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 Species I in the reply filed on 05/28/2026 is acknowledged.
Newly amended claims 16-20 and newly submitted claims 21-25 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a device, classified in B81B2203/0292.
II. Claims 16-20, drawn to a device, classified in B81B7/0067.
II. Claims 21-25, drawn to a device, classified in B81B7/02.
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed the device of claim 1 could be a non-electromagnetic sensor and not utilize any lens as required by claim 16. The sensitive region of claim 16 could be a region that accept and transmits electromagnetic signals only so that the device does not have a functional structure configured to, in operation, transduce a physical or chemical quantity into a corresponding electrical quantity, Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions I and III are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed the device of claim 16 could have only optical sensors rather than as infrared sensor as required by claim 21. The device of claim 21 could be formed without any particular coupling region rather than “a coupling region couples together the reference region to the detection region, the coupling region has an end surface spaced apart from the second surface, and the coupling region includes a second thickness that extends from the first surface to the end surface, the second thickness being greater than the first thickness” as required by claim 16, Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions II and III are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed the device of claim 1 could be a non-infrared sensor and not utilize any lens as required by claim 21. The device of claim 21 could be formed without any particular coupling region rather than “a coupling region couples together the reference region to the detection region, the coupling region has an end surface spaced apart from the second surface, and the coupling region includes a second thickness that extends from the first surface to the end surface, the second thickness being greater than the first thickness” as required by claim 1, Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification;
the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); particularly different keyword searches for example the lenses and infrared detectors unique to each group would be required
the prior art applicable to one invention would not likely be applicable to another invention;
the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON J GRAY whose telephone number is (571)270-7629. The examiner can normally be reached on Monday-Friday 9am-4pm.
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, Toledo Fernando can be reached on 5712721867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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, claim 16-25 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 102
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 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3 and 5-9 is/are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Ang et. Al. (US 20200203417 A1 hereinafter Ang).
Regarding claim 1, Ang teaches in Figs. 2a with associated text a device comprising: a sensor body (structure below 280) including a functional structure 250 configured to, in operation, transduce a physical or chemical quantity into a corresponding electrical quantity (Fig. 2a, [0039]), the functional structure including: a first surface (upper surface); a second surface (lower surface) opposite to the first surface (Fig. 2a); a first thickness that extends from the first surface to the second surface (see annotated Fig, below); a reference region (blind pixel not shown but described in [0067] as being a pixel at the boundary of an active pixel with for example a getter layer unpatterned to block infrared radiation [0067] so that the arrangement between the reference region and active region would look like the two adjacent pixels shown in Fig. 2a) including a first sensitive region 250, the reference region has the first thickness; a detection region (active region 250 [0036])) including a second sensitive region, the detection region having the first thickness (Fig. 2a); a coupling region (thick region between adjacent pixels) couples together the reference region to the detection region, the coupling region has an end surface spaced apart from the second surface, and the coupling region includes a second thickness that extends from the first surface to the end surface, the second thickness being greater than the first thickness (see annotated Fig. below); a cap 280 bonded to the sensor body and having a first cavity 265 overlying the functional structure, wherein the cap comprises a supporting portion (side portions at 288 and 287) and a cover portion (portion above 250) that form the first cavity, the supporting portion being bonded to the sensor body, the cover portion being bonded to the supporting portion and having an inner wall delimiting on a side the first cavity and facing the functional structure (Fig. 2a, [0063]-[0064]); and a first coating 290 extending within the first cavity on the inner wall of the cover portion (Fig. 2a, [0112]).
Regarding claim 3, Ang teaches the supporting portion of the cap laterally delimits the first cavity (Fig. 2a).
Regarding claim 5, Ang teaches the sensor body comprises a device substrate (structures between 201 and 280) and a support substrate 201, wherein the device substrate comprises the functional structure (Fig. 2a, [0036])) and a peripheral structure (Fig. 2a) coupled to the functional structure and having a first surface and a second surface opposite to the first surface, the cap being bonded to the first surface of the peripheral structure (Fig. 2a), the support substrate being bonded to the second surface of the peripheral structure (Fig. 2a).
