The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Election/Restrictions
1. Applicant's election, without traverse, of Group II (claims 1-16) in the “Response to Restriction Requirement” filed on 01/05/2026 is acknowledged and entered by the Examiner.
Applicant’s arguments, in “Applicant Arguments/Remarks Made” with the reply “Response to Election / Restriction Filed” filed on 01/05/2026”, see “However, Applicant again respectfully traverses the restriction within species of Group II. The Restriction Requirement stated that the species “mutually exclusive species, as Species II claims a composition of material only, whereas Species I is a device claim.” However, different categories of claims do not make the claims mutually exclusive. For example, claim X could claim a particular composition of matter, and claim Y could claim a device comprising the composition of matter of claim X. Those claims would, of course, not be mutually exclusive. As such, the Restriction Requirement did not explain what, if any, difference there is in the actual claims that renders them mutually exclusive” (remarks on page 1) have been fully considered.
The examiner has found the Applicant’s arguments to be persuasive. Therefore, the Species restriction requirement between claims 1-10 and 11-16 as set forth in the Office action mailed on 11/04/2025 is hereby withdrawn.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a combination or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 122, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01
This office action consider claims 1-20 pending for prosecution, wherein claims 17-20 are withdrawn from further consideration, and claims 1-16 are presented for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
2. Claim 2 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding Claim 2, the instant claim recites limitations in view of the parent device claim 1, wherein the metes and bounds of the claimed method are vague and ill-defined as a result of uncertainty in the different boundaries and new limitations “wherein the substrate comprises a plurality of contact pads, the device further comprising: an interposer comprising the gallium mixture filling the one or more channels, wherein the gallium mixture forms a plurality of liquid metal interconnects, wherein individual liquid metal interconnects of the plurality of liquid metal interconnects are adjacent an contact pad of the plurality of contact pads; and a cap layer that seals the plurality of liquid metal interconnects” (Claim 2; emphasis added). The claim is indefinite because of the following:
i) The claim is indefinite because “wherein the substrate comprises a plurality of contact pads, the device further comprising: an interposer comprising the gallium mixture filling the one or more channels, wherein the gallium mixture forms a plurality of liquid metal interconnects, wherein individual liquid metal interconnects of the plurality of liquid metal interconnects are adjacent an contact pad of the plurality of contact pads; and a cap layer that seals the plurality of liquid metal interconnects” (Claim 2) is ambiguous and unclear. It is not clear how an interposer comprises the gallium mixture filling the one or more channels when the gallium mixture fills one or more channels defined on the substrate (see claim 1). Therefore, the limitation of “wherein the substrate comprises a plurality of contact pads, the device further comprising: an interposer comprising the gallium mixture filling the one or more channels, wherein the gallium mixture forms a plurality of liquid metal interconnects, wherein individual liquid metal interconnects of the plurality of liquid metal interconnects are adjacent an contact pad of the plurality of contact pads; and a cap layer that seals the plurality of liquid metal interconnects” (Claim 2) is indefinite and unclear.
The specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, whereby the claims are rendered indefinite. Therefore, the resulting claim is indefinite and is failing to particularly point out and distinctly claim the subject matter. Appropriate clarification and/or correction are/is required within metes and bounds of the claimed invention.
As there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of the claim, it would not be proper for the examiner to reject such a claim on the basis of prior art. See MPEP § 706 and MPEP § 2173.II (second) wherein In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Claim Rejections - 35 USC § 103
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 of this title, 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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (30A; Fig 2B; [0128]) = (element 30A; Figure No. 2B; Paragraph No. [0128]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
3. Claims 1-16 are rejected under 35 U.S.C.103 as being unpatentable over Oh et al. (US 20180305563 A1; hereinafter Oh), in view of the following statement(s).
