probe head,” and that the Office Action is rely upon hindsight. The Examiner respectfully disagrees.
Hindsight is, respectfully, not applicable because such a concept solely pertains to obviousness, and thus only to rejections made under 35 U.S.C. 103. Under 35 U.S.C. 102, a reference either does or does not disclose a feature based upon proper interpretation in light of the disclosure. In fact, the cited MPEP 2142 is expressly directed towards “Legal Concept of Prima Facie Obviousness” as seen in the heading. As such, this section is, respectfully, not applicable as no obviousness rejection is being asserted.
Next, the Examiner respectfully notes that the prior and instant Office Action did articular the interpretation of the prior art. As expressly stated, “What Knickerbocker discloses is substantially similar to applicant, in that like applicant, multiple devices as part of a chip stack are electrically connected to each other by electrical interconnects. While applicant may intend the interconnects of the instant application to be used for a testing purpose, structurally, the device of Knickerbocker is substantially similar to that of applicant, and thus would be reasonably capable of the same type of use. That stated, the structure of Knickerbocker, being substantially similar to that of applicant, reasonably discloses the features of the claims.
The above explanation is therefore asserting inherency, because the prior art discloses a substantially similar device as applicant, with multiple stacked devices located with electrical connections therebetween that can be used, like applicant, to test the various devices. To that point, MPEP 2112(IV) explains that "In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original). The Examiner has met this burden by interpreting the prior art consist with the disclosure, and explaining that given the substantially similar structure of the prior art and instant application, it must reasonably disclose the claim features.
Should applicant disagree, MPEP 2112(V) then explains “V. ONCE A REFERENCE TEACHING PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION, AND THE EXAMINER PRESENTS EVIDENCE OR REASONING TO SHOW INHERENCY, THE BURDEN OF PRODUCTION SHIFTS TO THE APPLICANT
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).”
Here, the Examiner respectfully notes that no such explanation is presented as to why the prior art does not disclose the argued claim features. Applicant notes hindsight, but as explained above, such a concept does not pertain to anticipation as a prior art reference either does or does not disclose a claim feature when properly interpreted in light of the disclosure.
Lastly, to the extent that applicant is arguing that there is no recognition of the probe heads in the reference, the Examiner respectfully notes MPEP 2112(II) explaining “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003).” Here, what applicant is claiming and disclosing are plural devices interconnected in a manner that would allow them to be able to test other devices, and is calling the plural devices a “probe head.” The prior art is being interpreted in the same manner, consistent with and in light of the disclosure, using the naming conventions used by applicant. There is no requirement that the prior art recognize those naming conventions, and instead, all that is required is that the prior art actually disclose the claim features when interpreted in a manner that is consistent with the disclosure. The prior art is being interpreted in the same as applicant or at least broadest reasonable manner that is consistent with the disclosure, and thus reasonably discloses the claim features.
The Examiner respectfully disagrees with applicant, and the applicable prior art and 112 rejections are repeated below.
Information Disclosure Statement
The information disclosure statement filed 1/8/2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because Cite. No. 4 is a “List of IBM Patents or Patent Applications Treated as Related,” but where a it is improper to provide a “list” and because the documents have not been provided. The cited documents are not US patent applications or publications, and instead, as best understood, are internal IBM reference numbers. These documents must therefore be provided in order to be considered. As to a list, 37 C.F.R. 1.98(a)(1)(ii) expressly states “A column that provides a space, next to each document to be considered, for the examiner’s initials.” As such, each space is intended to be for a “document” as not a list of documents as currently presented. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings are objected to because it is unclear what features constitute a probe head as recited in Claim 1, for example. See the 112 rejections below regarding this issue. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 8, 9, 11, 12, 13, and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to Claim 1,
The phrase “the M-th probe head is configured to test an (M+1)-th device of the N devices; and M is an integer between 1 and N-1” on the last two lines introduces new matter.
Applicant now claims “the M-th probe head is configured to test an (M+1)-th device of the N devices; and M is an integer between 1 and N-1,” but where such a phrase is not originally disclosed. Applicant initially claims “an M-th probe head, of the N-1 probe heads, includes devices 1 to device M of N devices,” and where the full scope of such a phrase includes a probe head that includes all M devices. Meaning, the phrase “M of N devices” includes all devices. Later reciting an “M+1” device of the N devices therefore introduces new matter, because it would require all devices as part of a probe head to test a device that is also already part of the probe head. This, respectfully, is not originally disclose. While applicant may intend the M devices to no include all devices, the claim does not reasonably recite this feature. Reciting “N-1 probe heads” furthermore does not reasonably address this issue as it does not limit how many devices are used for the probe heads. Such a phrase therefore introduces new matter.
