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 .
DETAILED ACTION
Election/Restrictions
Applicant's election, with traverse, of claims 1-12 and 20-21 in the “Response to Restriction Requirement” filed on 07/27/2026 is acknowledged and entered by the Examiner.
The Examiner respectfully disagrees that “In the present restriction requirement, the Examiner has alleged that Groups I and II are related as combination and subcombination. According to the Examiner, "the subcombination as disclosed in claim 22 has the same combination of claim 1." In such circumstances, a restriction requirement is improper”. As detailed in the Office Action filed on 05/28/2026, Groups I and II were detailed to be related as a combination and subcombination.
Because these inventions are independent or distinct for the reasons given above and there would be a serious burden on the examiner if restriction is not required because the inventions require a different field of search (see MPEP § 808.02), as such, restriction for examination purposes as indicated is proper.
The requirement is deemed proper and is therefore made FINAL.
This office action considers claims 1-12, 17, and 19-25 pending for prosecution, wherein claims 17, 19, and 22-25 are withdrawn from further consideration, and claims 1-12 and 20-21 are presented for examination.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.
1. Claim 10 are 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 10, 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 region of the phase-change material couples first and second conduction electrodes of the switch” (Claim 10; emphasis added). The claim is indefinite because of the following:
i) The claim is indefinite because “wherein the region of the phase-change material couples first and second conduction electrodes of the switch” (Claim 10) is ambiguous and confusing. Claim 1 states that “a plurality of pillars extending in the region of the phase-change material” (emphasis added) and [0087] of the instant invention states that “the use of pillars 301 made of an electrically insulating material is preferred to limit or to avoid the occurrence of parasitic capacitive phenomena”. Thus, it is construed that insulative pillars are extending in the region of the phase-change material. Figure 4 of the instant invention depicts an insulating layer (305) below the region of the phase change material with the pillars 301. Thus, it is not clear how “the region” with insulative pillars couples first and second conduction electrodes of the switch. Therefore, the limitation of “wherein the region of the phase-change material couples first and second conduction electrodes of the switch” (Claim 10) 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 § 102
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (100; Fig 3A; [0063]) = (element 100; Figure No. 3A; Paragraph No. [0063]). 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.
2. Claims 1-6, 8-10, and 20-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (US 20220285614 A1; hereinafter Li).
Regarding claim 1, Li teaches a switch based on a phase-change material (see the entire document, specifically Fig. 1+; [0001+], and as cited below), comprising:
a region (edges/ends of 83; Fig. 21; see [0102-0103]) of the phase-change material (83; Fig. 21; see [0083-0084, 0102-0103]);
a heating element (92; Fig. 21; see [0103]) electrically insulated ([0103]; insulating material of 91) from the region of the phase-change material (83; Fig. 21; see [0083, 0102-0103]); and
a plurality of pillars (89; Fig. 21; see [0103-0104] in view of [0075-0076]; silicon nitride) extending in the region of the phase-change material (83; Fig. 21; see [0083, 0102-0103]), the pillars (89; Fig. 21; see [0103-0104] in view of [0075-0076]; silicon nitride; see also [0087] of the instant disclosure where it says “According to an embodiment, pillar(s) 301 are made of a material having a thermal conductivity greater than that of the phase-change material of region 109. As an example, pillars 301 are made of an electrically insulating and thermally conductive material, for example, silicon nitride”) being made of a material having a thermal conductivity greater than that of the phase-change material (83; Fig. 21; see [0083, 0102-0103]).
Regarding claim 2, Li teaches all of the features of claim 1.
Li further teaches wherein the material of the pillars (89; Fig. 21; see [0103-0104] in view of [0075-0076]; silicon nitride) is electrically insulating.
Regarding claim 3, Li teaches all of the features of claim 1.
Li further teaches wherein the material of the pillars (89; Fig. 21; see [0103-0104] in view of [0075-0076]; silicon nitride) is selected from aluminum nitride and silicon nitride
Regarding claim 4, Li teaches all of the features of claim 1.
Li further teaches wherein the phase-change material (83; Fig. 21; see [0083-0084]; GeTe or GST) is a chalcogenide material.
Regarding claim 5, Li teaches all of the features of claim 1.
Li further teaches wherein an electrically insulating layer (91; Fig. 21; [0103]; insulating material) is interposed between the heating element (92; Fig. 21; see [0103]) and the region of the phase-change material (83; Fig. 21; see [0083, 0102-0103]).
Regarding claim 6, Li teaches all of the features of claim 5.
Li further teaches wherein the electrically insulating layer (91; Fig. 21; [0103]; insulating material) is made of the same material as the pillars (89; Fig. 21; see [0103-0104] in view of [0075-0076]; insulating material).
Regarding claim 8, Li teaches all of the features of claim 1.
Li further teaches wherein the heating element (92; Fig. 21; see [0103]) is closer to a substrate (10; Fig. 21; see [0057-0059]), inside and on top of which is formed the switch, than the region of the phase- change material (83; Fig. 21; see [0083, 0102-0103]).
Regarding claim 9, Li teaches all of the features of claim 1.
Li further teaches wherein the region of the phase-change material (83; Fig. 21; see [0083, 0102-0103]) is coated with a passivation layer (91; Fig. 21; [0103]; insulating material).
Regarding claim 10, Li teaches all of the features of claim 1.
