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 .
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.
Claim(s) 9, 12, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Low (U.S. Patent No. 6,515,494 B1; hereafter Low).
Regarding claims 9, 12, and 18, the claims are drawn to a tested device which has been tested through a testing process, the testing process being performed by using the method as claimed in claims 8, 10, and 16, respectively. It is clear from the preamble of “a tested device” that the claim is drawn to an apparatus. This appears to be an attempt to recite the device as a product-by-process. However, for a product-by-process claim “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)” (see MPEWhitener113(I)). Since in this case the process is merely one of testing, the final structure of the product is unchanged. Since there are no structural implications to the device due to the method of testing, any device which is capable of being tested is structurally identical to a device which has been tested. Therefore, any device which is capable of being tested anticipates claims 9 and 18, since they are structurally identical products. Low discloses a wafer capable of being tested by probes on both sides (see Low Fig. 1, item 70), and therefore anticipates the “tested device” as called for in claims 9 and 18.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3, 6, 10, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Low in view of Applicant’s admitted prior art (hereafter AAPA) and Gunn III et al. (U.S. Patent No. 7,184,626 B1; hereafter Gunn).
Regarding claim 1, Low discloses a probe system for double side probing, which is configured for testing one or more devices under test of a substrate, the probe system comprising: a chuck configured to support the substrate, the chuck comprising a through hole for the substrate to be disposed on the chuck in a way that the substrate is defined with a central part located correspondingly to the through hole and an edge part located around the central part and supported by the chuck (see Low Fig. 4, items 54, 64, and 66. While referred to as a “tray” instead of a “chuck,” the device securely holds the wafer for testing, and therefore can reasonably be construed as a chuck.); an upper probe device disposed above the through hole of the chuck for testing the device under test on a top side of the substrate (see Low Fig. 8, items 18 and 20); a lower probe device disposed below the through hole of the chuck for testing the device under test on a bottom side of the substrate, the bottom side being opposite to the top side, the bottom side facing toward the chuck (see Low Fig. 8, item 50); and a support device comprising a supporter (see Low Fig. 8, item 46); wherein one of the upper probe device and the lower probe device is an electrical probe device (see Low Fig. 8, item 18); the electrical probe device comprises an electrical probe (see Low Fig. 8, item 20), and the other of the upper probe device and the lower probe device is an optical inspection device (see Low Fig. 8, item 50); the optical inspection device and the support device are individually movable relative to the chuck (see Low Fig. 8, item 90 moves the optical probe independently, and item translation/rotation mechanism 68 moves the chuck and support with respect to one another); one of the support device and the electrical probe device is disposed above the through hole of the chuck (see Low Fig. 8, item 18), and the other of the support device and the electrical probe device is disposed below the through hole of the chuck (see Low Fig. 8, items 54 and 46); when the device under test is tested by the electrical probe device, the electrical probe is in contact with one of the top side and the bottom side of the substrate (see Low Fig. 6, items 16 and 20), and the supporter of the support device is in contact with the other of the top side and the bottom side of the substrate and located adjacent to the electrical probe with the substrate located therebetween (see Low Fig. 6, items 64 and 46).
Low does not disclose that the optical inspection device is an optical probe comprising a fiber optical transceiver.
AAPA discloses that it was known in the art at the time the invention was filed that the optical inspection device is an optical probe using optical fibers: “Conventionally, both electrical probe systems and optical probe systems (e.g. optical fibers) have conveyed test signals to the DUT” (see Applicant’s specification, p. 1).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Low with an optical probe with optical fibers, as taught by AAPA, in order to simultaneously inspect both sides of the wafer, reducing inspection time.
Gunn discloses an optical probe device that comprises a fiber optical transceiver (see Gunn Fig. 6A, items 611 and 612).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Low with an optical probe comprising a fiber-optic transceiver in order to send and receive the optical signals using the same device, saving space and expense.