The phrase “A semiconductor testing device, comprising: N-1 probe heads with N being an integer larger than 1, wherein: an M-th probe head, of the N-1 probe heads, includes devices 1 to device M of N devices, which are electrically connected to each other, and a probe attached to the M-th device; the M-th probe head is configured to test an (M+1)-th device of the N devices; and M is an integer between 1 and N-1” on lines 1 to the end lacks proper written description.
1)
The first issue here is that applicant does not reasonably disclose the manner in which applicant implements a probe head. In one instance, applicant states in paragraph [0063] that the probe heads are element 132, but element 132 are bonded interconnects as seen in Figure 1. A person of ordinary skill in the art would not reasonably recognize interconnects as probe heads, and mere interconnections between devices 110A-N are not reasonably probe heads. Further raising an issue is that paragraph [0064] then states that the probe head includes one or more devices itself, a feature also claimed above. However, a device, especially one that itself is designed to be tested, is not reasonably a probe head. Furthermore, while not expressly claimed, a probe head reasonably requires some form of probe, but where the original disclosure does not reasonably disclose the manner in which any probes are implemented. The Examiner acknowledge the probes 242 shown in Figures 2A-2C, but applicant does not reasonably disclose the manner in which these probes are implemented. For example, applicant does not explain whether these probes all exist at the same time and are merely inserted into the DUT contacts 232. This is stated because Figure 1, which discloses the claimed overall device, does not shown any probes 232. As such, applicant does not reasonably disclose where in the final product these probes are located.
To further that point, applicant’s representative explained during the interview of 7/8/2026 that all of the probes shown in Figures 2A-2C do not exist at the same time. Claim 1 is directed towards a final product, and in the only way that plural probe heads can be present in the claim, a feature included in the scope of the claim, is if more than one set of probes are indeed present in the claim. Applicant’s representative explained that in order to have the use of plural probes, the apparatus must actually be used to move the probes from one position to another. However, the claim scope clearly includes plural probe heads, and the only way plural probe heads can be present is if there are plural probes, at least one for each probe head. This situation however cannot exist because only one probe head can reasonably exist at any point in time without using the apparatus to move the probe heads. With this explanation, the above phrase lacks proper written description because a person of ordinary skill in the art would not reasonably recognize plural probe heads as part of the final product as claimed, and thus would not recognize that applicant had possession of the claim feature.
Furthermore, applicant does not reasonably explain whether the different devices are physically disconnected in the manner shown in Figures 2A-2C, or if this is merely an exaggerated drawing only made to show where the probes are located. The primary issue, in light of the above, is that applicant does not reasonably disclose the manner in which any probe head, includes its probes, are implemented in the combination, and applicant does not reasonably disclose the difference between the probes themselves in contrast with the electrical interconnects found between stacked devices. A person of ordinary skill in the art would not reasonably recognize the manner in which the above probe heads are implemented, as claimed, and would therefore not reasonably recognize that applicant had possession of the above claim features.
2) The next issue here is that applicant does not reasonably disclose the manner in which any device is “configured to test an (M+1)-th device of the N devices” as claimed. What applicant discloses, as best understood, is a stack of devices that have electrical components between them. Even to the extent that applicant considers the electrical interconnects between the devices to have or be probes, applicant does not reasonably disclose the manner in which these devices themselves are configured to perform any type of testing. As best understood, the devices themselves are both a device that is intended to be tested, as well as a device intended to be used for testing by making it part of a probe head. However, applicant does not reasonably explain what specific configuration of these devices or probe heads cause them to be configured to test any component, beyond merely being electrically connected to an adjacent device or component. The original disclosure does not reasonably disclose a configuration of the probe heads that cause them to be configured to test any device, especially when one of the devices themselves is considered part of the probe head. Merely being electrically connected to another device does not reasonably mean that the device, or combination of the device an probes, are themselves configured to test any component. For example, what configures a multimeter to test a voltage across a device is not merely the fact that it has electrical probes that can be used to test a voltage. Instead, it is the combination of these electrical probes and a specific program or electrical configuration of components designed to obtain the voltage from the electrical signals from the probes that provide the configuration. However, applicant does not reasonably disclose what about the devices themselves are configured to test, such that they, in combination with an probes, are themselves configured to perform any type of test as claimed. A person of ordinary skill in the art would not reasonably recognize that applicant had possession of the claim feature “the M-th probe head is configured to test an (M+1)-th device of the N devices,” and this phrase therefore lacks proper written description.
