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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) (IDS/IDSs) submitted on 3/24/2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS/IDSs is/are being considered by the examiner.
Claim Rejections - 35 USC § 112 / § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Regarding independent claim 1, it is unclear if these claims encompass a device or a method. More specifically, the limitations beginning with "positioning of the probe card is performed by aligning" seem to be directed to method. As such, claim 1 is neither directed to a "process" nor a "machine", but rather embraces or overlaps two different statutory classes of invention. The Federal Circuit determined in IPXL Holdings LLC v. Amazon.com, Inc., 77 UDPQ2d 1140 (Fed. Cir. 2005), that claims with a device structure and a method step therein are indefinite under 112(2) because it cannot be determined when the claim is infringed. Additionally, combining two separate statutory classes of invention in a single claim raises a serious question for a manufacturer or seller regarding infringement. Therefore, a claim directed to more than one different statutory class of invention is not sufficiently precise to provide competitors with an accurate determination of the "metes and bounds" of protection involved so that an evaluation of the possibility of infringement may be ascertained with a reasonable degree of certainty.
Claims 2 & 3 inherit this deficiency via dependency.
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 1-4 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.
Regarding claims 1 and 4, the specification does not provide any elucidation as to how “a positional relationship between the probe and a specific peripheral edge portion of the inspection hole is known.” Therefore, there is no evidence that the inventor had possession of the claimed invention at the time of filing.
Claims 2 & 3 inherit this deficiency via dependency.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 4, “a probe card” is mentioned twice. The metes and bounds of the claim cannot be determined because it is unclear whether the second mention of “a probe card” is merely a typographical error that should be “the probe card,” i.e., a reference to the same probe card previously mentioned, or if it is a reference to another probe card. Because both interpretations are equally reasonable, it is not a case of mere broad drafting on the part of the applicant. Therefore, the claim is indefinite.
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) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent App. Pub. No. 20070096763 to Ehrmann et al.
Regarding claim 1, Ehrmann teaches a positioning device of a probe card comprising:
a probe card including a probe (¶ [0040]: “a probe card 32 with mounted test probe pins 34”), which is electrically contactable with an electrode of a device to be measured (¶ [0078]: “contacting the probe pins of probe card 32 to contact pads 72 of circuit under test 70”), and an inspection hole (in, e.g., figure 3, the hole in 32 through which optical beam 44 passes); and
an imaging unit configured to capture an image of the device to be measured through the inspection hole (imaging system 48), wherein
a positional relationship between the probe and a specific peripheral edge portion of the inspection hole is known (¶ [0044]), and
positioning of the probe card is performed by aligning the specific peripheral edge portion with or bringing the specific peripheral edge portion close to a characteristic portion of the device to be measured at a minute interval, in a field of view of the imaging unit (¶ [0044]).
Regarding claim 2, Ehrmann teaches the positioning device of a probe card according to claim 1, wherein
the characteristic portion of the device to be measured has an outer shape (all physical things have an outer shape), and
the positioning of the probe card is performed by, at a plurality of positions, aligning the specific peripheral edge portion with or bringing the specific peripheral edge portion close to the outer shape at a minute interval (¶ [0049]).
Regarding claim 3, Ehrmann teaches the positioning device of a probe card according to claim 2, wherein
the positioning of the probe card is performed by aligning the specific peripheral edge portion with or bringing the specific peripheral portion close to two sides perpendicular to each other of the outer shape at a minute interval (¶¶ [0055] & [0077]).
Regarding claim 4, Ehrmann teaches a probe card comprising:
a probe that is electrically contactable with an electrode of a device to be measured (¶ [0040]: “a probe card 32 with mounted test probe pins 34”); and
an inspection hole (in, e.g., figure 3, the hole in 32 through which optical beam 44 passes), wherein
the probe card is attached to a positioning device of a probe card including an imaging unit that captures an image of the device to be measured through the inspection hole (figure 3: the components must be attached to one another both physically and electrically to interact via the probe card position controller 74 and test equipment 54), and
in order to perform positioning of the probe card by aligning a specific peripheral edge portion of the inspection hole with or bringing the specific peripheral edge portion of the inspection hole close to a characteristic portion of the device to be measured at a minute interval, in a field of view of the imaging unit, a positional relationship between the probe and the specific peripheral edge portion is known (¶ [0044]).
Regarding claim 5, Ehrmann teaches a probe card comprising:
a probe that is electrically contactable to an electrode of a device to be measured (¶ [0078]: “contacting the probe pins of probe card 32 to contact pads 72 of circuit under test 70”); and
an inspection hole that enables imaging of the device to be measured by an imaging unit (in, e.g., figure 3, the hole in 32 through which optical beam 44 passes), wherein
the inspection hole has a peripheral edge portion that enables adjustment of a position with respect to the device to be measured by imaging through the inspection hole by the imaging unit (¶ [0044]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
United States Patent App. Pub. No. 20060218781 to Nakamura et al. discloses an electronic-component alignment method and apparatus therefor having a camera, through holes, and alignment marks.
United States Patent No. 6678058 to Baldwin et al. discloses integrated alignment and calibration of optical system having imaging optics and a calibration fiducial used to properly position a workpiece.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert P Alejnikov whose telephone number is (571)270-5164. The examiner can normally be reached 10:00a-6:00p M-F.
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/ROBERT P ALEJNIKOV JR/Examiner, Art Unit 2857
/ARLEEN M VAZQUEZ/Supervisory Patent Examiner, Art Unit 2857
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