DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on 01/05/2026 after final rejection of 10/06/2025 and advisory action of 12/05/2025. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/01/2025 has been entered. The Office action on currently pending claims 1, 3, and 5-22 follows.
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.
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 13-22 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.
Claims 13, 17, 21, and 22 on numerous instances (11 instances) recite the limitations “insulating layer”. These limitations are open-ended and produce ambiguity and indefiniteness, since it’s not clear the “layer” of what (i.e., of material, material layer, etc. ?) is being referred to.
Furthermore, claims 13, 17, and 18 positively set forth the limitations the “first (second) electrically-insulating layer”, then further down claims 21 and 22 positively set forth the limitations the “first (second, third) insulating layer”. Said limitations are also open-ended because they do not specify what kind of insulation is being referred to (i.e., electrical, thermal, etc. ?). Also, if claims refer to electrical insulation, then additional introduction of the “first (second, third) electrically-insulating layer” in addition to the previously introduced “first (second) electrically-insulating layer” creates ambiguity and indefiniteness.
The remaining dependent claims have been also rejected since they inherit the aforementioned problems of the parent claims.
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, 3, and 5-22, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0079019 to Borodulin et al. (hereafter “Borodulin”, of record) in view of US 2009/0040007 to Stenmark (of record).
Regarding claim 1, Borodulin discloses (Figs. 1-3) a phase-change material switch (100), comprising: first (112), second (114), and third (116) electrodes aligned along a first direction; a first region of a phase-change material (120) coupling the first and second electrodes; a second region of said the phase-change material (120) coupling the second and third electrodes, an insulating region (accommodating strip (122)) in the first region of a phase-change material (120) and extending between the first and second electrodes along the first direction, but does not disclose:
a plurality of pillars extending through the first region of phase change material along a second direction transverse to the first direction and being on the insulating region, each pillar of the plurality of pillars being separated from adjacent pillars of the plurality of pillars by the phase-change material.
Regarding claim 13, Borodulin discloses (Figs. 1-3) a device, comprising: a substrate (par. [0021]); a first electrode (112) on the substrate; a second electrode (114) on the substrate; a third electrode (116) on the substrate, the second electrode being between the first and third electrode along a first direction; a first phase change material (120) on the first electrode and the second electrode; a second phase change material (120) on the second electrode and the third electrode;
an electrically-insulating layer (accommodating strip (122)) between the first electrode and the second electrode on the substrate (par. [0021]); and a first insulating region (accommodating strip (122)) in the first phase change material and on the first electrode and the second electrode, but does not disclose: a plurality of pillars extending through the first phase change material along a second direction transverse to the first direction; each pillar of the plurality of pillars being separated from adjacent pillars of the plurality of pillars by the first phase-change material, wherein the first insulating region being between the plurality of pillars and the electrically-insulated layer along the second direction.
Regarding claim 17, Borodulin discloses (Figs, 1-3) a device (100), comprising: a substrate (par. [0021]); a first electrode (112) on the substrate; a second electrode (114) on the substrate; a first electrically insulating layer (accommodating strip (122)) between the first and second electrodes; a first isolation region (accommodating strip (122)) between the first and second electrodes; a first phase change material region (120) on the first electrically insulating layer and on portions of the first (112) and the second (114) electrodes, and the first insulating region (accommodating strip (122)) on the first electrode, the second electrode, but does not disclose: that the first phase change material region including a first plurality of pillars; each pillar of the first plurality of pillars being separated from adjacent pillars of the first plurality of pillars by the phase-change material region; and the first insulating region separating the first plurality of pillars from the first electrically insulating layer.
Regarding claim 5, Borodulin does not disclose that the plurality of pillar(s) include a material having a first thermal conductivity greater than a second thermal conductivity of the phase-change material.
Regarding claims 1, 5, 13, and 17, Stenmark discloses (Figs. 2, 5b) a plurality (first plurality) of pillars (216) being made of a material having a thermal conductivity greater than that of a phase-change material (215) (par. [0032]) in the phase-change material (215) of the phase-change material switch for improved heat distribution (par. [0038]), the plurality of pillars (216) being on the insulating layer/region (201) (see “polymer or a ceramic material” in par. [0033]) and extending through the phase-change material (215), wherein each pillar of the first plurality of pillars being separated from adjacent pillars of the first plurality of pillars by the phase-change material region (see par. [0038] - “In another embodiment of the present invention the single central heat transfer structure 216 is replaced by distributed heat transfer structures, i.e. several columns of heat transfer structure material with smaller diameter, each surrounded by actuator material 215”).
