Ex Parte Amemiya et al

Patent Trial and Appeal Board

Nov 26, 2013

11630004 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/630,004 09/10/2007 Takashi Amemiya 07553.0069 9699
22852 7590 11/26/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
CAMPBELL, SHAUN M
ART UNIT PAPER NUMBER
2829
MAIL DATE DELIVERY MODE
11/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKASHI AMEMIYA, HISATOMI HOSAKA,
TOSHIHIRO YONEZAWA and SYUICHI TSUKADA
____________

Appeal 2011-0009192
Application 11/630,004
Technology Center 1700
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appeal 2011-009192
Application 11/630,004

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-3, 7, and 10-13. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention relates to a probe card mounted in a prober via a
holder, the probe card including: a contactor; a circuit board electrically
connected to the contactor; a reinforcing member reinforcing the circuit
board; and a parallelism adjustment mechanism which adjusts a degree of
parallelism between the contactor and an inspection object disposed in the
prober. (Spec. 5). Claim 1 is illustrative:
1. A probe card mounted in a prober via a holder, the
probe card comprising:
a contactor including a plurality of probes;
a circuit board having a first planar surface and a second
planar surface opposite the first planar surface, the first planar
surface being electrically connected to said contactor;
a reinforcing member in direct contact with at least a
center portion and an outer peripheral edge portion of the
second planar surface of said circuit board and reinforcing said
circuit board; and
a parallelism adjustment mechanism which adjusts a
degree of parallelism between said contactor and an inspection
object disposed in the prober by moving a portion including
said contactor and said circuit board as a unit.

Appellant (App. Br. 9) requests review of the following rejections
from the Examiner’s final office action:

Appeal 2011-009192
Application 11/630,004

3
Claims 1-3, 7, 10, 11, and 13 rejected under 35 U.S.C. § 103(a) as
unpatentable over Yu (U.S. Patent No. 6,762,612); and claim 12 rejected
under 35 U.S.C. § 103(a) over Yu in view of Nam (U.S. Patent No.
5,850,148).

OPINION
The dispositive issue on appeal is: Did the Examiner err in
determining that Yu provides for a reinforcing member in direct contact with
at least a center portion and an outer peripheral edge portion of the second
planar surface of a circuit board and reinforcing said circuit board as
required by independent claim 1? 1
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM for the reasons presented by the Examiner and add
the following for emphasis.
Appellant’s primary argument is that the Examiner has
mischaracterized the Yu reference and the ability of probe card 60 to
function as a reinforcing member for reinforcing the circuit board. (App. Br.
10-12). Appellant argues probe card 60 is only transmits inspection signals
to contactors 30 via the conductive elastomer sheet 50 and therefore is not
capable of reinforcing conductive elastomer sheet 50. App. Br. 11.
Appellant argues that Yu’s stiffener ring 244 which serves to reinforce probe

1 Appellant has not presented arguments directed to any particular claim on
appeal. Appellant also has not substantively argued separately rejected
claims 12. We select claim 1 as representative of the rejected claims and
will limit our discussion to this claim. A discussion of Nam is unnecessary
for our disposition of this appeal.
Appeal 2011-009192
Application 11/630,004

4
card 60 is evidence that probe card 60 is unable to reinforce sheet 50. App.
Br. 11.
It is not disputed that Yu’s Fig. 6 depicts probe card 60 in direct
contact with the upper surface of the conductive elastomer sheet 50, which
the Examiner has found to be a circuit board. 2 (Ans. 5). It is well
established that the PTO must give claims their broadest reasonable
construction consistent with the specification. Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation. See In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee” (Id.). Appellant has not directed us
to portions of the Specification that adequately disclose the degree of
reinforcement that is required by the reinforcing member. Appellant (Reply
Br. 2) argues Specification p. 10, ll. 15-26 and p. 21, ll. 8-21, provides a
description of how “reinforcing member” and “reinforcing” are used in the
present invention. The cited portions of the Specification describe
preventing the printed wiring board from deforming “as much as possible”
due to a thermal influence. The cited descriptions do not establish an
acceptable degree of reinforcement that is required by the reinforcing
member. 3 Appellant has not established that probe card 60 does not provide

2 The Examiner found that Yu’s elastomer sheet 50 has electrical pathways
that connect the contactor to the probe card and therefore would have
rendered obvious a “circuit board.”f Ans. 5. Appellant has not substantively
challenged the Examiner’s finding.
3 Moreover, Appellant has not previously argued in the principal Brief that
the claimed invention requires reinforcement due to thermal influence.
Appeal 2011-009192
Application 11/630,004

5
some reinforcement to sheet 50. Contrary to Appellant’s argument, the fact
that Yu’s stiffener ring 244 serves to reinforce probe card 60 does not
establish that probe card 60 does not provides some degree of reinforcement
to sheet 50.
It is further noted that the prior art shown in Fig. 8 of the present
Specification establishes it was known to persons of ordinary skill in the art
to use a reinforcing member in direct contact with a printed wiring board.
(Spec. [0005]).
Accordingly, we affirm the Examiner’s obviousness determination for
the reasons given above and presented by the Examiner.
ORDER
The rejection of claims 1-3, 7, 10, 11, and 13 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yu (U.S. Patent No. 6,762,612); and claim 12
rejected under 35 U.S.C. § 103(a) over Yu in view of Nam are affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED

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