Ex Parte McQuade

Patent Trial and Appeal Board

Sep 27, 2017

14309566 (P.T.A.B. Sep. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/309,566 06/19/2014 Francis T. McQUADE BEAM.000004 6745
124676 7590 09/29/2017
Russell Ng PLLC
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
EXAMINER
ALEJNIKOV JR, ROBERT P
ART UNIT PAPER NUMBER
2868
NOTIFICATION DATE DELIVERY MODE
09/29/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
stephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS T. MCQUADE
Appeal 2017-002481
Application 14/309,5661
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1—92 under 35 U.S.C. § 103 as being
unpatentable over McQuade (US 2008/0238408 Al, published Oct. 2, 2008)
(“McQuade”) in view of Schmid et al. (US 2008/0150564 Al, published
June 26, 2008) (“Schmid”).
1 According to Appellant, the real party in interest is BucklingBeam
Solutions LLC. (Appeal Br. 3).
2 The Examiner states claims 1—7 are rejected in the statement of the
rejection (Final Act. 5) but sets forth reasons for rejecting claims 8 and 9 in
the body of the rejection (Final Act. 8—9). Therefore, claims 1—9 are
rejected under § 103. Appellant states that claims 1—9 are finally rejected
(Appeal Br. 3). Therefore, there is no dispute over the status of the claims.
Appeal 2017-002481
Application 14/309,566
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added):
1. A probe card comprising:
a plurality of micro probes, wherein one of said micro
probes includes a curved segment and a linear segment
connected to each other at an angle stop, wherein said linear
segment is shorter than said curved segment;
a top plate having a plurality of holes formed therein,
wherein one of said holes is configured to receive said curved
segment of said one micro probe;
a disc having a plurality of holes formed therein, wherein
one of said holes is configured to receive said linear segment of
said one micro probe at said angle stop; and
a removable plate removably connected to said disc,
wherein said removable plate includes a plurality of holes
formed therein, wherein one of said holes is configured to
receive said linear segment of said one micro probe.
Figure 2 of Appellant’s disclosure is reproduced below for reference
icy
FkS. 2
Figure 2 is a cross-sectional view of a probe card.
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Application 14/309,566
The probe card 10 depicted in Figure 2 includes micro probes 15, a
top plate 11 having holes 16 to receive the curved segment of the micro
probes 15, a disc 12 having holes 17 configured to receive the linear
segment of the micro probes 15, and a removable plate 19 removable fixed
to disc 12 (Spec 5:12—29). As shown in Figure 2 above, the holes 17 are
depicted as extending through the removable plate 19, with the micro probes
15 extending through the holes 17 (see Spec 5:13—15).
ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellant’s
claims 1—9 are unpatentable over the applied prior art. We sustain the
Examiner’s rejections essentially for the reasons set out by the Examiner in
the Answer. We add the following primarily for emphasis.
Figure 10A of McQuade is reproduced below:
1006
1005A
Fig. 1QA
Figure 10A depicts a cross-sectional view of a probe test head.
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Application 14/309,566
McQuade discloses a probe test head 1000 that includes micro probes
1002, an upper die 1003, an alignment layer 1004, and a lower die 1005
having holes 1007 through which the micro probes 1002 extend, as shown in
Figure 10A (McQuade 27—28). As shown above, Figure 10A depicts the
micro probes 1002 extending through holes in the upper die 1003. McQuade
discloses that micro probes include a curved intermediate region and a linear
region connected to the curved region via an angle stop {id. 126, Figure
9A). Therefore, the disclosure of McQuade supports the Examiner’s
findings that McQuade discloses a probe card having a plurality of micro
probes that have a curved segment connected to a linear segment via an
angle stop, a top plate having a plurality of holes, and a disc having a
plurality of holes, as recited in claim 1 (Final Act. 5).
The Examiner finds McQuade does not disclose a removable plate, as
recited in claim 1 (Final Act. 5—6). To address this, the Examiner turns to
Schmid, which is directed to devices for testing electrical components
(Schmid 12). Schmid discloses the ends of needles (i.e., probes) used to
contact test points of an electrical component become soiled during use but
cleaning (e.g., abrasive cleaning) of the needles causes the needles to shorten
in length, which eventually leads to replacement of the needles {id. 14). In
view of this, Schmid is directed to significantly increasing the service life of
contact elements (i.e., needles) {id. 1 5).
