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 .
Election/Restrictions
Applicant’s election, without traverse, of Group I: claims 1-21, in the “Response to Election / Restrict. ion Filed - 11/11/2025”, is acknowledged.
This office action considers claims 1-24 are thus pending for prosecution, of which, non-elected claims 22-24 are withdrawn, and elected claims 1-21 are examined on their merits.
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 1; Fig 10; [0051]) = (element 1; Figure No. 10; Paragraph No. [0051]). 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.
Claims 1-8, 11-14, 17 and 19 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by ASSKILDT K et al. (WO 03056691 A1)) hereinafter Asskildt .
Regarding claim 1. Asskildt teaches a MEMS device ( Fig 1; Page 5; Line 9-10) comprising (see the entire document, Figs 1-4 and 6 along with other relevant figures as referenced in description, specifically, as cited below; see also alternative rejection in section II. infra):
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Asskildt Figure 2
a layer stack (comprising {6,8,7}; Fig 2; Page 5, Lines 25-34) comprising a plurality of MEMS layers (6,8,7) arranged along a layer stack direction (6 to 7);
a movable element (2/3; Figs 3-4; page 5, lines 13-16) formed in a first MEMS layer (8);
the moveable element (2) arranged between a second MEMS layer (6) and a third MEMS layer (7) of the layer stack ({6,8,7}); and
a driving unit comprising ({3,4}; Fig 2-4; page 5. Line 30-34) a first drive structure (3) mechanically firmly connected to the movable element (2) and a second drive structure (4) mechanically firmly connected to the second MEMS layer (6);
wherein the driving unit ({3,4}) is configured to generate on the movable element (2) a drive force (arrow in fig 4; pages 8 and 9 describe in specific detail how the component is to be operated as an actuator) perpendicular (shown as fp in Fig 2) to the layer stack direction (6 to 7), and the drive force (Fp) is configured to deflect (figi 4) the movable element (2).
Regarding claim 2. Asskildt as applied to the MEMS device according to claim 1, further teaches, wherein the first drive structure (3) and the second drive structure (4) are spaced apart by a gap (Fig 2-3; page 5, lines 31-34) and arranged opposite to each other; wherein a dimension of the gap along the layer stack direction is adjusted, ( by a bonding process).
The difference between Asskildt and claim is that gap is adjusted by bonding process.
However, the claim does not distinguish over Asskildt regardless of the process used to adjust gap as ‘bonding process’ because only the final product (wherein the gap between electrodes is relevant, not the process such as, bonding process.
Note that a "product by process" claim is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Fitzgerald, 205 USPQ 594, 596 (CCPA); In re Marosi et al., 218 USPQ 289 (CAFC); and most recently, In re Thorpe et al., 227 USPQ 964 (CAFC, 1985) all of which make it clear that it is the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or not. Note that Applicant has burden of proof in such cases, as the above case law makes clear. See MPEP 2113.I
Regarding claim 3. Asskildt as applied to the MEMS device according to claim 1, further teaches, wherein the movable element (2/3) comprises a plurality of layers (at least, layers 2 and 3) bonded (by a bonding process).
The difference between Asskildt and claim is that( bonded by) a bonding process
However, the claim does not distinguish over Asskildt regardless of the process used to bond 3/4 as ‘bonding process’ because only the final product layers 2 and 3 bonded is relevant, not the process such as, bonding process.
Note that a "product by process" claim is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Fitzgerald, 205 USPQ 594, 596 (CCPA); In re Marosi et al., 218 USPQ 289 (CAFC); and most recently, In re Thorpe et al., 227 USPQ 964 (CAFC, 1985) all of which make it clear that it is the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or not. Note that Applicant has burden of proof in such cases, as the above case law makes clear. See MPEP 2113.I
Regarding claim 4. Asskildt as applied to the MEMS device according to claim 1, further teaches, wherein (fig 6; page 8 Lines 11-28) the second drive structure (4) is a structured electrode structure comprising at least one first electrode element (one of 4 in block 6; Fig 6) and one second electrode element (another of 4 in block 6; fig 6) electrically insulated therefrom;
the MEMS device being configured (page 8 Lines 11-28) to apply a first electrical potential to the first electrode element and a different second electrical potential to the second electrode element;
wherein the MEMS device is further configured (page 8, Line 16- 28]) to apply a third electrical potential to the first drive structure to generate the drive force in cooperation of the third electrical potential and the first electrical potential or the second electrical potential.
Regarding claim 5. Asskildt as applied to the MEMS device according to claim 4, further teaches wherein (fig 6; page 8 Lines 11-28) the first electrode element (one of 4 in block 6; Fig 6) and the second electrode element (anoher of 4 in block 6; Fig 6) are electrically insulated from each other by an electrode gap (gap) wherein a rest position of the movable element (2/3) is arranged symmetrically and/or asymmetrically opposite the electrode gap.
