DETAILED ACTION
This office action is in response to the filing of the Applicant Amendment on 1/9/2026.
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 .
Claim Rejections - 35 USC § 103
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 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, 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.
Claims 1 – 2, 5, 12 – 13, 16, and 19 – 22 are rejected under 35 U.S.C. 103 as being unpatentable over Hays et al. (US 2010/0252403, as cited by Applicant on 3/2/2023) in view of Zhang et al. (US 6,934,129).
Regarding claim 1, Hays et al. teaches a micro-electromechanical system (MEMS) device, comprising (Figure 1):
a silicon substrate 102 (Paragraph 0018); and
a Tantalum layer 106 (Paragraph 0022) comprising a first portion and a second portion, a first portion 110 (Paragraph 0019) being suspended over the silicon substrate 102 and configured to move relative to the silicon substrate 102, and the second portion 108 being coupled to the silicon substrate 102 and fixed in place relative to the silicon substrate 102 (see also Paragraph 0021).
Hays et al. teaches that a tantalum layer 106 (Paragraph 0022) can be used for a MEMS device but does not teach an α-tantalum layer deposited on a seed layer. Zhang et al. teaches that α-tantalum is superior to β-tantalum (Column 2, Line 57 – 62) and it is deposited on a chromium seed layer 135 (Column 2, Line 51 – 52). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hays et al. such that the conductive layer is α-tantalum deposited a seed layer instead of tungsten since tantalum and tungsten are both well known refractory metals and also since it has been held that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), also see In re Leshin, 125 USPQ 416, (1960)). Please also see MPEP §2144.07. Furthermore, it is well known that α-tantalum is more stable and more conductive than to β-tantalum.
Regarding claim 2, Hays et al. teaches that the silicon substrate 102 forms a portion of an integrated circuit (IC) (see Paragraph 0012 – 0016), wherein the Tantalum layer 106 and the IC are included in a package (Paragraph 0033). See claim 1 for α-tantalum.
Regarding claim 5, Hays et al. shows that the first portion 110 comprises Tantalum, and wherein a sidewall profile of the etched Tantalum comprises approximately zero lateral etch or an etch angle between 85-90 degrees. Please note that “etched Tantalum”, “lateral etch”, and “etch angle” are product-by-process features. It has been held that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process" (In re Thorpe, 227 USPQ 964, 966, 1985, also MPEP § 2113).
Regarding claim 13, Hays et al. does not teach the grain size of the tantalum layer, however, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a grain size of 160 nm since doing so only involves the optimization of grain size. With respect to the limitations of Claim 13, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233 (CCPA 1955). It would have been obvious to one of ordinary skill in the art of MEMS devices to determine the workable or optimal value for the grain size through routine experimentation and optimization to obtain optimal or desired device performance because the grain size is a result-effective variable and there is no evidence indicating that it is critical or produce any unexpected results over the cited art and it has been held that it is not inventive to discover the optimum or workable ranges of a result- effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05. Note that the specification contains no disclosure of either the critical nature of the claimed grain size or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. An Affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)). See claim 1 for α-tantalum.
Regarding claim 16, Hays et al. teaches that the first portion of the Ta layer forms a portion of a thermal actuator (TA) (see Paragraph 0021). See claim 1 for α-tantalum.
Regarding claim 19, Hays et al. does not teach a chromium seed layer, however, Zhang et al. teaches that the seed layer can comprise chromium configured to nucleate a tantalum layer (Column 2, Line 51 – 65). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hays et al. to include a chromium seed layer in the manner taught by Zhang et al. since doing so promotes a better crystal structure of the tantalum layer.
Please note that “sputtering” is a product-by-process feature. It has been held that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process" (In re Thorpe, 227 USPQ 964, 966, 1985, also MPEP § 2113).
Regarding claim 20, Hays et al. teaches that the first portion 110 of the Ta layer forms a cantilever (Paragraph 0021). See claim 1 for α-tantalum.