As to Claim 9,
The phrase “wherein the semiconductor testing device is configured to test the (M+1)-th devices within a temperature range from -55 °C to 150 °C” on lines 1-2 lacks proper written description.
1) Applicant does not reasonably disclose or claim any element or component that can reasonably “test” a device as claimed. None of the devices, as best understood, are themselves configured to test another device or other component. Applicant does not disclose what about the devices causes them to have a configuration, such as by way of a stored program or physical circuit, that is specially designed/configured for the claimed purpose. There is a difference between being able to use a first device and its electrical connections to test another device, as opposed to that first device itself having a configuration for such a purpose. The original disclosure does not reasonably disclose the manner in which any device is configured to test another device, and this feature therefore lacks proper written description.
2) Applicant does not reasonably disclose any specific component of the “semiconductor testing device” that is configured to test the devices. Meaning, the only elements of the claims are the devices themselves. Applicant does not recite any other structural claim features. However, applicant is claiming that the “semiconductor testing device” is configured to test the very devices that form the semiconductor testing device. Such a recitation lacks proper written description, because there is no claim structure part of the test device that is reasonably capable of testing the devices themselves. A person of ordinary skill in the art would not reasonably recognize the manner in which the semiconductor testing device is configured in the claimed manner.
As to Claim 11,
The phrase “A method comprising: forming N devices, wherein N is an integer; forming an M-th probe head, wherein: the M-th probe head is formed by electrically connecting a device 1 to a device M of the N devices to each other; and M is an integer between 1 and N-1, attaching a probe to the M-th probe head, and testing an (M+1)-th device of the N devices by the M-th probe head” on lines 1 to the end lacks proper written description and introduces new matter.
1) The first issue is that applicant is now claiming “attaching a probe to the M-th probe head,” but where such a feature introduces new matter. The Examiner acknowledges the probes shown in Figures 2A-2C, but applicant, respectfully, does not originally disclose an attaching step. For example, the probes seen can be formed along with the any other electrical connections such that they all always exist at the same time. The now recited feature is not inherent, and applicant, respectfully, does not identify where in the original disclosure support is found or why this claim feature must be inherent. This phrase therefore introduces new matter.
2) The second issue here is that applicant does not reasonably disclose the manner in which applicant implements a probe head. In one instance, applicant states in paragraph [0063] that the probe heads are element 132, but element 132 are bonded interconnects as seen in Figure 1. A person of ordinary skill in the art would not reasonably recognize interconnects as probe heads, and mere interconnections between devices 110A-N are not reasonably probe heads. Further raising an issue is that paragraph [0064] then states that the probe head includes one or more devices itself, a feature also claimed above. However, a device, especially one that itself is designed to be tested, is not reasonably a probe head. Furthermore, while not expressly claimed, a probe head reasonably requires some form of probe, but where the original disclosure does not reasonably disclose the manner in which any probes are implemented. The Examiner acknowledges the probes 242 shown in Figures 2A-2C, but applicant does not reasonably disclose the manner in which these probes are implemented. For example, applicant does not explain whether these probes all exist at the same time and are merely inserted into the DUT contacts 232. This is stated because Figure 1, which discloses the claimed overall device, does not shown any probes 232. As such, it is unclear where in the final product these probes are located. Furthermore, applicant does not reasonably explain whether the different devices are physically disconnected in the manner shown in Figures 2A-2C, or if this is merely an exaggerated drawing only made to show where the probes are located. The primary issue, in light of the above, is that applicant does not reasonably disclose the manner in which any probe head, includes its probes, are implemented in the combination, and applicant does not reasonably disclose the difference between the probes themselves in contrast with the electrical interconnects found between stacked devices. A person of ordinary skill in the art would not reasonably recognize the manner in which the above probe heads are implemented, as claimed, and would therefore not reasonably recognize that applicant had possession of the above claim features.