It would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have modified to Borodulin according to the teachings of Stenmark by providing the first phase change material region with a (first) plurality of pillars being made of a material having a thermal conductivity greater than that of the phase-change material, the (first) plurality of pillars extending through the first phase change material along a second direction transverse to the first direction; each pillar of the (first) plurality of pillars being separated from adjacent pillars of the (first) plurality of pillars by the phase-change material region, the first insulating region being between (separating) the (first) plurality of pillars and the electrically insulating layer along the second direction, as claimed, in order to enhance heat distribution within the phase-change material (Stenmark, par. [0038]). Also, all claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Regarding claim 3, Borodulin discloses that the first and second regions of said phase-change material (120) have, along the conduction direction of the switch, a same lateral dimension (Fig. 3).
Regarding claim 10, Borodulin discloses that said phase-change material (120) is a chalcogenide material (par. [0020] and [0025]).
Regarding claim 11, Borodulin discloses first (122) and second (122) heating elements respectively located on the first (120) and second (120) regions of the phase- change material, each heating element being electrically insulated from the respective region of the phase-change material located thereon (see “dielectric” in par. [0028]).
Regarding claim 12, Borodulin discloses that the first (112) and third (116) electrodes are conduction electrodes of the switch (see “IN” and “OUT” on Fig. 3).
Regarding claim 14, Borodulin discloses a second insulating region extending between the second (114) and third (116) electrodes (the insulation regions accommodating strips (122), Fig. 3).
Regarding claim 15, Borodulin discloses that the first phase change material (120) is on the first insulating region and the second phase change material (120) is on the second insulating region (Fig. 3).
Regarding claim 16, Borodulin discloses a first heating element (122) on the first phase change material (120) and a second heating element (122) on the second phase change material (120), (Fig. 3).
Regarding claims 6 and 7, Borodulin as modified by Stenmark still does not disclose that the material of the plurality of pillars is electrically insulating material selected from among aluminum nitride and silicon nitride.
However, the aforementioned materials have been notoriously known in related arts before the effective filing date of the claimed invention.
Therefore, it would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have selected any suitable material(s) for the pillars in the Borodulin-Stenmark combination, including as claimed, in order to achieve desired thermal, electrical, and mechanical characteristics of the switch, while not exceeding its targeted production costs, 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. See In re Leshin, 125 USPQ 416.
Regarding claims 8 and 9, Borodulin as modified by Stenmark still does not disclose that each pillar has a maximum lateral dimension equal to approximately 300 nm., wherein each pillar is separated from neighboring pillars of the plurality of pillars by a distance in the order of 300 nm.
It would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have selected any suitable aforementioned dimensions in the Borodulin-Stenmark combination, including as claimed, in order to achieve desired heat distribution within the phase-change material in the Borodulin-Stenmark combination, while not exceeding its targeted production costs, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233. 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).
Regarding claim 18, Borodulin discloses a third electrode (116) on the substrate and a second isolation region (accommodating the strip (122)) between the second and third electrodes.
Regarding claim 19, Borodulin as modified by Stenmark discloses a second phase change material region (120) on portions of the second (114) and the third (116) electrodes, the second phase change material region including a second plurality of pillars (the same reasoning applies as in the rejection of claim 17 above).
Regarding claim 20, Borodulin discloses a first heating element (122) on the first phase change material region (120) and a second heating element (122) on the second phase change material region (120).
Regarding claims 21 and 22, Borodulin discloses a first insulating layer between the first phase change material region (120) and the first heating element (122) and a second insulating layer between the second phase change material region (120) and the second heating element (122), (see “dielectric” in par. [0028]), wherein a third insulating layer between the first phase change material region (120) and the first heating element (122) and between the second phase change material region (120) and the second heating element (122), the third insulating layer being directly on a plurality of sidewalls of each first (120) and second (120) phase change material region and being directly on the first isolation region (see “dielectric” in par. [0015], [0021], [0028], [0029]).
Response to Arguments
Applicant’s arguments have been considered but they are not persuasive.
Applicant contends that, allegedly “Stenmark does not teach each pillar of the plurality of pillars being separated from adjacent pillars of the plurality of pillars by the phase-change material. Borodulin does not overcome the deficiencies of Stenmark. Accordingly, applicant respectfully submits that the amendments to claim 1 overcome the 103 rejections.”
On the contrary, Stenmark clearly and explicitly teaches that each pillar of the plurality of pillars being separated from adjacent pillars of the plurality of pillars by the phase-change material (see par. [0038] - “In another embodiment of the present invention the single central heat transfer structure 216 is replaced by distributed heat transfer structures, i.e. several columns of heat transfer structure material with smaller diameter, each surrounded by actuator material 215”).
Furthermore, it appears that Applicant incorrectly interprets the obviousness rejection i.e., as Stenmark being modified by Borodulin (i.e., “Borodulin does not overcome the deficiencies of Stenmark”). However, in the rejection it’s the Borodulin (primary reference) that is being modified by Stenmark (secondary reference).
Conclusion
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/Anatoly Vortman/
Primary Examiner
Art Unit 2835