Regarding claim 6. Asskildt as applied to the MEMS device according to claim 4, further teaches, wherein (Fig 2) the movable element (2/3) comprises a single third potential (on electrode 3 in Block 1, Fig 6)
Regarding claim 7. Asskildt as applied to the MEMS device according to claim 1, further teaches, wherein the movable element (3/4) is polygonal (at least from planar electrode 3 over 2; in Fig 3),
Regarding claim 8. Asskildt as applied to the MEMS device according to claim 1, further teaches, wherein ( claim 1 stipulated that the second drive structure (4) is connected to the second MEMS layer (6) , along an axial path perpendicular to the layer stack direction (6 to 7), electrodes of the second drive structure comprise a constant or a variable lateral dimension perpendicular to the axial direction.
Regarding claim 11. Asskildt as applied to the MEMS device according to claim 1, further teaches, wherein (Fig. 4: the movable element is mechanically connected to the third MEMS layer via an elastic region (the material of the bending beam 2 in the vicinity of the connection 22 can be construed as an elastic region) ; wherein the movable element is configured to perform a rotational movement based on the drive force while deforming the elastic region.
Regarding claim 12. Asskildt as applied to the MEMS device according to claim 11, further teaches, wherein (Fig 3), on a face side, the first drive structure is arranged on a face side of the movable element.
Regarding claim 13. Asskildt as applied to the MEMS device according to claim 1, further teaches, wherein (Fig 3) an electrode structure is arranged on a side facing the second MEMS layer and/or facing the third MEMS layer, and forms at least a part of the first drive structure.
Regarding claim 14. Asskildt as applied to the MEMS device according to claim 1, further teaches, wherein (Fig 6) the movable element comprises a surface structuring on a side facing the second MEMS layer and/or the second MEMS layer comprises a surface structuring on a side facing the movable element to locally change a distance between the movable element and the second MEMS layer.
Regarding claim 17. Asskildt as applied to the MEMS device according to claim 16, further teaches, wherein (Fig 2) a drive structure comprising at least two connected electrodes arranged side by side is arranged on each of the movable elements, one electrode of which is connected to a first electrical potential and a second
electrode of which is connected to a second, different electrical potential; wherein facing electrodes of adjacent movable elements are connected to a combination of the first electrical potential and the second electrical potential.
Regarding claim 19. Asskildt as applied to the MEMS device according to claim 1, further teaches, wherein (fig 2) the movable element comprises an element length along an axial extension direction perpendicular to the layer stack direction (14) , wherein an electrode of the first drive structure comprises a plurality of electrode segments along the element length, adjacent electrode segments being electrically connected to each other by electrical conductors, the electrical conductors comprising a lower mechanical stiffness than the electrode segments along a direction perpendicular to the element length.
Claim 1,15-16, 18 and 20-21are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by ROBERT; Philippe. (20120018244 A1) hereinafter Robert.
Regarding claim 1. Robert teaches a MEMS device ( MEMS Fig 2A; [0025+]) comprising (see the entire document, Figs 2A-2C along with other relevant figures as referenced in description, specifically, as cited below; see also alternative rejection in section I. supra):
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Robert Figure 2A
a layer stack (comprising {101,100,102}; Fig 2A; [0078]) comprising a plurality of MEMS layers (101,100,102) arranged along a layer stack direction (101 to 102);
a movable element (25; Fig 2C; [0082]) formed in a first MEMS layer (100);
the moveable element (25) arranged between a second MEMS layer (101) and a third MEMS layer (102) of the layer stack; and
a driving unit comprising ({24,24’}; Fig 2A-2B; [0104-0107) a first drive structure (comb teeth 24) mechanically firmly connected to the movable element (25; as detailed in [0105-0106]: the comb 24 teeth in the substrate 100, each tooth extending in plane zy. They are all fastened to an arm 42, arranged substantially perpendicular to pane zy, therefore rather along the x axis and perpendicular to the arm 40.) and a second drive structure (24’) mechanically firmly connected to the second MEMS layer (102);
wherein the driving unit is configured to generate on the movable element (25) a drive force (arrow in fig 2A-2B; [0109]): Varying the voltage V causes the teeth of the mobile comb 24 to move relative to the teeth of the stationary comb 24', for example in the direction indicated by the arrow in FIG. 2B, and therefore a displacement of the arm 40, which causes a displacement or deformation of the wall 25) perpendicular to the layer stack direction (101 to 102), and the drive force is configured to deflect the movable element (25).
Regarding claim 15. Robert as applied to the MEMS device according to claim 1, further teaches, wherein electrodes of the first drive structure (24) and/or electrodes of the second drive structure (24’) are arranged and interconnected in an interdigital manner (in comb structure; the two long sides (reference sign 48 and the corresponding element on the right-hand side) form movable elements that are coupled at the two ends via the arms 44. The two comb drives on the left and right form the respective drive devices therefor. As a result, two connected electrodes arranged next to one another).