Regarding claim 21, Hays et al. teaches the first portion of the Ta layer, but does not teach an accelerometer in that embodiment. Hays et al. teaches that accelerometer is a well known MEMS application (Paragraph 0002). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the first portion of the Ta layer in part of an accelerometer since it is common knowledge that MEMS cantilever structures can be used in accelerometers. See claim 1 for α-tantalum.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hays et al. (US 2010/0252403, as cited by Applicant on 3/2/2023) in view of Zhang et al. (US 6,934,129) as applied to claim 1, and further in view of Fleming (US 7,046,411).
Regarding claim 12, Hays et al. does not teach that the tantalum layer is formed directly on a CMOS circuit, however, Fleming teaches that it is well known to form MEMS devices directly on a CMOS circuit (Column 13, Line 1 – 7) without additional metal leads added for connecting the MEMS device to the CMOS circuit. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hays et al. such that the tantalum layer is formed directly on a CMOS circuit since doing so allows on to electrically contact the final device. See claim 1 for α-tantalum.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Hays et al. (US 2010/0252403, as cited by Applicant on 3/2/2023) in view of Zhang et al. (US 6,934,129) as applied to claim 1 above, and further in view of Kub et al. (US 2014/0110722).
Regarding claim 22, Hays et al. does not teach Al2O3 coating configured to provide oxidation resistance. Kub et al. teaches that aluminum oxide can be put on a substrate to provide protection (Paragraph 0074).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hays et al. such that Al2O3 is included to provide oxidation resistance in the manner as taught by Kub et al. since doing so would provide further protection to the substrate. Please note that atomic layer deposition is a product-by-process feature. It has been held that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process" (In re Thorpe, 227 USPQ 964, 966, 1985, also MPEP § 2113).
Claim(s) 1, 6 – 8, 10 – 11, 14, and 16 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2004/0166602) in view of Hays et al. (US 2010/0252403, as cited by Applicant on 3/2/2023) and Zhang et al. (US 6,934,129).
Regarding claim 1, Wang et al. teaches a micro-electromechanical system (MEMS) device, comprising (Figures 1 and 3A – 3D):
a semiconductor substrate (see Paragraph 0020); and
a conductive layer (Paragraph 0042 and also Paragraph 0014) comprising a first portion and a second portion, a first portion being suspended over the semiconductor substrate and configured to move relative to the semiconductor substrate (released portion of Figure 3D), and the second portion of the structure being coupled to the semiconductor substrate (portion anchored to substrate) and fixed in place relative to the semiconductor substrate.
Wang et al. does not teach that the semiconductor substrate is silicon. Hays et al. teaches that a silicon substrate 102 (Paragraph 0018) can be used to form MEMS devices. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Wang et al. such that the semiconductor substrate is a silicon substrate since silicon substrates are well known in the MEMS field and also since it has been held that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), also see In re Leshin, 125 USPQ 416, (1960)). Please also see MPEP §2144.07.
Wang et al. teaches that the conductive layer can be tungsten (Paragraph 0014) but does not teach α-tantalum deposited on a seed layer. Hays et al. teaches that a tantalum layer 106 (Paragraph 0022) can be used for a MEMS device. Furthermore, Zhang et al. teaches that α-tantalum is superior to β-tantalum (Column 2, Line 57 – 62) and is deposited on a seed layer 135 (Column 2, Line 51). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Wang et al. such that the conductive layer is α-tantalum on a seed layer instead of tungsten since tantalum and tungsten are both well known refractory metals and that it was well known that α-tantalum (formed on a seed layer) is the more electrically conductive and thermally stable form. Also it has been held that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), also see In re Leshin, 125 USPQ 416, (1960)). Please also see MPEP §2144.07.
Regarding claim 6, Wang et al. teaches the first portion comprising (Figure 1, Paragraph 0034): a plurality of legs extending from a first side of the silicon substrate or a second side of the silicon substrate to connect at a shuttle (shuttle is the tip at the center of the V electro-thermal actuator), the plurality of legs being coupled to the silicon substrate at the first and second sides, wherein the plurality of legs support an in-plane movement of the shuttle.