Regarding claim 6, Ang teaches the first coating is an antireflective coating or a getter coating [0112]).
Regarding claim 7, Ang teaches the sensor body has a second cavity 260 arranged on an opposite side of the functional structure with respect to the first cavity, the functional structure being suspended in the first cavity and the second cavity (Fig. 2a).
Regarding claim 8, Ang teaches the sensor body has an inner wall delimiting on a side the second cavity and facing the functional structure, the MEMS device further comprising a second coating 240 extending on the inner wall of the sensor body (Fig. 2a, [0037])).
Regarding claim 9, Ang teaches the second coating is an antireflective coating or a getter coating (here 201 is taken to be the cap and 240 the first coating and 265 is taken to be the second cavity and 290 the second coating [0112]).
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 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 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.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ang as applied to claim 1 and further in view of Hovey et. Al. (US 20080277672 A1 hereinafter Hovey).
Regarding claim 2, Ang teaches he device according to claim 1.
Ang does not specify the supporting portion of the cap comprises a supporting substrate bonded to the sensor body, and a cap bonding region extending between the supporting substrate and the cover portion and comprising a layer of oxide or of glass frit.
Hovey discloses in Fig. 10 with associated text a cap (layers 210-200) similar to that of Ang wherein the supporting portion (210,200 and 130) of the cap comprises a supporting substrate 200 bonded to a sensor body 300 (Fig. 10, [0041]), and a cap bonding region 130 extending between the supporting substrate and the cover portion and comprising a layer of oxide or of glass frit (Figs. 4 and 10, [0034]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a cap similar to that of Hovey in the device of Ang because according to Hovey such a structure is suitable to provide an infrared transmitting, hermetic lid for a microdevice (abstract).
Regarding claim 4, Ang teaches he device according to claim 1.
Ang does not specify the functional structure has a surface (upper surface) facing the inner wall and extending at a distance greater than 40 pm from the inner wall.
Hovey discloses in Fig. 11 with associated text a device similar to that of Ang wherein a functional structure (300 and 310) has a surface (upper surface) facing an inner wall (inner surface of 100) and extending at a distance greater than 40 pm from the inner wall (distance is approximately the thickness of 200 which is 500 microns [0037] and therefore much greater than 40 microns)..
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a cap similar to that of Hovey in the device of Ang because according to Hovey such a structure is suitable to provide an infrared transmitting, hermetic lid for a microdevice (abstract) furthermore, making the functional structure have a surface (upper surface) facing the inner wall and extending at a distance greater than 40 pm from the inner wall would have been obvious to one of ordinary skill in the art at the time of the invention because absent evidence or disclosure of criticality for the range giving unexpected results, it is not inventive to discover optimal or workable ranges by routine experimentation. In re Aller, 220 F. 2d454, 105 USQ 233, 235 (CCPA 1995). Furthermore the specification contains no disclosure of either the critical nature of the dimensions claimed or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the claimed dimensions or variable are critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ 2d 1934, 1936 (Fed. Cir. 1990)..
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ang as applied to claim 1 and further in view of Schieferdecker et. Al. (US 20220283034 A1 hereinafter Schieferdecker).
Regarding claim 10, Ang teaches he device according to claim 1.
Ang does not specify the first coating is an antireflective layer.
Schieferdecker discloses in Fig. 1 with associated text a first coating 2 arranged similar to that of Ang that is an antireflective layer (Fig. 1, [0074]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an antireflective layer similar to that of Schieferdecker in place of or in addition to the layer of the first coating layer of Ang because according to Schieferdecker such a layer can on the one hand to allow a particularly high transmission of the cover wafer for the infrared range and are intended to be able to additionally block certain spectral ranges in which, for example, there are transmission losses in the atmosphere that would lead to distance dependency in the measurement of remote object [0038].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON J GRAY whose telephone number is (571)270-7629. The examiner can normally be reached Monday-Friday 9am-4pm.
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, Toledo Fernando can be reached on 5712721867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AARON J GRAY/Examiner, Art Unit 2897
Prosecution Insights