DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
After the response to the restriction requirement filed on January 20, 2026, claims 1 – 28 are pending. Claims 14 – 21, 22 – 28 have been withdrawn from consideration.
Election/Restrictions
Applicant’s election without traverse of Group I, Species A-1, and Species B-1 in the reply filed on January 20, 2026 is acknowledged.
Claim Interpretation
During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Critical to the claimed invention is the broadest reasonable interpretation of the terms “vapor” and the plain meaning as a whole of “exposing a first MEMS device component to a vapor”. The instant specification recites in the Summary section that the method of manufacturing is centered around exposure of a MEMS device component to a vapor ([0008] – [0009]). However, the instant specification recites as specific embodiments that compounds described within the specification may be applied via solution and/or vapor ([0021]), or deposition by adsorption from a solution from solvent or supercritical liquid ([0026]). Dependent claims recite that the vapor comprises a solvent and also stated in spec that techniques for deposition include evaporative deposition process, a spin-on or spray on process, or any other suitable techniques. In evaporative deposition, evaporated material condenses on a substrate to form a layer. In spin-on, spray-on or dip-on deposition, a coating material is applied, usually from a solvent solution of the coating material, and the solvent is subsequently evaporated to leave the coating material on the substrate ([0043]). Finally, the instant specification recites that coating compounds may exist as a thin layer of liquid in equilibrium with a vapor ([0037]). In other words, the specification convey that vapors are known to be in equilibrium with liquids of the same substance at given temperatures and pressures, especially ambient temperatures and pressures.
In light of the specification as a whole, several definitions among the definitions of the term vapor1 appear consistent with the specification including: 1) The gaseous state of a substance that is liquid or solid at room temperature; and 2) a mixture of fine droplets of a substance and air, as the fuel mixture of an internal-combustion engine. The Examiner also notes that the instant specification defines the term “‘vapor’ phase coating compound”. The instant specification defines the term “‘vapor’ phase coating compound” as a mixture of components that contain a carrier gas (e.g., nitrogen) and a vaporized component that is a solid or liquid at temperatures and pressures near ambient conditions (e.g., STP)” ([0037]). However, the aforementioned term is a more specific term than the claimed “vapor”, especially wherein the “vapor comprises a material…”. In other words, the vapor need not necessarily contain a “vapor phase coating compound”.
Accordingly, the Examiner interprets the term vapor to include steps that would be defined by both plain meaning definitions, including sprayed/aerosolized solution, microdroplets, pure gas phase, droplets, and in-situ vapors generated by evaporation of liquids.
Specification
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.
Claim Objections
Claim 4 is objected to because of the following informalities: the phrase “via an at least one device” should be “via at least one device”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5, 6, 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 5:
The claim recites a further limitation of claim 4 wherein “the heat treatment cycle is an annealing cycle under vacuum and wherein the electrochemical treatment comprises actuating the MEMS device.” It is unclear whether claim 5 requires that the treating step includes both the recited heat treatment and electrochemical treatment or if claim 5 requires either the recited heat treatment or the recited electrochemical treatment. An emergent ambiguity also arises wherein it becomes unclear whether the heat treatment cycle and the electrochemical treatment are allowed to be performed by the same device or allowed to be performed by separate devices.
Regarding claim 6:
The claim requires that the solvent has a specific bulk electrochemical window. However, each and every substance has a unique bulk electrochemical window at standard conditions. The instant specification states that the electrical chemical window should be similar to or greater than that of water, followed by the recitation of from “1.5 volts ….to -2.0 volts”. It is unclear whether the claim requires that the window be exactly 1.5 volts to -2.0 volts, an electrochemical window that is greater than or equal to the claimed window (greater than 1.5 volts, less than -2.0 volts), or an electrochemical window that is less than or equal to the claimed window (i.e. bounded: less than 1.5 volts, greater than -2.0 volts).
Regarding claim 11:
Dependent claim 11 recites a step of “treating the compound and forming the passivation layer in response to the treating”. However, parent claim 9 indicates that the compound is part of an already formed passivation layer. It then becomes unclear whether the recited compound of claim 11 is intended as a precursor and not the same as the compound in the final passivation layer or if the treatment of the compound does not alter the compound’s identity, which points to a lack of antecedent basis as it is unclear where the recited compound originates, rendering the claim indefinite.
Claim Rejections - 35 USC § 102
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 – 4 and 7 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Reid et al. US 2004/0012061 (hereafter “Reid”) as evidenced by N-Methylpyrrolidone Technical Data Sheet (2004), retrieved from http://www.ferromet.com.ar/files/td_eng.pdf (hereafter “NMP-TDS”) and Dimethyl Sulfoxide – Sigma-Aldrich (cached in 2014 – Wayback Machine), retrieved from https://www.sigmaaldrich.com/chemistry/solvents/dimethyl-sulfoxide-center.html (hereafter “Sigma”).