Regarding claim 7, Wang et al. teaches that at least one leg of the plurality of legs are each between 1-2.5 micrometers thick (Paragraph 0036), and wherein each of the plurality of legs have an approximately equal thickness (implied by Figures 1 and 3A – 3D).
Regarding claim 8, Wang et al. teaches that each of the plurality of legs have an approximately equal width (implied by Figures 1 and 3A – 3D).
Regarding claim 10, Wang et al. teaches no residual stress and a hydrofluoric acid release (Paragraph 0043). Furthermore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a residual stress of less than 50 MPa. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233 (CCPA 1955). It would have been obvious to one of ordinary skill in the art of making semiconductor devices to determine the workable or optimal value for the residual stress through routine experimentation and optimization to obtain optimal or desired device performance because residual stress is a result-effective variable and there is no evidence indicating that it is critical or produces any unexpected results and it has been held that it is not inventive to discover the optimum or workable ranges of a result- effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05. Note that the specification contains no disclosure of either the critical nature of the claimed ranges or any unexpected results arising therefrom. Where patentability is said to be based upon particular a variable recited in a claim, the Applicant must show that the chosen values are critical. An Affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)).
Regarding claim 11, Wang et al. teaches that the first portion comprises a central portion (shuttle, see claim 6) suspended over the silicon substrate and configured to move up to 5 microns responsive to an electrical or thermal input (see TABLE 1 and Paragraph 0037, where low thermal load would cause less displacement).
Regarding claim 14, Wang et al. teaches that the conductive layer is 2 microns thick but does not teach at least 2.5 microns thick. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a thickness of 2.5 microns since a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (MPEP § 2144.05 (I), Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)). Please see claim 1 for α-tantalum.
Regarding claim 16, Wang et al. teaches that the first portion of the conductive layer forms a portion of a thermal actuator (Paragraph 0012 and 0034). Please see claim 1 for tantalum.
Regarding claim 17, Wang et al. does not teach that the first portion is configured to deflect at least 1.5 microns in response to receiving a current of less than 15 mA based on a length, a width, or a thickness of the first portion of the conductive layer. Wang et al. teaches a deflection of at least 1.5 microns (see TABLE 1). Given that Applicant’s general claimed invention is taught by Wang et al. in view of Hays et al., it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have that the first portion is configured to deflect at least 1.5 microns in response to receiving a current of less than 15 mA based on a length, a width, or a thickness of the first portion of the tantalum layer since doing so only involves the optimization of the length, width, thickness, and angle of the first portion of the thermal actuator. With respect to the limitations of Claim 17, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233 (CCPA 1955). It would have been obvious to one of ordinary skill in the art of MEMS devices to determine the workable or optimal value for the said dimensions through routine experimentation and optimization to obtain optimal or desired device performance because the said dimensions are result-effective variables and there is no evidence indicating that it is critical or produce any unexpected results over the cited art and it has been held that it is not inventive to discover the optimum or workable ranges of a result- effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05. Note that the specification contains no disclosure of either the critical nature of the claimed dimensions or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. An Affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)).
See claim 1 for α-tantalum.
Regarding claim 18, Wang et al. does not teach that the first portion is configured to deflect at least 1 micron in response to receiving a temperature of about 100 degrees C based on a length, a width, or a thickness of the first portion of the conductive layer. Wang et al. teaches a deflection of at least 1.5 microns (see TABLE 1). Given that Applicant’s general claimed invention is taught by Wang et al. in view of Hays et al., it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have that the first portion is configured to deflect at least 1 micron in response to receiving a temperature of 100 degrees Celsius based on a length, a width, or a thickness of the first portion of the tantalum layer since doing so only involves the optimization of the length, width, thickness, and angle of the first portion of the thermal actuator. With respect to the limitations of Claim 18, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233 (CCPA 1955). It would have been obvious to one of ordinary skill in the art of MEMS devices to determine the workable or optimal value for the said dimensions through routine experimentation and optimization to obtain optimal or desired device performance because the said dimensions are result-effective variables and there is no evidence indicating that they are critical or produce any unexpected results over the cited art and it has been held that it is not inventive to discover the optimum or workable ranges of result- effective variables within given prior art conditions by routine experimentation. See MPEP § 2144.05. Note that the specification contains no disclosure of either the critical nature of the claimed dimensions or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. An Affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)).
