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 with traverse of Species B, represented by claims 8-15, and 19-20 in the reply filed on April 13, 2026 is acknowledged. The traversal is on the ground(s) that there is no serious search burden, and the election of species is burdensome. This is not found persuasive because the materials of the different species do not appear to be obvious variants of each, nor does Applicant state they are obvious variants of each other. Further, Applicant has not provided any evidence to support their position that there is no serious search burden. Thus, this argument is not persuasive as no evidence has been presented to support Applicant’s conclusory argument. With regard to the burdensomeness of filing multiple applications, under 35 USC § 101, and MPEP 2104 Applicant may obtain one patent per invention. Therefore, this argument is unpersuasive.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 1-7, and 16-18 are withdrawn from consideration.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 14, 2025, and January 12, 2024 were considered by the examiner.
Claim Objections
Claims 1-7, and 16-18 are objected to because of the following informalities: these claims need to use the “withdrawn” identifier.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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 8-15, and 19-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a specific list of metal in Applicant’s ¶ 0058, does not reasonably provide enablement for all metals (M). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Regarding claim 9,
Wands factors:
Breath of the claims: the claims allow for any metal to be used. Uranium is metal. Applicant does not have support for using uranium, or any actinide series metals.
Nature of the invention: the nature of the invention is a dielectric used in mems.
State of the prior art: the prior art does not include any and all metals, such as radioactive ones, being used in mems.
Level of ordinary skill in the art: this will be determined by a court.
The level of predictability in the art: as Applicant’s material is being used as a dielectric it is not clear that any and metals (M) added to CrO will result in the material being a dielectric.
The amount of direction provided by the inventor: the Inventor(s) have not given directions to using all metals in the disclosure.
The existance of working examples: Applicant has given some examples in ¶ 0061, however, none of these are radioactive.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure: extensive as one would need to go through every single metal to determine all of them as used in formula II are dielectrics.
Based upon the above, the entire scope of the claim is not enabled, thus, one of ordinary skill it the art would not be able to make the invention commensurate with the entire scope of the claim. Trustees of Boston Univ. v. Everlight Elec. Co. Ltd., 896 F.3d 1357, 1364 (Fed. Cir. 2018) (where the Court held the entire scope of the claim must be enabled, and not that it may be done in the future).
Claim Rejections - 35 USC § 112(b)
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 8-15, and 19-20 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.
Regarding claim 9,
Claim 9 is indefinite as it is unclear whether M can also be Cr.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VINCENT WALL whose telephone number is (571)272-9567. The examiner can normally be reached Monday to Thursday at 7:30am to 2:30pm PST. Interviews can be scheduled on Tuesday thru Thursday at 10am PST or 2pm PST.
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/VINCENT WALL/Primary Examiner, Art Unit 2898
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