Regarding claim 1, Oh teaches a device (see the entire document, specifically Fig. 1+; [0005+], and as cited below), comprising:
a substrate (1; Fig. 4; [0049]); and
a gallium mixture (10; Fig. 4; [0007, 0039-0044]) filling one or more channels (3; Fig. 4; [0049]) defined on the substrate (1; Fig. 4; [0049]), wherein the gallium mixture comprises gallium (13; Fig. 4; [0039-0044]) and a plurality of fine particles (11; Fig. 4; [0039-0044]) that make up (see below for “10-50%”) of the gallium mixture (10; Fig. 4; [0007, 0039-0044]) by volume.
While Oh does not expressly disclose a plurality of fine particles that make up 10-50% of the gallium mixture, some if its values fall within the claim range of a plurality of fine particles that make up 10-50% of the gallium mixture, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05, I.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to enable using “a liquid metal mixture including a polymer powder of about 10 to about 90 wt %; and a liquid metal included in an amount of about 10 to about 90 wt % and covering surfaces of particles of the polymer powder” ([0007, 0039-0044]), as disclosed in prior art Oh , to arrive at the recited limitation of wherein the gallium mixture comprises gallium (13; Fig. 4; [0007, 0039-0044]) and a plurality of fine particles (11; Fig. 4; [0007, 0039-0044]) that make up 10-50% of the gallium mixture (10; Fig. 4; [0007, 0039-0044]) by volume (see [0007, 0039-0044]; where some of the values from a range of 10-50%, specifically 10-50%, are within the claimed range; see MPEP § 2144.05.I).
Regarding claim 2, Oh teaches all of the features of claim 1.
Oh further teaches wherein the substrate comprises a plurality of contact pads, the device further comprising: an interposer comprising the gallium mixture filling the one or more channels, wherein the gallium mixture forms a plurality of liquid metal interconnects, wherein individual liquid metal interconnects of the plurality of liquid metal interconnects are adjacent an contact pad of the plurality of contact pads; and a cap layer that seals the plurality of liquid metal interconnects (see section 2, above; 112(b) rejection).
Regarding claim 3, Oh teaches all of the features of claim 1.
Oh further teaches wherein the one or more channels (3; Fig. 4; [0049]) comprises (see below for “at least 1,000 channels”).
Furthermore, although Oh does not expressly disclose wherein the one or more channels (3; Fig. 4; [0049]) comprises at least 1,000 channels, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) See MPEP § 2144.04 VI. B.
Regarding claim 4, Oh teaches all of the features of claim 3.
Oh further teaches wherein the device is a processor ([0003-0004]).
Regarding claim 5, Oh teaches all of the features of claim 1.
Oh further teaches wherein individual fine particles of the plurality of fine particles (11; Fig. 4; [0039-0044]) have a size between 50 and 10,000 nanometers ([0040]; 50 μm; where some of the values from a range of 50 and 10,000 nanometers, specifically 50 μm, are within the claimed range; see MPEP § 2144.05.I) (see below for “in each of three orthogonal dimensions”).
As noted above, Oh does not expressly disclose “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions). Also, the Applicant has not shown that “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Therefore, no rationale is given that the invention will not function without “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions”. Thus, the claimed “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” is significant. Thus, the claimed limitation of “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” is not patentable over Oh.
Regarding claim 6, Oh teaches all of the features of claim 1.
Oh further teaches wherein individual particles of the plurality of fine particles (11; Fig. 4; [0039-0044]) comprise oxygen (see [0039, 0042]; gallium oxide bonded to polar functional group of the polymer 11; see [0039] for composition of polymer 11).
Regarding claim 7, Oh teaches all of the features of claim 1.
Oh further teaches wherein individual particles of the plurality of fine particles (11; Fig. 4; [0039-0044]) comprise oxygen and gallium (see [0039, 0042]; gallium oxide bonded to polar functional group of the polymer 11; see [0039] for composition of polymer 11).
Regarding claim 8, Oh teaches all of the features of claim 1.
Oh further teaches wherein individual particles of the plurality of fine particles (11; Fig. 4; [0039-0044]) (see below for “comprise nitrogen”).