See claim 1 for α-tantalum.
Claim(s) 3 – 4 /are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2004/0166602) in view of Hays et al. (US 2010/0252403, as cited by Applicant on 3/2/2023) and Zhang et al. (US 6,934,129) as applied to claim 1 above, and further in view of Currano et al. (US 2010/0308690).
Regarding claim 3, Wang et al. teaches a sacrificial layer (Figure 3B, SiO2) between the semiconductor substrate and the conductive layer, wherein a first portion of the sacrificial layer is etched away to release the first portion from the semiconductor substrate (Figure 3D). Wang et al. does not teach that a second portion of the sacrificial layer remains and couples the semiconductor substrate to the conductive layer. Currano et al. shows (Figure 6H) that a second portion of a sacrificial layer 16 can remain and couple a substrate 15 to a conductive layer 17 (Paragraph 0060). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Wang et al. such that a second portion of the sacrificial layer remains and couples the semiconductor substrate to the conductive layer in the manner as taught by Currano et al. since doing so would further ensure electrical isolation between the semiconductor substrate and the conductive layer. Please see claim 1 for silicon substrate and α-tantalum.
Regarding claim 4, Wang et al. teaches that the sacrificial layer comprises silicon oxide (Figure 3B).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2004/0166602) in view of Hays et al. (US 2010/0252403, as cited by Applicant on 3/2/2023) and Zhang et al. (US 6,934,129) as applied to claim 1 above, and further in view Fleming (US 7,046,411).
Regarding claim 9, Wang et al. teaches that at least one leg can have a width of 1 micron (TABLE 1). Wang et al. does not teach a plurality of legs and how they are spaced. Wang et al. only shows one leg pair, but does not teach a plurality of leg pairs. Fleming shows that it is well known to have a plurality leg pairs in an actuator (Figure 8, Column 10, Line 41 – 50). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Wang et al. to include a plurality of leg pairs in the manner as shown as Fleming since it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (In re Harza, 124 USPQ 378 (CCPA 1960)).
Wang et al. in view of Fleming does not appear to teach that the leg is spaced about 2 – 4 microns, however, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a spacing of about 2 – 4 microns since doing so only involves the optimization of the space between legs. With respect to the limitations of Claim 9, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233 (CCPA 1955). It would have been obvious to one of ordinary skill in the art of MEMS devices to determine the workable or optimal value for the spacing through routine experimentation and optimization to obtain optimal or desired device performance because the spacing is a result-effective variable and there is no evidence indicating that it is critical or produce any unexpected results over the cited art and it has been held that it is not inventive to discover the optimum or workable ranges of a result- effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05. Note that the specification contains no disclosure of either the critical nature of the claimed spacing or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. An Affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)).
Claims 23 – 27 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2004/0166602) in view of Hays et al. (US 2010/0252403, as cited by Applicant on 3/2/2023), Zhang et al. (US 6,934,129), and Fleming (US 7,046,411).
Regarding claim 23, Wang et al. teaches a micro-electromechanical system (MEMS) actuator device, comprising (Figures 1 and 3A- 3D):
a semiconductor substrate (Paragraph 0020); and
a conductive film forming a leg pair, the leg pair extending from a first side of the conductive film or a second side of the conductive film to a shuttle (tip in the center of Electro-Thermal Actuator) suspended above the semiconductor substrate, the first and second sides being affixed to the silicon substrate by at least one underlayer (SiN of Figure 3A), the leg pair being configured for in-plane deflection relative to the semiconductor substrate (Paragraph 0034).
