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 .
Status of Claims
Applicant’s amendment of claims 1 and 3, cancellation of claims 8-20 and submission of new claims 21-33 in “Claims - 04/27/2026” is acknowledged.
But, new claim 21 ( and its dependent claims 22-27), recites a device which was not a part of the species 1 characterized by applicant in “Response to Election / Restriction Filed - 11/26/2025” as “a MEMS inertial sensor device”.
Again, new claim 28 (and its dependent claims 29-33), comprising the process steps such as “forming one or more semiconductor proof mass layers over an electrode layer; forming a proof mass array including multiple proof mass sub-structures by selectively etching the proof mass layers; coupling orthogonally disposed spring suspensions structures to the multiple proof mass sub-structures and where each spring suspension structures include an anchor; releasing the proof mass array and spring suspension structures except for the anchors”. Those process steps are not part of the selected species 1 characterized by applicant in “Response to Election / Restriction Filed - 11/26/2025” as “a MEMS inertial sensor device”.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-32 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
This office action considers claims 1-7 and 21-33, of which claims 21-33 are withdrawn, and 1-7 presented for further prosecution.
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.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without MEMS inertial sensor, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
Regrading claim 1: The instant claim recites “A device” broadening from previous recitation of claim limitation “A MEMS inertial sensor device” in “Claims - 07/17/2023”. The omission of “MEMS inertial sensor” from device, appears to broaden the breadth of the claim limitation, and raises an issue regarding whether the inventor had possession of a broader, more generic invention. Examiner understood "the description need not be in ipsis verbis [i.e., "in the same words"]. But The omission of “MEMS inertial sensor” from device is critical or essential to the practice of the invention but not included in the claim(s)are not noted in the textual description, of the instant specification, and cannot be taken from the figures as instant specification, one of the ordinary skill art, will not be able to construed these amended attributes/limitations. It is noted that broadened “device” was not a part of the selected species 1 characterized by applicant in “Response to Election / Restriction Filed - 11/26/2025” as “a MEMS inertial sensor device,
As such, 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, at the time the application was filed, had possession of the claimed invention.
Claims 2-7 are rejected under 35 U.S.C. 112 (a), because of their dependency status from claim 1.
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.
Claims 2-7 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 Claims 2-7, each of the claims. in line 1, recite the limitation "The MEMS inertial sensor device of claim 1. There is insufficient antecedent basis for these “The MEMS inertial sensor device" in each of the claims, because the claim 1 recites “A device”.
Response to Arguments
Applicant's arguments “Remarks - 04/27/2026 - Applicant Arguments/Remarks Made in an Amendment” filed with the “Amendment/Request for Reconsideration-After Non-Final Rejection - 04/27/2026”, have been fully considered, but they are not persuasive, because of the following:
This Office Action found substantially changed scope of the inventions by Applicant's substantial amendment of claim 1 (therefore respective dependent claims 1-7) that raises rejection under both 35 U.S.C. 112(a) and 35 U.S.C. 112(b).
As there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of claim 1 (and dependent claims 2-7), it would not be proper for the examiner to reject such a claim on the basis of prior art. See MPEP § 706. 03 and MPEP § 2173.06.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.
While the amendments as presented, do not present allowable subject matter, in the interest of compact prosecution, examiner feels that a further interview may help to expedite prosecution of the application. Examiner is available for an interview at Applicant's convenience at the number below should Applicant wish to discuss the case further.
It is specifically noted that Claim 1 (with its dependent claims 2-7) would be allowable if rewritten or amended to overcome the rejection(s) under both 35 U.S.C. 112, first paragraph and second paragraph, set forth in this Office action.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOAZZAM HOSSAIN whose telephone number is (571)270-7960. The examiner can normally be reached on M-F: 8:30AM - 6:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/MOAZZAM HOSSAIN/Primary Examiner, Art Unit 2898
June 5, 2026
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