DETAILED ACTION
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the (1) “the at least one intermediate layer also providing a frame that encircles the MEMS resonant structure” (claims 2, 12, and 13) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Regarding (1), in FIG. 40, for example, the intermediate layer 54 does not appear to “encircle” a structure, but rather lies between the second substrate 14b and first substrate 1a.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2, 12, and 13 are objected to because of the following informalities: in line 5 of claim 2, there appears to be a typographical error in the limitation “defined”. The same applies to claims 12, and 13. Appropriate correction is required.
In line 4 of claim 2, there appears to be a typographical error before the limitation “intermediate layer.” The same applies to claims 12, and 13. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 thru 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The specification does not describe the “at least one intermediate layer comprising a semiconductor layer patterned”. For example, in paragraph [0182] of the specification, the applicant states the intermediate layer being a native oxide layer that is contained between two semiconductor substrate 14b/14a, rather than a “semiconductor layer.” Also, the specification does not describe at least one intermediate layer being “patterned.” The same applies to claims 12, and 13. A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).
Further, the specification does not describe “the at least one intermediate layer also providing a frame that encircles the MEMS resonant structure.” For example, in FIG. 40, the applicant describes the multiple layers such as layers 14c, 14b, 54, 14a, but none of these layers actually “encircles” the MEMS resonant structure. Further, the specification does not provide further clarification as the specification never uses the term “encircles”. The same applies to claims 12, and 13.
Claims 2 thru 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In lines 2-4 of claim 2, the applicant states limitation “the at least one intermediate layer comprising a semiconductor layer patterned to defined a microelectromechanical systems (MEMS) resonant structure, the at least one intermediate layer also providing a frame that encircles the MEMS resonant structure;”; however, the limitation is contradictory as the intermediate layer is “defined a microelectromechanical systems (MEMS) resonant structure” and then states the intermediate layer “providing a frame that encircles the MEMS resonant structures.” In other words, as the claim is currently written, it is unclear how the intermediate layer is the resonant structure and then the intermediate layer encircles resonant structure. Appropriate clarification and/or correction are required. The same applies to claims 12, and 13.
In line 10 of claim 2, the applicant states “one or more electrical contacts on an exterior of said device”; however, it appears (see, for example, FIG. 40) that the electrical contacts 34 are part of the structure of the device 10. Appropriate clarification and/or correction are required. The same applies to claim 12.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
In view of the 112 rejection, claim(s) 13 is/are rejected under pre-AIA 35 U.S.C. 102 (b) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over Partridge et al. US 2004/0245586 A1. Partridge discloses (see, for example, FIGURE 14B, and 10C) a device 12 comprising a first substrate 28a, second substrate 14, and intermediate layer 20a-20d. In paragraph [0043], Partridge discloses the intermediate layer 20a-20d includes silicon (i.e. semiconductor layer). In paragraph [0067], Partridge discloses the device 12 may on a well-prepared base upon which integrated circuits, CMOS transistors (i.e. substrate supporting at least one complementary metal oxide semiconductor (CMOS) device). Because of the 112 rejection, it would have been obvious to one of ordinary skill in the art to have the at least one intermediate layer comprising a semiconductor layer patterned to defined a microelectromechanical systems (MEMS) resonant structure, the at least one intermediate layer also providing a frame that encircles the MEMS resonant structure in order to protect the MEMS resonant structure and provide a chamber for producing output signals.
In view of the 112 rejection, claim(s) 2 thru 12 is/are rejected under pre-AIA 35 U.S.C. 102 (b) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over Najafi et al. US 2004/0152229 A1. Najafi discloses (see, for example, Fig. 2) a device comprising a first substrate 10’, second substrate 12’, intermediate layer 22’, electrical contact 20’, and interior chamber 30. In claim 5, Najafi discloses the intermediate layer 22’ includes doped-semiconductor (i.e. semiconductor layer). In the abstract, Najafi discloses the device being a vacuum or hermetic packaged micromachined or MEMS device. Because of the 112 rejection, it would have been obvious to one of ordinary skill in the art to have the at least one intermediate layer comprising a semiconductor layer patterned to defined a microelectromechanical systems (MEMS) resonant structure, the at least one intermediate layer also providing a frame that encircles the MEMS resonant structure in order to protect the MEMS resonant structure and provide a chamber for producing output signals.
Regarding claims 3-11, see the 112 rejection above.