Regarding claim 3, Low as modified discloses the probe system as claimed in claim 1, wherein the upper probe device is the electrical probe device for performing an electrical test to the device under test by contacting the top side of the substrate by the electrical probe (see Low Fig. 8, items 18 and 20); the support device is disposed below the through hole of the chuck for contacting the bottom side of the substrate by the supporter (see Low Fig. 8, item 46); the lower probe device is the optical probe device for performing an optical test to the device under test on the bottom side of the substrate (see Low Fig. 8, item 50. In the combination with Gunn, the optical device is the probe transceiver as taught by Gunn.).
Regarding claim 6, Low as modified discloses the probe system as claimed in claim 1, wherein when the device under test is tested by the electrical probe device, a distance defined on a horizontal axis between a position where the substrate is contacted by the supporter and another position where the substrate is contacted by the electrical probe is smaller than a length of the device under test defined on the horizontal axis (see Low Fig. 6, the distance between the edge of the supporter 48 and the contact probe 16 in the horizontal direction is far smaller than the length of the DUT 64).
Regarding claim 10, Low as modified discloses a method of operating the probe system as claimed in claim 1, the method comprising: disposing the substrate on the chuck (see Low Fig. 8, items 54 and 64); and under the status that the supporter of the support device is in contact with the substrate, testing the device under test by the upper probe device on the top side of the substrate, and testing the device under test by the lower probe device on the bottom side of the substrate (see Low Fig. 8, items 18, 46, and 50); wherein the upper probe device, the lower probe device and the support device are arranged in one of ways that: the lower probe device is the electrical probe device and performs an electrical test to the device under test by contacting the bottom side of the substrate by the electrical probe, the support device is disposed above the through hole of the chuck and contacts the top side of the substrate by the supporter, and the upper probe device is the optical probe device and performs an optical test to the device under test on the top side of the substrate; and the upper probe device is the electrical probe device and performs an electrical test to the device under test by contacting the top side of the substrate by the electrical probe (see Low Fig. 6, items 16 and 20), the support device is disposed below the through hole of the chuck and contacts the bottom side of the substrate by the supporter (see Low Fig. 6, items 46 and 64), and the lower probe device is the optical probe device and performs an optical test to the device under test on the bottom side of the substrate (see Low Fig. 8, item 50. In the combination with Gunn, the optical device is the probe transceiver as taught by Gunn.).
Regarding claim 11, Low as modified discloses the method as claimed in claim 10, wherein the fiber optical transceiver of the optical probe device comprises an optical transceiving surface; when performing the optical test to the device under test, the optical probe device is arranged in one of ways that: the optical transceiving surface of the fiber optical transceiver faces toward a top surface of the top side of the substrate to perform the optical test to the device under test; the fiber optical transceiver is inserted into a recess of the top side of the substrate, and the optical transceiving surface faces toward an inner side wall of the recess to perform the optical test to the device under test; the optical transceiving surface of the fiber optical transceiver faces toward a bottom surface of the bottom side of the substrate to perform the optical test to the device under test (see Low Fig. 8, item 50. In the combination with Gunn, the optical device is the probe transceiver as taught by Gunn.); and the fiber optical transceiver is inserted into a recess of the bottom side of the substrate, and the optical transceiving surface faces toward an inner side wall of the recess to perform the optical test to the device under test.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Low in view of AAPA and Gunn, as applied to claim 1, above, and further in view of Bhatt et al. (Pub. No. US 2012/0286818 A1; hereafter Bhatt).
Regarding claim 2, Low as modified discloses the probe system as claimed in claim 1, but does not disclose that the lower probe device is the electrical probe device for performing an electrical test to the device under test by contacting the bottom side of the substrate by the electrical probe; the support device is disposed above the through hole of the chuck for contacting the top side of the substrate by the supporter; the upper probe device is the optical probe device for performing an optical test to the device under test on the top side of the substrate.
