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 § 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.
Claim 4 is 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.
Claim 4 recites “a ratio between a force of friction and a force of adhesion of at least 45”. Applicant has not pointed to nor has The Office found support for such an amendment in the specification as originally filed. While support exists for the original claim language in claim 4, the amended language does not have support. Applicant is advised to point to support for such an amendment or amend or cancel the claim.
Claims 7 and 11 are rejected for the recitation of “friction force to adhesion force ratio”. Applicant has not pointed to nor has The Office found support for such an amendment in the specification as originally filed. While support exists for the original claim language in claim 7, the amended language does not have support. Applicant is advised to point to support for such an amendment or amend or cancel the claim.
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, 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 1-4, 6-14 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sitti et al. (US Pat. -9,731,422) in view of Lu et al. (PG Pub. 2014/0329061).
Regarding claim 1, Sitti et al. teach a microfiber array for use in handling an object comprising a dry adhesive microfiber array having a plurality of fibers [Abstract and 12:29-33]. Each fiber of the plurality of fibers terminates in an enlarged flat tip (enlarged tips taught Fig. 11) wherein each tip is flat.
Sitti et al. is silent regarding the claimed profile roughness and controlled coefficient of friction. However, Lu et al. teaches profile roughness as a results effective variable which controls coefficient of friction[0042 and claim 1]. It would have been obvious to one of ordinary skill in the art to use the teachings of Lu et al. in Sitti et al. to vary the profile roughness through routine experimentation and arrive at any profile roughness including the claimed profile roughness to affect adhesion and control the coefficient of friction and arrive at the claimed invention.
Regarding claims 2 and 7, the plurality of tips provide a controlled normal adhesion. As set forth above in the 35 USC 112 rejection of claim 2, the cited art is considered to meet the present limitations of controlled normal adhesion as it is unclear what is meant by such a recitation as such is subjection language. Sitti et al. teaches adding bumps to the tips and therefore provides controlled normal adhesion and also teaches controlled adhesion.
Lu et al. teach controlling the profile roughness to affect the friction force to adhesion force ratio and the coefficient of friction. Further, the recitation in the claims that the profile roughness of the roughened surface is “controlled to affect the friction to adhesion ratio” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that the cited art disclose the microfiber array as presently claimed, it is clear that the microfiber array of the cited art would be capable of performing the intended use, i.e. to control the friction to adhesion ratio, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claims 3-4, Sitti et al. teach controlling the normal adhesion and Lu et al. teach affecting profile roughness to affect the adhesion and friction and coefficient of friction, but are silent regarding the adhesion being zero, ratio between a force of friction and force of adhesion and profile roughness. However, it would have been obvious to one of ordinary skill in the art to control the normal adhesion to be any value including zero, adjust the friction adhesion ratio and profile roughness in order to control and affect picking up and release of objects and arrive at the claimed invention.
Regarding claim 6, the object comprises a semiconductor device [12:14-15].
Regarding claim 8, Sitti et al. teach, a microfiber array for use in handling an object comprising a dry adhesive microfiber having a plurality of fibers with each having a flat tip [Abstract and 12:29-33]. Sitti et al. is silent regarding the claimed profile roughness and controlled coefficient of friction. However, Lu et al. teaches profile roughness as a results effective variable which controls coefficient of friction[0042 and claim 1]. It would have been obvious to one of ordinary skill in the art to use the teachings of Lu et al. in Sitti et al. to vary the profile roughness through routine experimentation and arrive at any profile roughness including the claimed profile roughness to affect adhesion and control the coefficient of friction and arrive at the claimed invention.
Regarding claim 9, the tips provide a controlled normal adhesion. As set forth above in the 35 USC 112 rejection of claim 9, the cited art is considered to meet the present limitations of controlled normal adhesion as it is unclear what is meant by such a recitation as such is subjection language. Sitti et al. teaches adding bumps to the tips and therefore provides controlled normal adhesion and also teaches controlled adhesion.
Regarding claims 10-12, Sitti et al. teach controlling the normal adhesion and Lu et al. teach affecting profile roughness to affect the adhesion and friction and coefficient of friction, but are silent regarding the adhesion being zero, ratio between a force of friction and force of adhesion and profile roughness, but are silent regarding the adhesion being zero, friction to adhesion ratio and profile roughness. However, it would have been obvious to one of ordinary skill in the art to control the normal adhesion to be any value including zero, adjust the friction adhesion ratio and profile roughness in order to control and affect picking up and release of objects and arrive at the claimed invention.
Regarding claim 13, the object comprises a semiconductor device [12:14-15].
Regarding claim 14, Sitti et al. is silent regarding the claimed profile roughness and controlling of it to affect friction force to adhesion force ratio. However, Lu et al. teaches profile roughness including profile roughness as a results effective variable which controls friction force to adhesion force ratio [0042 and claim 1]. It would have been obvious to one of ordinary skill in the art to use the teachings of Lu et al. in Sitti et al. to vary the profile roughness through routine experimentation and arrive at any profile roughness including the claimed profile roughness to affect friction force to adhesion force ratio and arrive at the claimed invention.
Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Sitti et al. disclose the microfiber array as presently claimed, it is clear that the microfiber array of Sitti et al. would be capable of performing the intended use, i.e. profile roughness to control the friction force to adhesion force ratio, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 20, the previous combination is silent regarding the profile roughness being uniform across the flat surface. However, it would have been obvious to one of ordinary skill in the art to have the profile roughness to be uniform across the flat surface in order to keep properties consistent and uniform across surface to have uniform properties and arrive at the claimed invention.
Claims 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Sitti et al. (PG Pub. 2012/0328822).
Regarding claim 15, Sitti et al. teach a method of fabricating a microfiber array for use in handling semiconductor devices comprising forming the microfiber array from a curable polymer using a mold curing the polymer to form a cured microfiber array [Abstract and 0148] and wetting the tips of the cured microfiber array with a second curable polymer and the second curable polymer is liquid and placing the microfiber array with wetted tips on a flat, roughened surface, wherein the wetted tips of the microfiber array are in contact with the flat, roughened surface; and curing the second curable polymer, wherein the cured second polymer forms tips with a flat surface and a profile roughness similar to the flat, roughened surface [0089, 0148].
Regarding claims 16-18, The previous combination is silent regarding the claimed further method steps. However, it would have been obvious to one of ordinary skill in the art to mold the cured microfiber array with a casting material to form a negative replica of the microfiber array with roughened tips and molding the negative replica with the curable polymer to form an additional microfiber array in order to be more efficient and create more arrays as needed. The claimed injection molding or compression molding would have been obvious to one of ordinary skill in the art given the limited number of types of molding and such is known in the art to one ordinary skill in the art.
Regarding claim 19, Sitti et al. teach glass as the molding material. But are silent as to it being frosted. It would have been obvious to one of ordinary skill in the art to use frosted glass as the roughened surface given the limited number of types of glass and arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 01/28/2026 have been fully considered but they are not persuasive.
Applicant argues the bumps of Sitti (US Pat. 9,731,422) does not teach the newly amended limitations. Sitti is no longer used to meet the newly claim limitations of the roughened surface, but Lu et al. is used for these limitations. Applicant argues Arzt does not teach the new limitations of claim 15-18. Newly cited Sitti (PG Pub. 2012/0328822) teaches the limitations of these claims.
Applicant is invited to amend the claims over the cited art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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/Shawn Mckinnon/Examiner, Art Unit 1789