One of Schmid’s embodiments for accomplishing this objective is
Figure 1, which the Examiner cites for a disclosure of a removable plate 29
(Final Act. 6; Ans. 4). Figure 1 is reproduced below:
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Application 14/309,566
Figure 1 depicts a contacting device for contacting an electrical test piece.
Schmid discloses a contacting device 1 including a spacer element 6
positioned between guide elements 2 and 3, a spacer element 7 positioned
between guide elements 3 and 4, and a spacer element 8 positioned between
guide elements 4 and 5 (Schmid 126). The guide elements 2—5 and spacer
elements 6—8 form cavities 13—15 in the interior of the device 1 that a
contact element 20 extends through (id.).
Schmid teaches that when the contact element 20 is abrasively cleaned
the contact element 20 becomes shorter, which would normally lead to its
replacement (id. 129). To address this, Schmid discloses changing the
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Application 14/309,566
distance between guide elements 4 and 5 so the length that the contact
element 20 projects from the device 1 is adjusted (id.). Specifically, Schmid
discloses removing a spacer 29, which can be a U-shaped frame part 30,
from between guide elements 4 and 5 (id. || 29-30).
The Examiner finds the spacer 29 functions as a removable plate
including a hole configured to receive a linear segment of a micro probe,
citing the cavity 15 formed by the spacers 29 in Figure 1 of Schmid (Final
Act. 6; Ans. 7).3 The Examiner concludes it would have been obvious to
modify the device of McQuade to include the removable plate to adjust the
projecting length of a micro probe, which adjusts for changes in length as
the linear segment of a micro probe wears due to cleaning (Final Act. 6).
Appellant’s principal argument in the Appeal Brief regarding claim 1
is that it would not have been obvious to modify McQuade in view of
Schmid because such a modification would have changed the principle of
operation of McQuade (Appeal Br. 5—7). Specifically, Appellant contends
the device of Schmid operates by clamping the spacer 29 between guide
elements 4, 5, removing spacer 29, and making adjustments to bring guide
element 5 closer to guide element 4 but the device of McQuade does not
have an element similar to guide element 5 for supporting the spacer 29 and
for making adjustments after removal of the spacer 29 (id. at 6—7).
3 Appellant asserts “[i]t is unclear which one of Schmid’s elements that the
Examiner considers as the claimed removable plate because the Examiner
has not specified” (Appeal Br. 4). However, Appellant further states “what
is clear is that disc 29 is the element that is removably connected to guide
elements 4—5” (id.). Moreover, the Examiner clearly states that the spacer
29 of Schmid functions as a removable plate (Final Act. 6; Ans. 4).
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Appellant further argues the spacer 29 is not capable of connecting to the
disc 1005 ofMcQuade (Reply Br. 3).
Appellant’s arguments are unpersuasive. One of the ways in which a
claim’s subject matter can be proved obvious is by establishing that there
existed at the time of invention a known problem for which there was an
obvious solution encompassed by the claims. KSR Int 7 v. Teleflex Inc., 550
U.S. 398, 419-20 (2007). Here, Schmid addresses the same problem as
Appellant’s invention and in a similar manner, as stated by the Examiner at
page 3 of the Examiner’s Answer (compare Spec 2:16—21, 7:12—23 with
Schmid H 29-30).
For an improvement to be patentable, it must be more than the
predictable use of prior art elements according to their established functions
(KSR at 417). “[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill” (id.). The disclosure of Schmid
demonstrates it was known to use a removable plate (e.g., spacer 29) to
adjust the projected length of a micro probe after the length of the micro
probe is decreased by cleaning.4 5In view of Schmid’s disclosure, it would
have been obvious to combine the removable plate (e.g., spacer 29) of
4 In fact, Schmid discloses that the spacer 29 is removed “after prior
loosening of the corresponding parts, and the device is then again tightly
screwed, pressed, or the like” (Schmid 130). This suggests that guide
element 5 can be screwed to guide element 4. In such a case, guide element
5 is also a removable plate because a device that is joined to another
component by screws can be removed via removal of the screws. This is
further illustrated by the embodiment depicted in Figure 3 of Schmid, which
connects guide elements 4 and 5 via threaded pins 32 (id. 131).