In regards to wherein individual particles of the plurality of fine particles comprise nitrogen, the instant specification contains no disclosure of either the critical nature of the claimed “wherein individual particles of the plurality of fine particles comprise nitrogen” or of any unexpected results arising therefrom. Where patentability is aid to be based upon particular chosen compositions or upon another variable recited in a claim, the applicant must show that the chosen compositions are critical. (.In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).).
Regarding claim 9, Oh teaches all of the features of claim 1.
Oh further teaches wherein individual particles of the plurality of fine particles (11; Fig. 4; [0039-0044]) (see below for “comprise aluminum”).
In regards to wherein individual particles of the plurality of fine particles comprise aluminum, the instant specification contains no disclosure of either the critical nature of the claimed “wherein individual particles of the plurality of fine particles comprise aluminum” or of any unexpected results arising therefrom. Where patentability is aid to be based upon particular chosen compositions or upon another variable recited in a claim, the applicant must show that the chosen compositions are critical. (.In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).).
Regarding claim 10, Oh teaches all of the features of claim 1.
Oh further teaches wherein the gallium mixture (10; Fig. 4; [0007, 0039-0044]) comprises an alloy of gallium, indium, and tin ([0041]).
Regarding claim 11, Oh teaches a composition (see the entire document, specifically Fig. 1+; [0005+], and as cited below), comprising:
gallium (10; Fig. 4; [0007, 0039-0044]); and
a plurality of fine particles (11; Fig. 4; [0007, 0039-0044]) making up 10-50% of the composition by volume ([0007, 0039-0044]).
Regarding claim 12, Oh teaches all of the features of claim 11.
Oh further teaches wherein individual fine particles of the plurality of fine particles (11; Fig. 4; [0039-0044]) have a size between 50 and 10,000 nanometers ([0040]; 50 μm; where some of the values from a range of 50 and 10,000 nanometers, specifically 50 μm, are within the claimed range; see MPEP § 2144.05.I) (see below for “in each of three orthogonal dimensions”).
As noted above, Oh does not expressly disclose “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions). Also, the Applicant has not shown that “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Therefore, no rationale is given that the invention will not function without “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions”. Thus, the claimed “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” is significant. Thus, the claimed limitation of “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein individual fine particles of the plurality of fine particles have a size between 50 and 10,000 nanometers in each of three orthogonal dimensions” is not patentable over Oh.
Regarding claim 13, Oh teaches all of the features of claim 11.
Oh further teaches Oh further teaches wherein individual particles of the plurality of fine particles (11; Fig. 4; [0039-0044]) comprise oxygen (see [0039, 0042]; gallium oxide bonded to polar functional group of the polymer 11; see [0039] for composition of polymer 11).
Regarding claim 14, Oh teaches all of the features of claim 11.
Oh further teaches wherein individual particles of the plurality of fine particles (11; Fig. 4; [0039-0044]) comprise oxygen and gallium (see [0039, 0042]; gallium oxide bonded to polar functional group of the polymer 11; see [0039] for composition of polymer 11).
Regarding claim 15, Oh teaches all of the features of claim 11.
Oh further teaches wherein individual particles of the plurality of fine particles (11; Fig. 4; [0039-0044]) (see below for “comprise aluminum”).
In regards to wherein individual particles of the plurality of fine particles comprise aluminum, the instant specification contains no disclosure of either the critical nature of the claimed “wherein individual particles of the plurality of fine particles comprise aluminum” or of any unexpected results arising therefrom. Where patentability is aid to be based upon particular chosen compositions or upon another variable recited in a claim, the applicant must show that the chosen compositions are critical. (.In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).).
Regarding claim 16, Oh teaches all of the features of claim 11.
Oh further teaches wherein the composition (Fig. 4; [0007, 0039-0044]) comprises an alloy of gallium, indium, and tin ([0041]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Omar Mojaddedi whose telephone number is 313-446-6582. The examiner can normally be reached on Monday – Friday, 8:00 a.m. to 4:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Julio J. Maldonado, can be reached on 571-272-1864. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMAR F MOJADDEDI/Examiner, Art Unit 2898
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