Regarding claims 1, 2, 3, 4, 7:
Reid is directed to micro-electromechanical devices (MEMS) formed on a substrate and methods of forming MEMS, particularly forming anti-stiction materials (Abstract). Reid discloses that hybrid organic-inorganic monomer(s), oligomer and polymer materials in solution may be used as anti-stiction materials ([0007], [0009]). Reid discloses a step of depositing the anti-stiction solution by spraying [vapor exposure under the broadest reasonable interpretation], or by vapor phase deposition ([0123], [0211] – [0213]); followed by curing and/or drying ([0213] – [0215]), exposure to ultraviolet light or annealing (heating) [meeting claims 3 and 4] ([0210]) to form an anti-stiction layer [passivation layer] ([0224], [0221]).
The anti-stiction solution may include inter alia N-methyl-pyrrolidone (NMP) [dielectric constant of 32.2, as evidenced by NMP-TDS page 2] and dimethyl sulfoxide [dielectric constant of 47.24, as evidenced by Sigma] ([0161], [0211]).
Regarding claim 6:
While Reid teaches the use of NMP [N-Methyl-2-Pyrrolidone] above but fails to teach that the electrochemical window of NMP. It is reasonable to presume that the electrochemical window being from -2.0 volts vs SCE cathodic to 1.5 volts vs. SCE anodic (in light of the indefiniteness of the claims) is inherent to Reid. Support for said presumption is found in the use of like materials and like processes (i.e. NMP) which would result in the claimed property. The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the Reid product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim(s) 1, 4, 5, 6, 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Knowlton et al. US2006/0016691 (hereafter “Knowlton”) as evidenced by Dielectric Constants of Liquids. Engineering Toolbox. https://www.engineeringtoolbox.com/liquid-dielectric-constants-d_1263.html (hereafter “Toolbox”).
Regarding claims 1, 4, 5, 8:
Knowlton is directed to methods of electrochemical deposition utilizing microdroplets of solution onto MEMS surfaces (Abstract). The solution may contain non-conductors alongside solvents ([0024]). The solvents may include benzonitrile [“a material” dielectric constant of 25.9, as evidenced by Toolbox] ([0014]). Knowlton further discloses the steps of providing a microdroplet onto a targeted circuit element [vapor exposure under broadest reasonable interpretation] ([0022] – [0023]) and then subsequently electrochemically reacting the solution onto the surface to form a coating of e.g. a non-conductor [passivating film] by placing at least one probe onto the circuit element of a MEMS device where deposition is desired [actuating MEMS device, meeting claims 4 and 5].
Regarding claim 6:
Knowlton teaches the use of benzonitrile above but fails to teach that the electrochemical window of benzonitrile. It is reasonable to presume that the electrochemical window being from -2.0 volts vs SCE cathodic to 1.5 volts vs. SCE anodic (in light of the indefiniteness of the claims) is inherent to Knowlton. Support for said presumption is found in the use of like materials and like processes (i.e. NMP) which would result in the claimed property. The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the Reid product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Allowable Subject Matter
Claims 9 – 10, 12 – 13 are allowed.
Claim 11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 prior art of record does not teach and does not reasonably suggest the method as recited in claim 9; in particular the prior art of record does not teach and does not reasonably suggest a step of forming a passivation layer comprising at least one amino acid from exposure to a vapor.
The closest prior art to the claimed subject matter is Kinlen et al. US 20140315004 A1 (hereinafter “Kinlen”). Kinlen is directed to corrosion inhibiion systems, including coated substrates, coating materials and corrosion inhibition compounds, and methods of making the same. Kinlen discloses that amino acids such as cysteine can be used to form or be dissociated inhibitor groups released from a corrosion inhibition system/composition in order to prevent corrosion, and therefore passivate surfaces ([0013] – [0016], [0038] – [0041]). The dissociated inhibitor groups, as part of corrosion inhibition compounds, may be part of an overall coating (Fig. 1 references 16 and 20, respectively) that can be e.g. sprayed upon a substrate ([0017] – [0019], [0022] – [0025]). However, Kinlen does not offer fair suggestion that their system can be applied to MEMS device, and the other prior art of record does not suggest consideration of amino acids as part of a passivation layer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
1 vapor. (2016). In Editors of the American Heritage Dictionaries (Ed.), The American Heritage (R) dictionary of the English language (6th ed.). Houghton Mifflin. Credo Reference: https://search.credoreference.com/content/entry/hmdictenglang/vapor/0?institutionId=743
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