2) The next issue here is that applicant does not reasonably disclose the manner in which applicant implements “testing an M-th device of the N devices under test by the M-th probe head” as claimed. What applicant discloses, as best understood, is a stack of devices that have electrical components between them. Even to the extent that applicant considers the electrical interconnects between the devices to have or be probes, applicant does not reasonably disclose the manner in which these devices themselves are configured to perform any type of testing, and similarly, the manner in which any testing of the devices is implemented. As best understood, the devices themselves are both a device that is intended to be tested, as well as a device intended to be used for testing by making it part of a probe head. However, applicant does not reasonably explain what specific configuration of these devices or probe heads cause them to be configured to test any component, beyond merely being electrically connected to an adjacent device or component. The original disclosure does not reasonably disclose a configuration of the probe heads that cause them to be configured to test any device, especially when one of the devices themselves is considered part of the probe head. Merely being electrically connected to another device does not reasonably mean that the device, or combination of the device an probes, are themselves configured to test any component. For example, what configures a multimeter to test a voltage across a device is not merely the fact that it has electrical probes that can be used to test a voltage. Instead, it is the combination of these electrical probes and a specific program or electrical configuration of components designed to obtain the voltage from the electrical signals from the probes that provide the configuration. However, applicant does not reasonably disclose what about the devices themselves are configured to test, such that they, in combination with an probes, are themselves configured to perform any type of test as claimed. A person of ordinary skill in the art would not reasonably recognize that applicant had possession of the claim feature “testing an M-th device of the N devices under test by the M-th probe head” because such a person would not reasonably recognize the manner in which any test is actually implemented using the probe head / device(s) as claimed, and this phrase therefore lacks proper written description.
3) The fourth issue is that applicant is essentially claiming that a probe head is formed by way of an electrical connection, but where applicant does not reasonably explain the manner in which such a feature is implemented. Applicant does not reasonably disclose or explain what makes the decision to change what the probe head is considered to be or the manner in which such a decision is implemented. Applicant further does not reasonably explain what steps or features are implemented upon making such a decision. No device that is reasonably capable of implementing the above claim feature is disclosed or claimed, and no reasonable explanation of what this device would do to implement the claim features or any other reasonable explanation of the manner in which the claim features are being implemented are disclosed. A person of ordinary skill in the art would not reasonably recognize the manner in which this claim feature is being implemented in order to demonstrate possession of the claim feature, and the claim feature therefore lacks proper written description.
As to Claim 12,
The phrase “upon testing the (M+1)-th device by the M-th probe head, forming an M+1 probe head by electrically connecting the device 1 to the device M+1 of the N devices; and testing an (M+2)-th device of the N devices by the M+1 probe head” on lines 2 to the end lacks proper written description and introduces new matter.
1) This claim introduces new matter because there is no “M+2” device of the N devices available to test, thus raising an issue of new matter. The full scope of Claim 11 is for there to be N devices and a probe head formed from anywhere between 1 to M of the N devices, where M is between 1 and N-1. As such, the full scope of the M-th probe claimed in Claim 11 is to be formed from 1 up to N-1 devices, and thus from 1 to all but one device. If the new probe head formed in Claim 12 is then formed from device 1 through M+1 of the N devices, then the full scope of this claim includes the probe head being formed form 1 to all of N devices, leaving no other device to be tested. As such, no M+2 device would be present in the claim to be tested. This phrase therefore introduces new matter because the full claim scope is not originally disclosed.
2) The second issue is that this phrase lacks proper written description for the same issues noted in the above rejection of Claim 11, where are herein incorporated as asserted against this claim. A person of ordinary skill in the art would not reasonably recognize the manner that applicant is performing any testing or forming a probe head as explained in the rejection of Claim 11, and such a person would not reasonably recognize that applicant had possession of the claim features.
3) The third issue is that applicant is essentially claiming that a new probe head is formed by way of a new electrical connection, but where applicant does not reasonably explain the manner in which such a feature is implemented. Applicant does not reasonably disclose or explain what makes the decision to change what the probe head is considered to be or the manner in which such a decision is implemented. Applicant further does not reasonably explain what steps or features are implemented upon making such a decision. No device that is reasonably capable of implementing the above claim feature is disclosed or claimed, and no reasonable explanation of what this device would do to implement the claim features or any other reasonable explanation of the manner in which the claim features are being implemented are disclosed. A person of ordinary skill in the art would not reasonably recognize the manner in which this claim feature is being implemented in order to demonstrate possession of the claim feature, and the claim feature therefore lacks proper written description.