Li further teaches wherein the region of the phase- change material (83; Fig. 21; see [0083, 0102-0103]) couples (see section 1, above; 112(b) rejection) first (80c; Fig. 21; see [0104-0105]) and second conduction electrodes (80c; Fig. 21; see [0104-0105]) of the switch (see section 1, above; 112(b) rejection).
Regarding claim 20, Li teaches all of the features of claim 1.
Li further comprising a first electrode (80c; Fig. 21; see [0104-0105]) spaced from a second electrode (80c; Fig. 21; see [0104-0105]), the region of phase change material (83; Fig. 21; see [0083, 0102-0103]) being on the first (80c; Fig. 21; see [0104-0105]) and second electrodes (80c; Fig. 21; see [0104-0105]).
Regarding claim 21, Li teaches all of the features of claim 20.
Li further comprising a first insulating layer (91; Fig. 21; [0103]; insulating material) between the first electrode (80c; Fig. 21; see [0104-0105]) and the region of phase change material (80c; Fig. 21; see [0104-0105]).
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 7 and 11-12 are rejected under 35 U.S.C.103 as being unpatentable over Li et al. (US 20220285614 A1; hereinafter Li), in view of the following statement(s).
Regarding claim 7, Li teaches all of the features of claim 1.
Li further teaches wherein the region of the phase-change material (83; Fig. 21; see [0083, 0102-0103]) (see below for “is closer to”) a substrate (10; Fig. 21; see [0057-0059]), inside and on top of which is formed the switch, than the heating element (92; Fig. 21; see [0103]).
As noted above, Li does not expressly disclose “wherein the region of the phase- change material is closer to a substrate, inside and on top of which is formed the switch, than the heating element”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the region of the phase- change material is closer to a substrate, inside and on top of which is formed the switch, than the heating element” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein the region of the phase- change material is closer to a substrate, inside and on top of which is formed the switch, than the heating element). Also, the Applicant has not shown that “wherein the region of the phase- change material is closer to a substrate, inside and on top of which is formed the switch, than the heating element” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Instead, Claim 8 of the instant disclosure discloses other possible options such as “wherein the heating element is closer to a substrate, inside and on top of which is formed the switch, than the region of the phase- change material”. Therefore, no rationale is given that the invention will not function without “wherein the region of the phase- change material is closer to a substrate, inside and on top of which is formed the switch, than the heating element”. Thus, the claimed “wherein the region of the phase- change material is closer to a substrate, inside and on top of which is formed the switch, than the heating element” 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 the region of the phase- change material is closer to a substrate, inside and on top of which is formed the switch, than the heating element” is significant. Thus, the claimed limitation of “wherein the region of the phase- change material is closer to a substrate, inside and on top of which is formed the switch, than the heating element” 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 the region of the phase- change material is closer to a substrate, inside and on top of which is formed the switch, than the heating element” is not patentable over Li.
Regarding claim 11, Li teaches all of the features of claim 1.
Li further teaches wherein each pillar (89; Fig. 21; see [0103-0104] in view of [0075-0076]; silicon nitride) (see below for “has a maximum lateral dimension equal to approximately 300 nm”).
As noted above, Li does not expressly disclose “wherein each pillar has a maximum lateral dimension equal to approximately 300 nm”.
However, it has been held that “wherein each pillar has a maximum lateral dimension equal to approximately 300 nm” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein each pillar has a maximum lateral dimension equal to approximately 300 nm is critical, “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”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). Also, a change in size is generally recognized as being within the level of ordinary skill in the art. See In re Rose, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner V. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In this case, there is nothing in the present application to indicate that the claimed wherein each pillar has a maximum lateral dimension equal to approximately 300 nm is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein each pillar has a maximum lateral dimension equal to approximately 300 nm as claimed in device because having wherein each pillar has a maximum lateral dimension equal to approximately 300 nm can be optimized during routine experimentation depending upon a particular application.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance 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. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 12, Li teaches all of the features of claim 1.
Li further teaches wherein each pillar (89; Fig. 21; see [0103-0104] in view of [0075-0076]; silicon nitride) is separated from the neighboring pillar (89; Fig. 21; see [0103-0104] in view of [0075-0076]; silicon nitride) (see below for “by a distance in the order of 300 nm”).
As noted above, Li does not expressly disclose “wherein each pillar is separated from the neighboring pillar by a distance in the order of 300 nm”.
However, it has been held that “wherein each pillar is separated from the neighboring pillar by a distance in the order of 300 nm” will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wherein each pillar is separated from the neighboring pillar by a distance in the order of 300 nm is critical, “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”. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). Also, a change in size is generally recognized as being within the level of ordinary skill in the art. See In re Rose, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner V. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In this case, there is nothing in the present application to indicate that the claimed wherein each pillar is separated from the neighboring pillar by a distance in the order of 300 nm is critical and will achieve unexpected results over the range outside of the claimed range. Therefore, it would have been obvious to have wherein each pillar is separated from the neighboring pillar by a distance in the order of 300 nm as claimed in device because having wherein each pillar is separated from the neighboring pillar by a distance in the order of 300 nm can be optimized during routine experimentation depending upon a particular application.
The applicants have not established the criticality (see next paragraph below) of said first predetermined amount.
The specification contains no disclosure of either the critical nature of the claimed distance 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. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)
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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