DETAILED ACTION
Non-Final Rejection
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
Claims 1-7 and 15-20 have been canceled as they were drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 18 July 2025.
Newly submitted claims 21-33 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 21 requires a silicon on insulator (SOI) wafer not present in elected independent claim 8. Claim 28 requires a silicon on insulator (SOI) wafer not present in elected independent claim 8 and an intermetal dielectric (IMD) layer not present in elected independent claim 8 nor newly proposed independent claim 21.
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 Accordingly, claims 21-33 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
The inventions are independent or distinct, each from the other because:
Inventions II (Claims 8-14) and newly added Invention IV (Claims 21-27) are directed to related processes. 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 can have a materially different design, mode of operation, function, or effect. Invention II (Claims 8-14) do not require the presence of a silicon on insulator (SOI) wafer as a base upon which to add layers. Invention IV (Claims 21-27) require a silicon on insulator (SOI) wafer as the foundation upon which the initial one or more layer is formed. 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 (Claims 8-14) and newly added Invention V (Claims 28-33) are directed to related processes. 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 can have a materially different design, mode of operation, function, or effect. Invention II (Claims 8-14) do not require the presence of a silicon on insulator (SOI) wafer as a base upon which to add layers, nor the step of forming an intermetal dielectric (IMD) layer on the valve actuator. Invention IV (Claims 21-27) require a silicon on insulator (SOI) wafer as the foundation upon which the initial one or more layer is formed as well as the step of forming an intermetal dielectric (IMD) layer on the valve actuator. 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 (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Furthermore, the search and/or examination burden is not limited exclusively to a prior art search but also includes that effort required to apply the art by making and discussing all appropriate grounds of rejection. Multiple inventions, such as those in the present application, normally require additional reference material and further discussion for each additional invention examined. Concurrent examination of multiple inventions would thus typically involve a significant burden even if all searches were coextensive. However, in the present application, the prior art search is not coextensive.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 21 June 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The abstract of the disclosure is objected to because the abstract should not refer to speculative applications of the invention. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 8-10 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kampfe (U.S. Patent Publication 2023/0013976).
Regarding claim 8, Kampfe discloses a method, comprising:
forming an isolation layer 101 over a substrate 100;
forming, over the isolation layer, a bottom electrode 104 of a piezoelectric valve;
forming, on the bottom electrode, a piezoelectric-based actuation layer 105 of the piezoelectric valve;
forming, on the piezoelectric-based actuation layer, a top electrode 106 of the piezoelectric valve;
removing, after forming the top electrode, portions of the isolation layer and portions of the substrate to form a valve actuator 110 of the piezoelectric valve (FIG. 1f-1h); and
attaching a valve vane to the valve actuator (FIG. 1, 5, 6, 9; Paragraph 44, 47-54, 60-61).
Regarding claim 9, Kampfe discloses a coefficient of thermal expansion (CTE) mismatch between the piezoelectric-based actuation layer and the bottom electrode and the top electrode results in bending of the valve actuator after removal of the portions of the isolation layer and the portions of the substrate to form the valve actuator (FIG. 6, 9; Paragraph 53).
Regarding claim 10, Kampfe discloses the bending of the valve actuator biases the valve vane being against a valve body of the piezoelectric valve (FIG. 6, 9).
Regarding claim 13, Kampfe discloses attaching the valve vane to another valve actuator of the piezoelectric valve (FIG. 12).
Regarding claim 14, Kampfe discloses removing, after attaching the valve vane, portions of a backside of the substrate to form a valve cavity of the piezoelectric valve (FIG. 1-5).
Allowable Subject Matter
Claims 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art fails to anticipate or make obvious attaching the valve vane to the valve actuator comprises: bonding standoff pads of the valve vane with bonding pads on the valve actuator, along with the other limitations of the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Xu (U.S. Patent Publication 2004/0164650) discloses a method of manufacturing a piezoelectric array, element, or device similar to the method disclosed in the present application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER D BALLMAN whose telephone number is (571)272-9984. The examiner can normally be reached Mon-Fri 6:00-3:00.
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, Craig M Schneider can be reached at 571-272-3607. 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.
/CHRISTOPHER D BALLMAN/Examiner, Art Unit 3753
/CRAIG M SCHNEIDER/Supervisory Patent Examiner, Art Unit 3753
Prosecution Insights