As to Claims 2-6, 8, 9, 12, 13, and 16
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.
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 1-6, 8, 9, 11, 12, 13, and 16 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.
As to Claim 1,
The phrase “A semiconductor testing device, comprising: N-1 probe heads with N being an integer larger than 1, wherein: an M-th probe head, of the N-1 probe heads, includes devices 1 to device M of N devices, which are electrically connected to each other, and a probe attached to the M-th device; the M-th probe head is configured to test an (M+1)-th device of the N devices; and M is an integer between 1 and N-1” on lines 1 to the end to the end is indefinite.
1) Applicant claims “a probe attached to the M-th device,” but no “M-th device” was previously recited. More than one device can exist, as applicant claims “M of N devices” and where “M is an integer between 1 and N-1.” As such, it is unclear what M-th device is being referenced, as the claim scope allows for plural M devices to have been previously recited. This phrase is therefore indefinite. For the purpose of compact prosecution, the Examiner is interpreting that the probe head can be any number of devices and can test a device within that probe head or another device not part of the probe head.
2) Next, applicant now claims “the M-th probe head is configured to test an (M+1)-th device of the N devices; and M is an integer between 1 and N-1,” but where such a phrase is indefinite. Applicant initially claims “an M-th probe head, of the N-1 probe heads, includes devices 1 to device M of N devices,” and where the full scope of such a phrase includes a probe head that includes all M devices. Meaning, the phrase “M of N devices” includes all devices. Later reciting an “M+1” device of the N devices is therefore indefinite, because there are no other devices available to be the M+1 device. In order for the above claim phrase to work, an M-th probe head can only include from 1 to N-1 devices, such that the probe head does not include all devices. However, as claimed, the probe head does reasonably include all devices, thus rendering this phrase indefinite.
3) The third issue is that applicant does not reasonably disclose the manner in which applicant implements a probe head, and it is unclear what a probe head is in light of the disclosure. In one instance, applicant states in paragraph [0063] that the probe heads are element 132, but element 132 are bonded interconnects as seen in Figure 1. A person of ordinary skill in the art would not reasonably recognize interconnects as probe heads, and mere interconnections between devices 110A-N are not reasonably probe heads. Further raising an issue is that paragraph [0064] then states that the probe head includes one or more devices itself, a feature also claimed above. However, a device, especially one that itself is designed to be tested, is not reasonably a probe head. Furthermore, while not expressly claimed, a probe head reasonably requires some form of probe, but where the original disclosure does not reasonably disclose the manner in which any probes are implemented. The Examiner acknowledge the probes 242 shown in Figures 2A-2C, but applicant does not reasonably disclose the manner in which these probes are implemented. For example, applicant does not explain whether these probes all exist at the same time and are merely inserted into the DUT contacts 232. This is stated because Figure 1, which discloses the claimed overall device, does not shown any probes 232. As such, it is unclear where in the final product these probes are located. Furthermore, applicant does not reasonably explain whether the different devices are physically disconnected in the manner shown in Figures 2A-2C, or if this is merely an exaggerated drawing only made to show where the probes are located. The primary issue, in light of the above, is that applicant does not reasonably disclose the manner in which any probe head, includes its probes, are implemented in the combination, and applicant does not reasonably disclose the difference between the probes themselves in contrast with the electrical interconnects found between stacked devices. As evidence, the Examiner notes US 2009/0201038 to Knickerbocker which explains that the probe head (2), which is the test head itself, is what holds the probes (4b) used for testing (see Figure 1B, Paragraphs [0039],[0040],[0062]).
To further that point, applicant’s representative explained during the interview of 7/8/2026 that all of the probes shown in Figures 2A-2C do not exist at the same time. Claim 1 is directed towards a final product, and in the only way that plural probe heads can be present in the claim, a feature included in the scope of the claim, is if more than one set of probes are indeed present in the claim. Applicant’s representative explained that in order to have the use of plural probes, the apparatus must actually be used to move the probes from one position to another. However, the claim scope clearly includes plural probe heads, and the only way plural probe heads can be present is if there are plural probes, at least one for each probe head. This situation however cannot exist because only one probe head can reasonably exist at any point in time without using the apparatus to move the probe heads. This explanation demonstrates that it is unclear what a probe head is and it is unclear what a probe can be considered, because the claim cannot reasonably have more than one probe head with its probe at any given point in time.