Bhatt discloses a testing device wherein the lower probe device is the electrical probe device for performing an electrical test to the device under test by contacting the bottom side of the substrate by the electrical probe (see Bhatt Fig. 1, item 140); the support device is disposed above the chuck for contacting the top side of the substrate by the supporter (see Bhatt Fig. 1, item 135); the upper probe device is the optical probe device for performing an optical test to the device under test on the top side of the substrate (see Bhatt Fig. 1, item 130).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the optical testing apparatus on top, and the electrical testing apparatus on bottom, as shown in Bhatt, as opposed to the reverse as taught in Low, as selecting from one of known subset of identified, predictable solutions is deemed obvious to the ordinary workman in the art. In this case, which tester is on top is readily selectable as both options are well-known and within the purview of the ordinary workman in the art.
Claim(s) 13, 16, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whitener et al. (Pub. No. US 2007/0296423 A1; hereafter Whitener) in view of Gunn.
Regarding claim 13, Whitener discloses a probe system for double side probing, which is configured for testing one or more devices under test of a substrate, the probe system comprising: a chuck comprising a supporting part which is grid-shaped (see Whitener Fig. 5, items 304 and 306), the supporting part comprising an upper surface, a lower surface, and a plurality of through holes penetrating through the upper surface and the lower surface for the substrate to be disposed on the upper surface of the supporting part in a way that the substrate is partially located correspondingly to every said through hole (see Whitener paragraph [0029] “The wafer support plate 304 has a grid pattern 400 with openings 402, 404 that allow access to probe sites (contacts) on the test wafer (not shown) while supporting the test wafer during probing.”); an electrical probe device disposed above the supporting part of the chuck, the electrical probe device comprising an electrical probe for testing the device under test by contacting a top side of the substrate by the electrical probe (see Whitener Fig. 3, item 108); a probe device disposed below the supporting part of the chuck, the probe device for testing the device under test on a bottom side of the substrate through the through hole of the supporting part (see Whitener Fig. 2, item 134 and paragraph [0034] “the second wafer support plate 306 has a second grid pattern 506 allowing probe access to a second side of the wafer”).
Whitener does not specifically disclose that the probe device placed below the supporting part is an optical probe device, the optical probe device comprising a fiber optical transceiver.
Gunn discloses an optical probe device that comprises a fiber optical transceiver (see Gunn Fig. 6A, items 611 and 612).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Low with an optical probe comprising a fiber-optic transceiver in order to send and receive the optical signals using the same device, saving space and expense.
Regarding claim 16, Whitener as modified discloses a method of operating the probe system as claimed in claim 13, the method comprising: disposing the substrate on the upper surface of the supporting part of the chuck (see Whitener Fig. 5, item 306 is placed under the wafer, which is held by shim 502), testing the device under test by the electrical probe device on the top side of the substrate (see Whitener Fig. 3, item 108), and testing the device under test by the optical probe device on the bottom side of the substrate (see Whitener Fig. 1, item 130. In combination with Gunn, the device testing the bottom portion is an optical transceiver probe); wherein the electrical probe device performs an electrical test to the device under test by contacting the top side of the substrate by the electrical probe (see Whitener paragraph [0029] “openings 402, 404 that allow access to probe sites (contacts) on the test wafer”); the fiber optical transceiver of the optical probe device faces toward the bottom side of the substrate to perform an optical test to the device under test (see Whitener Fig. 2, item 130. In combination with Gunn, the device testing the bottom portion is an optical transceiver probe).
Regarding claim 17, Whitener as modified discloses the method as claimed in claim 16, wherein the fiber optical transceiver of the optical probe device comprises an optical transceiving surface; when performing the optical test to the device under test, the optical probe device is arranged in one of ways that: the optical transceiving surface of the fiber optical transceiver faces toward a bottom surface of the bottom side of the substrate to perform the optical test to the device under test (see Whitener Fig. 1, item 130. In combination with Gunn, the device testing the bottom portion is an optical transceiver probe); and the fiber optical transceiver is inserted into a recess of the bottom side of the substrate, and the optical transceiving surface faces toward an inner side wall of the recess to perform the optical test to the device under test.