Wang et al. does not teach that the semiconductor substrate is silicon. Hays et al. teaches that a silicon substrate 102 (Paragraph 0018) can be used to form MEMS devices. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Wang et al. such that the semiconductor substrate is a silicon substrate since silicon substrates are well known in the MEMS field and also since it has been held that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), also see In re Leshin, 125 USPQ 416, (1960)). Please also see MPEP §2144.07.
Wang et al. teaches that the conductive film can be tungsten (Paragraph 0014) but does not teach tantalum or α-Tantalum deposited on a seed layer. Hays et al. teaches that a tantalum layer 106 (Paragraph 0022) can be used for a MEMS device. Furthermore, Zhang et al. teaches that α-tantalum is superior to β-tantalum (Column 2, Line 57 – 62) and it is deposited on a seed layer (Column 2, Line 51 – 52) to promote the growth of α-tantalum. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Wang et al. such that the conductive layer is α-tantalum deposited on a seed layer instead of tungsten since tantalum and tungsten are both well known refractory metals and also since it has been held that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), also see In re Leshin, 125 USPQ 416, (1960)). Please also see MPEP §2144.07. Furthermore, it is well known that α-tantalum is more stable and more conductive than to β-tantalum.
Wang et al. only shows one leg pair, but does not teach a plurality of leg pairs. Fleming shows that it is well known to have a plurality leg pairs in an actuator (Figure 8, Column 10, Line 41 – 50). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Wang et al. to include a plurality of leg pairs in the manner as shown as Fleming since it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (In re Harza, 124 USPQ 378 (CCPA 1960)).
Regarding claim 24, Wang et al. teaches a variety of lengths and widths of the leg pair (TABLE 1). Wang et al. does not each the specific dimensions of 150 microns long, 2.5 microns thick, and 1 micron wide, and Wang et al. implies that such dimensions are optimizable (Paragraphs 0035 – 0036). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the claimed dimensions since doing so only involves that optimization of the length, width, and thickness. With respect to the limitations of Claim 24, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233 (CCPA 1955). It would have been obvious to one of ordinary skill in the art of MEMS devices to determine the workable or optimal value for the length, width, and thickness through routine experimentation and optimization to obtain optimal or desired device performance because those dimensions are result-effective variables and there is no evidence indicating that they are critical or produce any unexpected results over the cited art and it has been held that it is not inventive to discover the optimum or workable ranges of a result- effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05. Note that the specification contains no disclosure of either the critical nature of the claimed values or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. An Affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)). Please also see claim 23 for plurality of leg pairs.
Regarding claim 25, Wang et al. teaches shows that the leg pair comprises a sidewall profile having approximately no lateral etch (Figures 1 and 3A – 3D). Please see claim 23 regarding plurality of leg pairs.
Regarding claim 26, Wang et al. teaches that the underlayer comprises SiN (Paragraph 0040) but does not teach SiO2. Hays et al. teaches that a substrate can have a layer of SiO2 on the substrate (Paragraph 0018). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Wang et al. such that the underlayer comprises SiO2 since both SiO2 and SiN are well known insulators for semiconductor substrates and also since it has been held that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), also see In re Leshin, 125 USPQ 416, (1960)). Please also see MPEP §2144.07.
Please note that “thermal” and “sacrificial” are product-by-process features. It has been held that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process" (In re Thorpe, 227 USPQ 964, 966, 1985, also MPEP § 2113).