A person of ordinary skill in the art would therefore not reasonably understand what applicant is considering a probe or probe head to be, and would not reasonably understand the metes and bounds for the full scope of what a probe head or probe to be in light of the disclosure. For the purpose of compact prosecution, as applicant is indicating that the interconnects between devices can be considered to be probe heads and claims/disclosure that the devices under test can be considered part of the probe heads, the Examiner is interpreting that the combination of any device and the interconnects for that device can be considered a probe head, with the interconnects themselves reasonably considered to be probes, in light of the disclosure.
4) The fourth issue is whether a device is part of a probe head or a device under test. In one instance, a device can be, as best understood, part of a probe head, but in another, it is not, making it unclear how to treat each device in light of the disclosure. While the Examiner acknowledges that applicant my intend in one instance to have one of the devices used as or part of the probe head, from a final product perspective, a device either is or is part of a probe head, or not, making it unclear how the probe head and devices should be interpreted.
5) The next issue here is that applicant does not reasonably disclose the manner in which any device is “configured to test an (M+1)-th device of the N devices” as claimed. What applicant discloses, as best understood, is a stack of devices that have electrical components between them. Even to the extent that applicant considers the electrical interconnects between the devices to have or be probes, applicant does not reasonably disclose the manner in which these devices themselves are configured to perform any type of testing. As best understood, the devices themselves are both a device that is intended to be tested, as well as a device intended to be used for testing by making it part of a probe head. However, applicant does not reasonably explain what specific configuration of these devices or probe heads cause them to be configured to test any component, beyond merely being electrically connected to an adjacent device or component. The original disclosure does not reasonably disclose a configuration of the probe heads that cause them to be configured to test any device, especially when one of the devices themselves is considered part of the probe head. Merely being electrically connected to another device does not reasonably mean that the device, or combination of the device an probes, are themselves configured to test any component. For example, what configures a multimeter to test a voltage across a device is not merely the fact that it has electrical probes that can be used to test a voltage. Instead, it is the combination of these electrical probes and a specific program or electrical configuration of components designed to obtain the voltage from the electrical signals from the probes that provide the configuration. However, applicant does not reasonably disclose what about the devices themselves are configured to test, such that they, in combination with an probes, are themselves configured to perform any type of test as claimed. As such, in light of the disclosure, a person of ordinary skill in the art would not reasonably what applicant means by claiming “the M-th probe head is configured to test an M-th device of the N devices” beyond merely being electrically connected to an adjacent device. For the purpose of compact prosecution, the Examiner is interpreting that a device that is electrically connected to another device is reasonably configured to test that device, in light of the disclosure.
As to Claim 9,
The phrase “wherein the semiconductor testing device is configured to test the (M+1)-th devices within a temperature range from -55 °C to 150 °C” on lines 1-2 is indefinite.
1) Applicant does not reasonably disclose or claim any element or component that can reasonably “test” a device as claimed. None of the devices, as best understood, are themselves configured to test another device or other component. Furthermore, the only elements of the claims are the devices themselves. Applicant does not recite any other structural claim features. However, applicant is claiming that the “semiconductor testing device” is configured to test the very devices that form the semiconductor testing device. Such a recitation is therefore indefinite because it is unclear what structural feature of the semiconductor testing device is itself “configured” to perform any type of testing.
2) Claim 1 already recites that a probe head is configured to test a device, but where this testing is distinctly recited from the testing of Claim 9. The difference and relationship between these two distinct test recitations is unclear, as it is unclear if they are intended to refer to the same or different testing.
As to Claim 11,
The phrase “A method comprising: forming N devices, wherein N is an integer; forming an M-th probe head, wherein: the M-th probe head is formed by electrically connecting a device 1 to a device M of the N devices to each other; and M is an integer between 1 and N-1, attaching a probe to the M-th probe head, and testing an (M+1)-th device of the N devices by the M-th probe head” on lines 1 to the end is indefinite.