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Low in view of AAPA and Gunn as applied to claim 1 above, and further in view of Chuang et al. (Pub. No. US 2021/0156907 A1; hereafter Chuang).
Regarding claim 4, Low as modified discloses the probe system as claimed in claim 1, but does not disclose that the support device further comprises a heater; the heater is configured to control temperature of the supporter when the device under test is tested by the upper probe device and the lower probe device, so as to heat the device under test through thermal conduction when the supporter is in contact with the substrate; [claim 5] wherein the probe system further comprises a non-contact heating device; the non-contact heating device is configured to heat the device under test via thermal radiation when the device under test is tested by the upper probe device and the lower probe device.
Chuang discloses a heater; the heater is configured to control temperature of the supporter when the device under test is tested by the upper probe device and the lower probe device, so as to heat the device under test through thermal conduction when the supporter is in contact with the substrate (see Chuang Fig. 2, heating plate 30’); [claim 5] wherein the probe system further comprises a non-contact heating device; the non-contact heating device is configured to heat the device under test via thermal radiation when the device under test is tested by the upper probe device and the lower probe device (see Chuang Fig. 2, non-contact heater 66).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Low as modified with contact and non-contact heaters like those in Chuang in order to ensure that the wafer does not deform due to thermal imbalances across the wafer during testing.
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whitener in view of Gunn as applied to claim 13 above, and further in view of Chuang.
Regarding claim 14, Whitener as modified discloses the probe system as claimed in claim 13, but does not disclose that the chuck further comprises a heater that heats the substrate through thermal conduction when the supporting part is in contact with the substrate; [claim 15] wherein the heater is disposed in the supporting part.
Chuang discloses disclose that the chuck further comprises a heater that heats the substrate through thermal conduction when the supporting part is in contact with the substrate; [claim 15] wherein the heater is disposed in the supporting part (see Chuang Fig. 2, heating plate 30’)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Low as modified with contact and non-contact heaters like those in Chuang in order to ensure that the wafer does not deform due to thermal imbalances across the wafer during testing.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Low in view of AAPA and Gunn as applied to claim 1 above, and further in view of Hsu et al. (Pub. No. US 2021/0055340 A1; hereafter Hsu).
Regarding claim 7, Low as modified discloses the probe system as claimed in claim 1, but does not specifically disclose that the optical probe device comprises a distance sensor for measuring a distance between the optical probe device and the substrate to generate a distance value for a determination of whether the supporter of the support device is in contact with the substrate by a variation of the distance value.
Hsu discloses a probe device wherein the probe device comprises a distance sensor for measuring a distance between the probe device and the substrate to generate a distance value for a determination of whether the supporter of the support device is in contact with the substrate by a variation of the distance value (see Hus paragraph [0021] “the probe card is further equipped with a Z-axis displacement sensing element 132 to sense the distance between the light output element 131 and the wafer 12.” The recitation of “for a determination of whether the supporter of the support device is in contact with the substrate by a variation of the distance value” is an intended use of the distance sensor, and therefore is not given patentable weight in an apparatus claim.).
Allowable Subject Matter
Claim 8 is 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.
The prior art does not disclose or fairly suggest using the distance sensor of the optical probe device to measure the distance between the optical probe device and the substrate to generate the distance value… and determining that the supporter of the support device is in contact with the substrate when the distance value obtained by the distance sensor of the optical probe device has a variation,” in combination with the remaining method steps called for in claim 8.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAM S REISNER whose telephone number is (571)270-7542. The examiner can normally be reached Monday-Friday 9:00AM-5:30PM.
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/NOAM REISNER/ Primary Examiner, Art Unit 2852 9/1/2026
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