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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-10 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (US 2002/0106834) in view of Osaka et al. (US 2012/0031764 – previously cited) and claims 13-20 are rejected over Chiu and Osaka further in view of Carlson et al. (US 2008/0250785).
Considering claims 1 and 23, Chiu teaches switches for light beams used in micro-electro-mechanical systems having both electrical and mechanical components (Paragraphs 1-2). An embodiment is taught in Figure 11A (reproduced below) of an actuator having cantilever (55) (i.e. a beam) (Paragraph 68) configured to move in response to heating via electrical current (Paragraph 69) to raise when heated and lower upon current removal (Paragraphs 70-71) (e.g. configured to be cantilever mounted to a substrate with a second movable end). The cantilever comprises second portion (82) (i.e. a first layer) of metal (Paragraphs 67-68) and electrical conduit (83) thereon of Cu, Cr, etc. (i.e. materials absent Ni) (Paragraph 69). The metal materials comprise Au, etc. (Paragraph 52). However, Chiu does not teach the claimed nickel content.
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In a related field of endeavor, Osaka teaches gold alloys with excellent electrical and mechanical properties (abstract) used in electrical contacts for electrical components (Paragraph 2). The gold alloy comprises Ni and/or Co in an atomic amount of 1-80% (Paragraph 47). The alloy displays improved hardness and abrasion resistance while having good electrical conductivity (Paragraph 19).
As both Chiu and Osaka teach electronic devices they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Chiu with the gold alloy taught by Osaka as this is known to improve hardness and abrasion resistance while having good electrical conductivity and one would have had a reasonable expectation of success. Further, the Ni amount taught by modified Chiu overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claims 2 and 24, Chiu teaches where (83) may comprise Au (Paragraph 69).
Considering claims 3-4, modified Chiu does not expressly teach the claimed modulus of elasticity. However, modified Chiu teaches 1st and 2nd layers of metals overlapping the claimed composition substantially identical to those which claimed and therefore the difference in modulus of elasticity is expected to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claim 5, Osaka teaches where the alloy is microcrystalline with an average grain particle size of no greater than 30 nm (Paragraph 44) and is considered nanocrystalline given the size of the particle and as no particular crystal size is claimed. See MPEP 2111.01.
Considering claims 6-7, modified Chiu does not expressly teach the claimed thicknesses. However, the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A) and Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). It is the examiner’s position that the claimed thickness does not provide a patentable distinction over the prior art.
Considering claims 8-9, the recitations of “being deposited by…” are considered product-by-process limitations and are not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the final structure of the claimed beam. See MPEP 2113. Chiu also teaches where the layers may be formed by electroplating or electroless plating (Paragraph 96).
Considering claim 10, Osaka teaches where the gold alloy comprises Ni and/or Co in an atomic amount of 1-80% (Paragraph 47)
Considering claim 13, the teachings of modified Chiu regarding the materials and structure of the beam for a MEMS switch are outlined above. However, modified Chiu does not teach the claimed method of depositing the metal layer on a seed layer.
In a related field of endeavor, Carlson teaches MEMS switch devices using a gold alloy (abstract) including actuators, etc. (Paragraph 5). The device is formed with a spring cantilever over gold features (Paragraph 60) and the gold alloy features are formed by a method of electroplating on an underlying copper seed layer (Paragraph 59).
As Chiu, Osaka, and Carlson teach electrical devices with gold alloys they are considered analogous. It would have been obvious to one of ordinary skill in the art to further modify the teachings of Chiu and Osaka with the process of using a seed layer as taught by Carlson as this is considered a combination of conventionally known elements according to known methods and one would have had a reasonable expectation of success.
Considering claim 14, Chiu teaches where (83) may comprise Au (Paragraph 69).
Considering claims 15-16, Chiu teaches where the layers may be formed by electroplating or electroless plating (Paragraph 96).
Considering claims 17-18, modified Chiu does not expressly teach the claimed modulus of elasticity. However, modified Chiu teaches 1st and 2nd layers of metals overlapping the claimed composition substantially identical to those which claimed and therefore the difference in modulus of elasticity is expected to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claims 19-20, Osaka teaches where the gold alloy comprises Ni and/or Co in an atomic amount of 1-80% (Paragraph 47) and where the alloy is microcrystalline with an average grain particle size of no greater than 30 nm (Paragraph 44) and is considered nanocrystalline given the size of the particle and as no particular crystal size is claimed. See MPEP 2111.01.
Response to Arguments
Applicant’s arguments, see remarks p.5, 2nd section – p.7 , filed 28 July 2026, with respect to the rejection(s) of claim(s) 1, 4, and 8-9 under 35 USC 102(a)(1) in view of Sano and claims 1-10, 12-20, and 22 in view of Sano and/or Yoshitake in view of Osaka have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. Applicant has amended the claims to recite atomic contents of Ni in the second layer not disclosed by primary references of Sano and Yoshitake. However, upon further consideration, a new ground(s) of rejection is made in view of Chiu, Osaka, and Carlson as outlined above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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