1) Applicant’s claim is directed to two different types of methods, and is therefore indefinite because it is unclear which type of method this claim is directed towards. In one instance, the claim is directed towards a method of manufacture, which is expressly recited in the preamble where applicant claims a method of fabricating. However, applicant then claims that the devices are “under test” and “testing an M-th device of the N devices under test by the M-th probe head,” but where testing is not a method of fabricating and is instead a method of using. While testing may be part of the overall method of fabricating, it is indefinite to recite both as part of the same claim and to recite both in the same positive manner, because it renders it is unclear whether this claim is directed towards a method a manufacture or a method of using, similar to the IPXL case recited in MPEP 2173.05(p)(II). As such, it is unclear whether this claim should be treated as a method of manufacture or method of using, and is unclear how the claim limitations should therefore be treated.
2) At issue here is that, as best understood, all devices are always electrically connected as seen in Figure 1. While applicant may intend to use specific electrical connections at different times, applicant is not, as best understood, disconnecting any electrical connections as seen in Figure 1. As such, it is unclear what applicant means by reciting that the probe head is formed by electrically connecting the device as claimed, as this device would already be electrically connected to the N-M device.
As to Claim 12,
The phrase “upon testing the (M+1)-th device by the M-th probe head, forming an M+1 probe head by electrically connecting the device 1 to the device M+1 of the N devices; and testing an (M+2)-th device of the N devices by the M+1 probe head” on lines 2 to the end is indefinite.
1) This claim is indefinite because there is no “M+2” device of the N devices available to test, thus making it unclear how such a feature should be interpreted. The full scope of Claim 11 is for there to be N devices and a probe head formed from anywhere between 1 to M of the N devices, where M is between 1 and N-1. As such, the full scope of the M-th probe claimed in Claim 11 is to be formed from 1 up to N-1 devices, and thus from 1 to all but one device. If the new probe head formed in Claim 12 is then formed from device 1 through M+1 of the N devices, then the full scope of this claim includes the probe head being formed form 1 to all of N devices, leaving no other device to be tested. As such, no M+2 device would be present in the claim to be tested. This phrase is therefore indefinite, because it is unclear how many devices are required per probe head, and it is unclear how such a feature should be interpreted in light of the disclosure.
2) At issue here is that, as best understood, all devices are always electrically connected as seen in Figure 1. While applicant may intend to use specific electrical connections at different times, applicant is not, as best understood, disconnecting any electrical connections as seen in Figure 1. As such, it is unclear what applicant means by reciting that the probe head is formed by electrically connecting the device as claimed, as this device would already be electrically connected to the (M+1)-th (or M+2)-th device.
As to Claims 2-6, 8, 9, 12, 13, and 16,
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 § 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 1-6, 8, 9, 11, 12, 13, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Knickerbocker (US 2011/0042820 A1).
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As to Claim 1,
Knickerbocker discloses A semiconductor testing device, comprising:
N-1 probe heads (see above figure / note that a probe head is defined, in light of the disclosure, to be a combination of a device and one of the two sets of probes, and thus there are 3 devices and 2 probe heads) with N being an integer larger than 1, wherein:
an M-th probe head, of the N-1 probe heads, includes devices 1 to M of N devices (note the above three devices), which are electrically connected to each other (see above figure / note that the devices and probes can be selected in the same manner as disclosed by applicant, such as if the bottom device is to be tested, then the top two devices and the top two sets of probes form the Mth probe head), and a probe attached to the M-th device (see above figure) ;
the M-th probe head is configured to test an (M+1)-th device of the N devices (see above figure / note probe head can reasonably test the remaining device because it is electrically connected to it); and
M is an integer between 1 and N-1 (see above figure), (Figures 5a-c), (Paragraphs [0048],[0074] / note that while a marked-up Figure 5a is shown above, all of Figures 5a-c are asserted to disclose the claim features as all disclose a similar chip stack).
N devices (note the above three devices), wherein N is an integer (note N can be 3 as seen in Figures 5a,c) (see above figure);
(Note: What Knickerbocker discloses is substantially similar to applicant, in that like applicant, multiple devices as part of a chip stack are electrically connected to each other by electrical interconnects. While applicant may intend the interconnects of the instant application to be used for a testing purpose, structurally, the device of Knickerbocker is substantially similar to that of applicant, and thus would be reasonably capable of the same type of use. That stated, the structure of Knickerbocker, being substantially similar to that of applicant, reasonably discloses the features of the claims.)
As to Claim 2,
Knickerbocker discloses the N devices are chiplets or die (Figure 5a / note the stack of chips, which is a stack of dies).
