Ex Parte McTigue

Board of Patent Appeals and Interferences

Apr 8, 2011

11227943 (B.P.A.I. Apr. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL T. McTIGUE
____________

Appeal 2009-009906
Application 11/227,943
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 of the Final Rejection of
claims 1-20. See Appeal Brief 3. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). We affirm-in-part.

Exemplary Claim
1. A probe assembly, comprising:
a probe head having a probe tip, wherein the probe tip includes a zero
insertion force (ZIF) electrical connector.

Rejections on Appeal1
Claims 1, 3-5, 8, 9, 14, and 17-20 stand rejected under 35 U.S.C. §
102(b) as being unpatentable over U.S. Patent 5,953,214 to Dranchak et al.
(Dranchak).
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
unpatentable over U.S. Patent 3,437,929 to Glenn (Glenn).
Claims 1, 3-5, 9, 11, 14, 18, and 19 stand rejected under 35 U.S.C. §
102(b) as being unpatentable over U.S. Patent 5,092,789 to Sinclair
(Sinclair).
Claims 2, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Glenn and U.S. Patent 2,542,478 to Clark (Clark).
Claims 9-13, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Clark, Glenn, U.S. Patent 4,623,984 to Yokokawa

1 The 35 U.S.C § 112, second paragraph, rejection of claims 1-20 was
withdrawn by the Examiner. See Answer 2.
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et al. (Yokokawa), and U.S. Patent 5,172,051 to Zamborelli et al.
(Zamborelli).

Appellant’s Contentions
1. Appellant contends that Dranchak fails to disclose a probe head, a probe
tip, and a ZIF connector in a probe assembly (Appeal Brief 7). Appellant
further contends that the Office action relies upon the tail 34 of the
conductor 31 disclosed in Dranchak as a probe tip which is associated with a
electronic package assembly having a beneficial thermal expansion
coefficient and therefore there is no disclosure of a probe head, a probe tip, a
ZIF connector, or a probe tip comprising a ZIF connector. Id.
2. Appellant contends that Glenn does not discloses a probe assembly
having a ZIF electrical connector as claimed but Glenn discloses a plurality
of probing heads 61 mounted to a mounting ring 63 (Appeal Brief 8).
Appellant further contends that the probe tip relied upon by the Examiner is
merely a tungsten carbide rod which is used to directly contact wafers and
therefore there is no disclosure of a probe tip including a ZIF connector.
3. Appellant contends that assuming arguendo that Sinclair discloses pins
180, arms 194 (the probe head), and a test socket (10) that comprised the
claimed ZIF connector, the probe tip does not comprise the test socket 10
but rather mates with the test socket (Appeal Brief 9). Therefore Appellant
concludes that the probe tip as argued by the Examiner does not comprise
the ZIF connector. Id.
4. Appellant contends that the obviousness rejection under 35 U.S.C. §
103(a) of dependent claims 2, 6, and 7 in view of Glenn and Clark and the
obviousness rejection under 35 U.S.C. § 103(a) of claims 9-13, 15, and 16 in
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view of Glenn, Clark, Yokokawa, and Zamborelli are patentable over the
applied art for the same reasons as provided for claim 1 in view of Glenn
(Appeal Brief 10).

PRINCIPLES OF LAW
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).
“‘For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference.’” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (quoting
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677 (Fed. Cir.
1988)). “These elements must be arranged as in the claim under review,” id.
(citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730
F.2d 1452, 1458 (Fed. Cir. 1984)), “but this is not an ‘ipsissimis verbis’
test,” id. at 832-33 (citing Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d
1471, 1479 & n.10 (Fed. Cir. 1986)).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner can satisfy this test by showing some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing Kahn, 441
F.3d at 988).

Issues on Appeal
Did the Examiner err in rejecting claims 1, 3-5, 8, 9, 11, 14, and 17-20
as being unpatentable because the reference fails to disclose a probe
assembly having a ZIF connector?
Did the Examiner err in rejecting claims 2, 6, 7, 9-13, 15, and 16 as
being obvious because the references fail to teach or suggest a probe
assembly having a ZIF connector having an amplifier?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief 4-11) that the Examiner has erred.
We disagree with Appellant’s conclusion in regard to contentions 1
and 3. We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which the appeal is taken and (2) the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellant’s
Appeal Brief.
Appellant contends that Dranchak does not disclose a probe head, a
probe tip, and a ZIF connector in a probe assembly (Appeal Brief 7).
However, as the Examiner has indicated, Dranchak discloses a probe tip (34)
of a conductor (31), and when inserted into one of the individual elements
(41) with both opening arms, the probe tip would include or comprise a ZIF
connector as claimed (Answer 10). Appellant has not provided a persuasive
argument as to why the Examiner’s position is incorrect. Accordingly, we
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will sustain the Examiner’s rejection of claims 1, 3-5, 8, 9, 14, and 17-20
over Dranchak.
Appellant also contends that, assuming that Sinclair discloses pins
180, arms 194 (the probe head), and a test socket (10) that comprises the
claimed ZIF connector, the probe tip does not comprise the test socket 10
but rather mates with the test socket (Appeal Brief 9). However, as the
Examiner indicated, Sinclair discloses a base member (14) which is part of
the socket (10) having an electrical connector/probe head (180, 184, 194,
and 196) that includes a ZIF connector (188, 190) (Answer 9). Appellant’s
arguments are not persuasive because the language of claim 1 does not
preclude the “mating” of the socket with the probe tip. Appellant has not
persuasively argued that the claim language distinguishes over Sinclair.
Accordingly, we will sustain the Examiner’s rejection of claims 1, 3-5, 9, 11,
14, 18, and 19 over Sinclair.
We agree with Appellant’s conclusion in regard to contentions 2 and
4. Appellant asserts that there is no disclosure of a probe tip including a ZIF
connector (Appeal Brief 8). Appellant further argues that the head (124) and
the screws (128) are not disclosed as being a ZIF connector and that the head
is disclosed as being “electrically isolated” from the remainder of the
machine. Id. We disagree with the Examiner’s finding that Glenn discloses
a ZIF connector because the screw (128) is tightened up in order for the head
(124) to hold the probe (126) in place (Answer 11). The Examiner
concludes that the operation of the screw (128) and the head (124) would be
qualified and equivalent to a ZIF connector; however, Glenn is silent in
regards to a ZIF connector and the Examiner fails to provide support for his
finding that the screw head and the head is equivalent to a ZIF connector.
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See id. Accordingly, we will not sustain the Examiner’s rejection of claim 1
over Glenn.
Further, neither Clark, Yokokawa, nor Zamborelli discloses a ZIF
connector and therefore none of the references addresses the deficiency of
the Glenn reference. Therefore, we will not sustain the Examiner’s
rejections of claims 2, 6, 7, 9-13, 15, and 16.

CONCLUSIONS
The Examiner has not erred in rejecting claims 1, 3-5, 8, 9, 14, and
17-20 over Dranchak.
The Examiner has not erred in rejecting claims 1, 3-5, 9, 11, 14, 18,
and 19 over Sinclair.
The Examiner has erred in rejecting claim 1 as being over
unpatentable over Glenn.
The Examiner has erred in rejecting claims 2, 6, 7, 9-13, 15, and 16 as
being unpatentable over the combination of Glenn, Clark, Yokokawa, and
Zamborelli under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejections of claims 1, 3-5, 8, 9, 11, 14, and 17-20
under 35 U.S.C. § 102(b) are affirmed. The Examiner’s rejections of claims
2, 6, 7, 10, 12, 13, 15, and 16 under 35 U.S.C. § 103(a) are reversed.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
Appeal 2009-009906
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