Regarding claim 27, Wang et al. teaches shows some offset values (TABLE 1) but does not specifically teach a 5 micron offset of the central shuttle in a deactivated position and up to a 10 micron offset of the central shuttle in an activated position. However, given that Wang et al. teaches multiple offset values, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the claimed deactivation offset value and activation offset value since doing so only involves that optimization of the length and angle of the leg pair with the shuttle. With respect to the limitations of Claim 27, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233 (CCPA 1955). It would have been obvious to one of ordinary skill in the art of MEMS devices to determine the workable or optimal value for the offset value at deactivation and activation through routine experimentation and optimization to obtain optimal or desired device performance because those dimensions are result-effective variables and there is no evidence indicating that they are critical or produce any unexpected results over the cited art and it has been held that it is not inventive to discover the optimum or workable ranges of a result- effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05. Note that the specification contains no disclosure of either the critical nature of the claimed ranges or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. An Affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)). Please also see claim 23 for plurality of leg pairs.
Claims 28 – 30 are rejected under 35 U.S.C. 103 as being unpatentable over Fleming (US 7,046,411) in view of Hays et al. (US 2010/0252403 as cited by Applicant) and Zhang et al. (US 6,934,129).
Regarding claim 28, Fleming et al. teaches a micro-electromechanical system (MEMS) device, comprising (Figure 3A, Column 5, Line 63 – Column 6, Line 35):
an insulating substrate 12 (see Column 5, Line 9);
a conductive structure 16/28 coupled to a first portion of the insulating substrate (near 22, Column 5, Line 7), a portion of the conductive structure 16/28 extending over a second portion of the insulating substrate and configured to move relative to the insulating substrate; and
a complementary metal-oxide-semiconductor (CMOS) structure formed in the insulating substrate, the CMOS structure being electrically coupled to the conductive structure Column 12, Line 54 – Column 13, Line 7).
Fleming does not teach that the insulating substrate is an oxide substrate. Hays et al. teaches that a substrate can have a layer of SiO2 on the substrate (Paragraph 0018). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Wang et al. such that the underlayer comprises SiO2 since both SiO2 and SiN are well known insulators for semiconductor substrates and also since it has been held that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), also see In re Leshin, 125 USPQ 416, (1960)). Please also see MPEP §2144.07.
Fleming teaches that the conductive structure can be tungsten (Column 5, Line 2) and does not teach that the conductive structure is α-tantalum. Hays et al. teaches that a tantalum layer 106 (Paragraph 0022) can be used for a MEMS device. Furthermore, Zhang et al. teaches that α-tantalum is superior to β-tantalum (Column 2, Line 57 – 62) and it is deposited on a seed layer (Column 2, Line 51 – 52) to promote the growth of α-tantalum. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Fleming such that the conductive structure is α-tantalum on a see layer instead of tungsten since tantalum and tungsten are both well known refractory metals and also since it has been held that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), also see In re Leshin, 125 USPQ 416, (1960)). Please also see MPEP §2144.07.
Regarding claim 29, Fleming et al. teaches that the conductive structure can form
a comb (Figure 3A). Please see claim 28 for tantalum. See claim 28 for α-tantalum.
Regarding claim 30, Fleming et al. teaches a fixed-fixed beam as elements 16 are anchored on the ends (Column 5, Line 4 – 5). See claim 30 for α-tantalum.
Response to Arguments
Applicant's arguments filed 1/9/2026 have been fully considered but they are not persuasive.
Applicant’s details regarding the differences between α-tantalum and β-tantalum is appreciated. Although it is understood that depositing α-tantalum requires a seed layer, it is believed that one having ordinary skill in the art would understand this and be able to make a MEMS element with α-tantalum and a seed layer. Many metals use seed layers and this is not outside of his/her skill. Zhang et al. teaches seed layers for α-tantalum (see at least claim 1 above). Fartash (US 2005/0233159) also teaches using seed layers to form α-tantalum as opposed to β-tantalum (at least Paragraphs 0009 – 0011). Applicant has not established why one having ordinary skill in the art would not at least try using α-tantalum. For these reasons, Applicant’s arguments were not found persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SUN MI KIM KING/Examiner, Art Unit 2813
/STEVEN B GAUTHIER/Supervisory Patent Examiner, Art Unit 2813
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