As to Claim 3,
Knickerbocker discloses the N devices are coupled to each other (Figure 5a).
As to Claim 4,
Knickerbocker discloses wherein: at least one of the devices is a semiconductor wafer; and the semiconductor wafer is one of: a functional wafer, a full thickness wafer, or a thinned wafer (Paragraph [0027] / note the dies can be thin wafer dies).
As to Claim 5,
Knickerbocker discloses wherein: the semiconductor wafer is coupled to a handler wafer (Paragraphs [0028],[0032]); and the semiconductor testing device is further configured to spread and remove heat from the semiconductor wafer via the handler wafer (Figures 5b,c / note heat spreader or cooling plate), (Paragraphs [0074],[0075]).
As to Claim 6,
Knickerbocker discloses wherein the handler wafer is one of: a silicon handler wafer, or a thermally conductive handler wafer (Paragraph [0061] / note the handler can be a thick piece of silicon or glass).
As to Claim 8,
Knickerbocker discloses wherein the handler wafer includes through-silicon via (TSV) configured to spread and remove heat from the semiconductor wafer (Paragraph [0018], [0027], (Figure 3 / note the handler is interpreted to include the TSV).
As to Claim 9,
Knickerbocker discloses wherein the semiconductor testing device is configured to test the devices within a temperature range from -55 °C to 150 °C (note this is a property of the system as the device is substantially similar to that of applicants, and thus must reasonably include such a feature (Figures 5-a).
As to Claim 11,
Knickerbocker discloses A method comprising: forming N devices (note the above three devices, wherein N is an integer (see above figure / note N can be three for example in Figures 5a,c); forming an M-th probe head (see above figure / note that a probe head is defined, in light of the disclosure, to be a combination of a device and one of the two sets of probes, and thus there are 3 devices and 2 probe heads), wherein: the M-th probe head is formed by electrically connecting a device 1 to a device M of the N devices to each other see above figure / note that the devices and probes can be selected in the same manner as disclosed by applicant, such as if the bottom device is to be tested, then the top two devices and the top two sets of probes form the Mth probe head); and M is an integer between 1 and N-1 (see above figure), attaching a probe to the M-th probe head (see above figure), and testing an (M+1)-th device of the N devices by the M-th probe head (Paragraphs [0028],[0059] / note that as best understood, having the probe head electrically connected to one of the devices and where those connections of the probe head to the device under test are used for testing, reasonably meets this claim feature when an overall test is performed, which is disclosed in at least the above paragraphs).
(Note: What Knickerbocker discloses is substantially similar to applicant, in that like applicant, multiple devices as part of a chip stack are electrically connected to each other by electrical interconnects. While applicant may intend the interconnects of the instant application to be used for a testing purpose, structurally, the device of Knickerbocker is substantially similar to that of applicant, and thus would be reasonably capable of the same type of use. That stated, the structure of Knickerbocker, being substantially similar to that of applicant, reasonably discloses the features of the claims.)
As to Claim 12,
Knickerbocker discloses upon testing the (M+1)-th device by the M-th probe head, forming an M+1 probe head by electrically connecting the device 1 to the device M+1 of the N devices; and testing an (M+2)-th device of the N devices by the M+1 probe head (Paragraphs [0028],[0059] / note that as best understood, having the probe head electrically connected to the devices similar to that disclosed by applicant, and where those connections of the probe head to the device under test are used for testing, reasonably meets this claim feature when an overall test is performed, which is disclosed in at least the above paragraphs).
As to Claim 13,
Knickerbocker discloses wherein: at least one of the N devices is a semiconductor wafer; and the semiconductor wafer is one of: a functional wafer, a full thickness wafer, or a thinned wafer (Paragraph [0027] / note the dies can be thin wafer dies).
As to Claim 16,
Knickerbocker discloses forming through-silicon via (TSV) in the semiconductor wafer; and spreading and removing heat from the semiconductor wafer via the TSV (Paragraph [0018], [0027], (Figure 3 / note the handler is interpreted to include the TSV).
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 DAVID M. SCHINDLER whose telephone number is (571)272-2112. The examiner can normally be reached 8am-4:30pm.
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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DAVID M. SCHINDLER
Primary Examiner
Art Unit 2858
/DAVID M SCHINDLER/Primary Examiner, Art Unit 2858
Prosecution Insights