Regarding claim 12, see, for example, Fig. 2 wherein Najafi discloses a method comprising a providing a first substrate 10’, forming at least intermediate layer 22’, forming microelectromechanical systems resonant structure 22’, chamber 30, second substrate 12’, and electrical contacts 20’. In Fig. 2, Najafi discloses the cavities 30 being etched (i.e. patterning) in the intermediate layer 22’.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
In view of the 112 rejection above, claims 2 thru 12 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Felton et al. US 2005/0262929 A1 in view of Partridge et al. US 2004/0245586 A1. Felton discloses (see, for example, FIG. 3) a device 10 comprising a first substrate 14, second substrate 38, intermediate layer 12, microelectromechanical systems resonant structure 30, chamber 28, and electrical contacts 40. In FIG. 3, Felton discloses the intermediate layer providing a frame that encircles the MEMS resonant structure 30. In paragraph [0030], Felton discloses the interior chamber 28 provides a hermetic seal. In paragraph [0031], Felton discloses the electrical signals may be transmitted between the microelectromechanical systems resonant structure 30, and some external device via the electrical paths 18. Felton does not clearly disclose the intermediate layer 12 being a semiconductor layer. However, Partridge discloses (see, for example, FIG. 14B) a device comprising an intermediate layer 28a. In paragraph [0047], Partridge discloses the intermediate layer 28a may include materials such as semiconductor. It would have been obvious to one of ordinary skill in the art to have the intermediate layer being a semiconductor layer in order to have a surface that adequately supports electrical contacts, and protects the microelectromechanical system resonant structure, and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claims 3-11, see the 112 rejection above.
Regarding claim 12, see, for example, FIG. 3 wherein Felton discloses a method comprising a providing a first substrate 14, forming at least intermediate layer 12, forming microelectromechanical systems resonant structure 30, chamber 28, second substrate 14, and electrical contacts 40. In paragraph [0048], Felton discloses the cavities 26 are etched (i.e. patterning) in the intermediate layer 12. Also see the rejection for claim 2 above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
In view of the 112 rejection, claims 2 thru 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. US 9,440,845 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the structural limitations disclosed in the applications are the same and any differences appear slight and would appear to be obvious modifications to one of ordinary skill in the art. For example, claim 1 of the application contains variations of claim 8 of U.S. Patent No. 9,440,845 B2 wherein the differences appear slight and would have been obvious modifications to one of ordinary skill in the art. The same applies to applicant’s claims 3-11 which contain variations of claims 1-10 of U.S. Patent No. 9,440,845 B2 wherein the differences are slight and would have been obvious modifications ton one of ordinary skill in the art.
In view of the 112 rejection, claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. US 8,871,551 B2 in view of Partridge et al. US 2004/0245586 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because the structural limitations disclosed in the applications are the same and any differences appear slight and would appear to be obvious modifications to one of ordinary skill in the art. For example, claim 12 of the application contains variations of claim 1 of U.S. Patent No. 8,871,551 B2 wherein the differences appear slight and would have been obvious modifications to one of ordinary skill in the art. U.S. Patent No. US 8,871,551 B2 does not clearly disclose forming one or more electrical contacts on an exterior of said device. However, Partridge discloses (see, for example, FIG. 14B) a method comprising forming electrical contacts 52. It would have been obvious to one of ordinary skill in the art to form one or more electrical contacts on an exterior of said device in order to transmit signals between the MEMS resonant structure and the outside of the device.
In view of the 112 rejection, claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. US 9,440,845 B2 in view of Partridge et al. US 2004/0245586 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because the structural limitations disclosed in the applications are the same and any differences appear slight and would appear to be obvious modifications to one of ordinary skill in the art. For example, claim 13 of the application contains variations of claim 1 of U.S. Patent No. US 9,440,845 B2 wherein the differences appear slight and would have been obvious modifications to one of ordinary skill in the art. U.S. Patent No. US 8,871,551 B2 does not disclose a substrate supporting at least one complementary metal oxide semiconductor (CMOS) device. However, Partridge discloses (see, for example, paragraph [0067]) the device 12 may on a well-prepared base upon which integrated circuits, CMOS transistors (i.e. substrate supporting at least one complementary metal oxide semiconductor (CMOS) device). It would have been obvious to one of ordinary skill in the art to have a substrate supporting at least one complementary metal oxide semiconductor (CMOS) device in order to support the MEMS device, and make connections to other external circuits within a package.
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Eugene Lee
October 24, 2025
/EUGENE LEE/Primary Examiner, Art Unit 2815