Regarding claim 16. Robert as applied to the MEMS device according to claim 1, further teaches, comprising a multitude of movable elements (25) arranged side by side in a common MEMS plane and coupled to each other fluidically (air; [0131]) or by means of a coupling element (the two long sides (reference sign 48 and the corresponding element on the right-hand side) form movable elements that are coupled at the two ends via the arms 44. The two comb drives on the left and right form the respective drive devices therefor. As a result, two connected electrodes arranged next to one another).
Regarding claim 18. Robert as applied to the MEMS device according to claim 1, further teaches, wherein the movable element (25) is movably arranged in a MEMS cavity (20; Fig 7A-7B; [0135]), wherein by means of a movement of the movable element (25), at least a sub-cavity (280,280’; [0161] or 20’, 20’, 20’”) of the cavity is alternately enlarged and diminished in size, wherein the sub- cavity locally extends into the second MEMS layer (102).
Regarding claim 20. Robert as applied to the MEMS device according to claim 1, further teaches, wherein the movable element (25) is configured to provide an interaction with a fluid ((air; [0131])
Regarding claim 21. Robert as applied to the MEMS device according to claim 1, further teaches, wherein the driving unit comprises a fourth drive structure (241 Figs 2A-2B; [0110]) arranged on a side of the second MEMS layer (102) facing away from the movable element (25), a further movable element (construed from [0094]: actuation can be done by at least two sets of actuating means, arranged on either side of the cavity, as explained later. This is in particular the case when the cavity 20 includes 2 mobile or deformable walls or if one wishes to actuate the mobile wall in either direction (i.e. to be able to generate a pressure or depression or partial vacuum wave) being arranged adjacent to the fourth drive structure (241) and forming a stacked
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over ASSKILDT K et al. (WO 03056691 A1)) hereinafter Asskildt; in view of Morii; Akio (US 20100089156 A1) hereinafter Mori
Regarding claim 9. Asskildt as applied to the MEMS device according to claim 1, does not expressly disclose, wherein the driving unit comprises a third drive structure mechanically firmly connected to the third MEMS layer (7), wherein a first gap is arranged between the first drive structure (3) and the second drive structure (4), and a second gap is arranged between the first drive structure (3) and the third drive structure;
wherein the driving unit is configured to provide the drive force based on a first interaction between the first drive structure (3) and the second drive structure (4) and a second interaction between the first drive structure (3)and the third drive structure.
However, in the analogous art, Mori teaches The mechanical quantity sensor 100 has a first structure 110, a joining part 120, and a second structure 130 which are stacked one another, and a first base 140 and a second base 150 ([0039]), wherein (Figs 10-12; [0108-0116]) a driving unit comprises, inter alia a third drive structure (154a) mechanically firmly connected to the third MEMS layer (150), wherein a first gap is arranged between the first drive structure (161) and the second drive structure (144a), and a second gap is arranged between the first drive structure (161) and the third drive structure (154a);
wherein the driving unit is configured to provide the drive force ([0113-0116]) based on a first interaction between the first drive structure (161) and the second drive structure (144a) and a second interaction between the first drive structure (161) and the third drive structure (154a).
Therefore, it would have been obvious to one of ordinary skill in the, before the effective filing date of the claimed invention, to contemplate Mori’s teaching for Asskildt’s device and thereafter the combination of (Asskildt and Mor)’s MEMS device will have the third drive structure as claimed, since this inclusion at least will make driving electrode 154a and the detection electrodes 154b to 154e formed on the second base 150, that facilitates , a block made by joining the displaceable portion 112 and the weight portion 132 functions as a common electrode for plurality pairs of capacitive couplings and can function as an electrode (Mori [113])
Regarding claim 10. The combination of (Asskildt and Mori) as applied to the MEMS device according to claim 9, further teaches, wherein (Mori [0127]) the driving unit is configured to generate a first drive force (F0; [0128]) component based on the first interaction and a second drive force component based on the second interaction, the MEMS device being configured to generate the first drive force component and the second drive force component in-phase or with a phase shift (construed from Mori [0128]: forces F0x (=m .alpha.x), F0y (=m.alpha.y), F0z (=m.alpha.z) in the X, Y, Z-axis directions act on the weight portion 132 (m is the mass of the weight portion 132). As a result, slants in the X, Y directions and displacement in the Z direction occur in the displaceable portion 112).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
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. EST.
Examiner interviews are available via telephone, in-person, and video The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIO J MALDONADO whose telephone number is (571)272-1864. The examiner can normally be reached on Monday-Friday 8:00AM - 4:30PM. EST.
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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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/MOAZZAM HOSSAIN/Primary Examiner, Art Unit 2898
December 22, 2025