DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of claims 1-11 & 15 in the reply filed on 07/07/26 is acknowledged. The traversal is on the ground(s) that the Examiner has failed to establish a factual basis for the lack of unity. This is not found persuasive in light of rejection of claim 1 below. Rejection of claim 1 below is the proof beyond reasonable doubt that the two inventions lack unity as they do not share a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-14 & 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/07/26.
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.
Claims 1-11 & 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by (US-2012/0175715) by Hammond et al (“Hammond”).
Regarding claim 1, Hammond discloses in FIG. 6C and related text, e.g., a package for a Microelectromechanical System, MEMS, device (Title, Abstract) comprising:
a cap layer (166) and the MEMS device (switch) below the cap layer;
at least two electrodes (various portions of 98) on a surface of the MEMS device to enable electrical functioning of the MEMS device (by definition), wherein each electrode is located on a horizontal plane and comprises metal (par. 26) to enable formation of an air-path (“air path” is directly to the right of the right most portion of 98, continuing to the 168);
the air-path between the cap layer and the MEMS device to enable releasing of the MEMS device (compare FIGs. 6A-C), at least a part of the air-path being on the same horizontal plane wherein the at least two electrodes are located (as mentioned above); and
a side access port (168) connected to the air-path (as described above) to enable releasing of the MEMS device (compare FIGs. 6A-C), wherein the side access port goes through the cap layer (it goes through 166).
Regarding claim 2, Hammond discloses in FIG. 6C and related text, e.g., wherein said metal of each electrode comprises a part of at least one MEMS electrode line (see FIG. 5A; by definition; “electrode” and “electrode line” are mutually substitutable terms; one can call, for example, the right most portion of 98, to be both an “electrode” (say left half) and “electrode line” (say the right half; or vice versa); same for every other portion of 98; one can define as many “electrode” and “electrode lines” as one wants; the term “electrode” is notoriously broad).
Regarding claim 3, Hammond discloses in FIG. 6C and related text, e.g., wherein said metal comprises a part of at least one dummy electrode line (by definition; whichever parts of 98 were removed, can be considered “dummy electrode line” by definition, since they were removed).
Regarding claim 4, Hammond discloses in FIG. 6C and related text, e.g., wherein the air-path is formed (as was described above).
Regarding the process limitations of "by etching at least one other part of the at least one dummy electrode line", these would not carry patentable weight in this claim drawn to a structure, because distinct structure is not necessarily produced.
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 USPQ685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al., 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that 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 the applicant has the burden of proof in such cases, as the above case law makes clear.
Regarding claim 5, Hammond discloses in FIG. 6C and related text, e.g., an air gap between the at least two electrodes (the various portions of 98 show at least 2 gaps between them; either reads on “air gap”).
Regarding claim 6, Hammond discloses in FIG. 6C and related text, e.g., a sealing layer (FIG. 6D, 170) arranged to cover at least the cap layer and the side access port (see FIG. 6D).
Regarding claim 7, Hammond discloses in FIG. 6C and related text, e.g., a cavity on an upper surface of the MEMS device (above 98 and below 166 can be considered a cavity), wherein the cavity is in between the cap layer and the MEMS device (it is between 166 and the 116 portion of the MEMS device; thus meeting limitations) and the side access port is outside the cavity (168 is separated from cavity by the air path (horizontal portion of “air” directly below 168).
Regarding claim 8, Hammond discloses in FIG. 6C and related text, e.g., wherein the side access port is separated from the cavity (by the “air path”, as was explained directly above).
Regarding claim 9, Hammond discloses in FIG. 6C and related text, e.g., wherein the air-path goes through a side of the cavity (bottom side of cavity; air path is to the right side of 98; hence, below the bottom side of cavity, thus meeting limitations) and is connected to the side access port outside the cavity (connected to 168, as described above).
Regarding claim 10, Hammond discloses in FIG. 6C and related text, e.g., wherein the side access port is vertical (168 is vertical) and the air-path is horizontal (the portion of “air” directly below 168 is horizontal).
Regarding claim 11, Hammond discloses in FIG. 6C and related text, e.g., wherein the package is a thin film package (by definition; see par. 21 to see thicknesses involved; they are all extremely thin; hence, “thin film package” by definition).
Regarding claim 15, Hammond discloses in FIG. 6C and related text, e.g., the air-path (directly below 168, as was discussed above).
Regarding the process limitations of "wherein xenon difluoride, XeF2, is used to form the air-path", these would not carry patentable weight in this claim drawn to a structure, because distinct structure is not necessarily produced.
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 USPQ685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al., 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that 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 the applicant has the burden of proof in such cases, as the above case law makes clear.
Conclusion
Additional references (if any) are cited on the PTO-892 as disclosing similar features to those of the instant invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Belousov whose telephone number is (571)-272-3167. The examiner can normally be reached on 10 am-4 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Jeff Natalini can be reached on 571-272-2266. 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. Should you have questions on access to the 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.
/Alexander Belousov/Patent Examiner, Art Unit 2894
09/14/26
/JEFF W NATALINI/Supervisory Patent Examiner, Art Unit 2818
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