CTNF 18/758,421 CTNF 85247 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Summary This is the initial Office action based on application 18758421 filed 6/28/24. Claims 1-20 are pending and have been fully considered. Information Disclosure Statement IDS filed on 6/28/24 have been considered by the examiner and copies of the Form PTO/SB/08 are attached to the office action. Drawings The Drawings filed on 6/28/24 are acknowledged and accepted by the examiner. Specification 06-31 AIA The Specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01 Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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. 07-21-aia AIA Claim s 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over JACOBS ET AL. (US PG PUB 20210371275) in combination with MAYER ET AL. (US PG PUB 20070275495), and further in view of PARK ET AL. (US PG PUB 20200177155) in their entirety. Hereby referred to as JACOBS, MAYER and PARK . Regarding claims 1-20: JACOBS teaches in para [0003] The mechanical performance of the moving elements within a MEMS device can be compromised by unintended adhesion. This type of adhesion can be reduced by coating contacting elements of the MEMS device with a coating, such as a passivating agent or lubricant. The coating can be added to address several problems with device operation. JACOBS teaches in para [0007] In additional examples of a method of manufacturing a MEMS device, the method comprises: exposing at least one contact surface of a MEMS device component to an organic compound comprising at least one ionic region and at least one hydrophobic region; actuating the vapor in contact with the at least one contact surface of the MEMS device component; and forming, in response to the actuation, a passivation film on the at least one contact surface. JACOBS teaches in para [0019] On a micrometer or smaller scale, atomic level and microscopic level forces between surfaces in contact become significant. Problems related to these types of forces are accordingly relevant to micromechanical devices, such as microelectromechanical system (MEMS) and nanoelectromechanical system (NEMS) devices. A MEMS device includes one or more MEMS elements in addition to other elements. JACOBS teaches in para [0020] MEMS and/or semiconductor components, which can experience repeated physical contact between moving parts, may use a coating compound for lubrication to reduce or prevent stiction and/or dynamic friction. Various elements in these devices often interact with each other during operation at frequencies between a few hertz (Hz) and a few gigahertz (GHz). JACOBS teaches in para [0021] In MEMS manufacturing, conventional techniques may focus on modifying an oxide surface of a MEMS element with an organic material. Such organic material may bind or interact directly with the metal oxide or metal surface of the MEMS element. In contrast, at least some example embodiments described herein are directed towards using a compound in a carrier solvent, and forming a film in areas of contact on a MEMS device (which includes at least one MEMS element). MEMS elements and devices that include MEMS elements, such as radio frequency MEMS (RFMEMS) devices, may be actuated via contact interfaces, which can degrade as a consequence of water accumulated during the manufacturing, assembly and/or testing process. The film described herein acts to reduce surface energy at the contact interfaces and to provide a medium that can moderate the occurrence of deleterious reactions by stabilizing charge across a wider potential range than adsorbed water. The film(s) adsorbed herein may be referred to as: (a) “surface” film(s), because it forms on exposed areas of a MEMS device; or (b) “passivation” film(s) or layer(s) based upon the film's functionality. These exposed areas may be referred to as parts of a substrate or an exposed surface. Conventional methods may use acidic passivation, in contrast to ionic compounds, organic compounds including at least one ionic region and at least one hydrophobic region, long-chain alcohols, and/or amino acids described herein and used in example embodiments. The films and layers described herein are collectively referred to as “compounds” or “coating compounds.” JACOBS teaches in para [0055] In another example, a MEMS device includes: a MEMS component including a surface; a passivation layer on at least a portion of the surface, wherein the passivation layer includes a compound including an alkyl nitrile. The MEMS component includes at least one of an actuator, a motor, an RF switch, a sensor, a variable capacitor, an optical modulator, a microgear, an accelerometer, a transducer, a fluid nozzle, a gyroscope, a digital micromirror device or any combination thereof. In an example, the alkyl nitrile includes leucine. In a further example, the passivation layer is formed from a precursor that includes N-methyl pyrrolidinone (N-methyl butyrolactam), N-octyl pyrrolidinone (N-octyl butyrolactam), or propylene carbonate. MAYER teaches in FIG. 6 an integrated CMOS/pressure sensor [abstract]. Examiner notes that although the MEMS acronym was not explicitly disclosed, however, the entire disclosure related to micron-sized pressure sensor integrated on a CMOS substrate, which is inherently a microelectromechanical system (MEMS) device. The microelectromechanical system (MEMS) device of MAYER disclosure is comprising a substrate 1; a dielectric layer 7, 8, 9 and 11 silicon oxide being formed on the substrate 1 [0032], and being formed with a cavity 18 that is defined by a cavity-defining