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Schmid with the probe test head 1000 of McQuade so the probe test head
1000 is capable of adjusting the projected length of its micro probes 1002
after their lengths have decreased due to cleaning. This would have resulted
in the combination of a probe test head 1000 and a removable plate that still
perform the functions disclosed by McQuade and Schmid (i.e., a probe test
head 1000 that tests electronic devices and a removable plate to adjust the
projected length of micro probes and thus extend their useful service lives).
To the extent McQuade does not disclose any means or structure for
connecting the spacer 29 of Schmid to the lower die 1005, Schmid suggests
holding the spacer 29 between corresponding parts that are “tightly screwed,
pressed, or the like” (Schmid 130). Furthermore, we “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ,” and find a person of ordinary skill in the art would overcome those
difficulties within their level of skill (KSR at 418; see also id. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”)). Therefore, one of ordinary skill would have been able to
connect the spacer 29 of Schmid to the lower die 1005 of McQuade in view
of the guidance provided by Schmid and their own creative abilities unless it
would not have been within their level of skill. Appellant does not cite any
evidence or provide any persuasive technical reasoning to demonstrate
otherwise.
Appellant further argues the spacer 29 of McQuade does not have a
hole, as recited for the removable plate of claim 1, because “[cjommon sense
dictates that the area in the middle of the spacer 29 is not considered as a
hole according to the standard definition of the word ‘hole,’” (Appeal Br. 6;
Reply Br. 2).
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These arguments are also unpersuasive. The Examiner finds the
spacer 29 functions as a removable plate that includes a hole configured to
receive a linear segment of a micro probe, citing the cavity 15 depicted in
Figure 1 of Schmid (Final Act. 6; Ans. 7). The disclosure of Schmid
supports the Examiner’s finding by depicting a cavity 15 within the spacer
29 in Figure 1. Moreover, the Examiner finds claim 1 does not exclude the
U-shaped frame configuration disclosed for the spacer 29, which is depicted
in Figure 2 of Schmid (Ans. 7). We agree because claim 1 recites “wherein
one of said holes is configured to receive said linear segment of said one
micro probe” (Appeal Br. 9). This encompasses the spacer 29, which
receives a linear segment of a micro probe 20, as shown in Figure 1 of
Schmid. Further, Appellant cites no authority to support their argument
regarding the “standard definition of the word ‘hole.’”
Appellant contends the spacer 29 has only one hole, not a plurality of
holes, as recited in claim 1 for the removable plate (Reply Br. 2). This is
unpersuasive because there is a one-to-one relationship between holes and
micro probes in the device of Schmid, which is the same relationship
depicted in Figure 2 of Appellant’s disclosure. If multiple micro probes
exist in a device, such as in McQuade’s probe test head, it would have been
obvious to one of ordinary skill in the art to provide a hole for each micro
probe, as suggested by Schmid. As noted above, “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton” (KSR at 421)
and would not have been impeded by a modification that lies within their
level of skill.
Appellant further argues the removable plate of claim 1 is not
disclosed by McQuade or Schmid, and therefore the combination of
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McQuade and Schmid does not disclose this limitation (id. at 4). Appellant
also contends the guide element 4 of Schmid does not have a hole
configured to receive the micro probe at its angle stop (id. at 5).
“[T]he test for combining references is not what the individual
references themselves suggest but rather what the combination of disclosures
taken as a whole would suggest to one of ordinary skill in the art” (In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)). As stated by the
Examiner at pages 3—5 of the Examiner’s Answer, these arguments attack
the references individually and do not consider what the applied references,
as a whole, would have suggested to one of ordinary skill in the art. The
Examiner finds McQuade discloses a disc (i.e., lower die 1005) configured
to receive a linear segment of a micro probe at its angle stop and that Schmid
discloses a removable plate and provides a rationale for modifying McQuade
in view of Schmid, as discussed above. Appellant’s arguments do not
identity a reversible error in the Examiner’s rejection.
Claims 2—9 depend from claim 1 and have not been argued separately
from claim 1 (Appeal Br. 4—7).
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103 rejection of claims 1—9 over
McQuade and Schmid.
DECISION
The Examiner’s rejection of claims 1—9 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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