wall, referring to FIG. 6 [0032]; an electrode 10 formed in the dielectric layer 7, 8, 9 and 11. Examiner notes that although the dielectric layer is formed of layered structure, however, all are made of silicon oxide that makes the layered structure 7, 8, 9 and 11 as a layer that has the electrode 10 formed therein; and a membrane "made of silicon" 17 connected to the dielectric layer and sealing the cavity, the membrane being movable toward or away. It is inherent for the membrane 17 performing the pressure sensing function to move toward or away from the electrode 10, i.e. vibrate. MAYER teaches a method for making a microelectromechanical system (MEMS) device, the method comprising: sealing the cavity with a membrane 17, the membrane 17 being connected to the dielectric layer 7, 8, 9 and 11 and being movable toward or away from the electrode. It would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the silicon oxide substrate of MAYER in the MEMS of JACOBS since MAYER micron-sized pressure sensor integrated on a CMOS substrate is inherently a microelectromechanical system (MEMS) device. JACOBS in combination with MAYER teaches in para [0003] The mechanical performance of the moving elements within a MEMS device can be compromised by unintended adhesion. This type of adhesion can be reduced by coating contacting elements of the MEMS device with a coating, such as a passivating agent or lubricant – of JACOBS. However, JACOBS in combination with MAYER do not teach a thickness range, however PARK does. PARK teaches an acoustic resonator, wherein the surface modification layer 130 has a uniform thickness in order to avoid resonator performance deviation. PARK does not disclose the exact surface modification layer 130 thickness. However, since the surface modification layer 130 thickness affects the resonator performance, i.e. is a result effective variable. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to use the claimed thickness range, absent unexpected results and since the surface modification layer 130 thickness is being established as a result effective variable, since it has been held that discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233; In re Boesch, 617. PARK teaches a MEMS-based acoustic resonator, wherein the surface modification layer is a self-assembled monolayer that has a plurality of head groups connected to the cavity-defining wall and the hydrophobic end groups respectively connected to the head groups, the head groups including silane or alkyl, referring to FIG.16 [0154-0163 and 0218]. From the teachings of the references it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date, as evidenced by the references, especially in the absence of evidence to the contrary. In addition, it would have been obvious to one of ordinary skill in the art to modify the process by varying the claimed ranges; however, no patentable distinction is seen to exist between the reference and the claimed invention absent evidence to the contrary. Especially, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Furthermore, the claimed changes in the sequence of performing steps is considered to be prima facie obvious because the time at which a particular step is performed is simply a matter of operator preference, especially since the same result is obtained regardless of when the step occurs. See Ex parte RUBIN, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). With regard to any differences in the claimed conversion amounts, the skilled artisan would have found it obvious to modify the process conditions in order to obtain the desired conversions. Moreover, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33 (CCPA 1937). In re Russel, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971) Still, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) Additionally, “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). In In re Young, a claim to a machine for making concrete beams included a limitation to the concrete reinforced members made by the machine as well as the structural elements of the machine itself. The court held that the inclusion of the article formed within the body of the claim did not, without more, make the claim patentable In conclusion, an intended result of a process being claimed does not impart patentability to the claims when the general conditions of a claim are disclosed in the prior art. Furthermore, it has been held that obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art process and composition. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd.Pat. App. & Inter. 1985). Therefore, it would have been obvious to the person having ordinary skill in the art to have selected appropriate conditions, as guided by the prior art, in order to obtain the desired products. It is not seen where such selections would result in any new or unexpected results. Please see MPEP 2144.05, II: noting obviousness within prior art conditions or through routine experimentation. If it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANTEL GRAHAM whose telephone number is (571)270-5563. The examiner can normally be reached on M-TH 9:00 am - 7:00 pm. 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, Prem Singh can be reached on 571-272-6381. 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. /CHANTEL L GRAHAM/ Examiner, Art Unit 1771 /ELLEN M MCAVOY/Primary Examiner, Art Unit 1771 Application/Control Number: 18/758,421 Page 2 Art Unit: 1771 Application/Control Number: 18/758,421 Page 3 Art Unit: 1771
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