DETAILED ACTION
In the amendment filed on July 13, 2026, claims 1 – 13, 29 – 30 are pending. Claims 1, 2, 4 – 8, 10, 11 have been amended and claims 14 – 28 have been canceled. Claims 29 – 30 have been added.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
Repeating the previous Office Action, 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.
Claim Objections
The objection to claim 4 is withdrawn due to Applicant amendment of the claim.
Claim Rejections - 35 USC § 112
The rejections of the claims under 35 USC § 112 in the previous Office Action are withdrawn due to Applicant amendment.
Claim Rejections - 35 USC § 102
The rejections of claims 1, 4, 5, 6, 8 under 35 USC § 102 as being anticipated by Knowlton et al. US2006/0016691 (hereafter “Knowlton”) in the previous Office Action are withdrawn due to Applicant amendment.
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, 6, 7, 29 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], [0203], [0211]). Reid also discloses that solvents used within the solution for deposition include: dibutyl ether, mesitylene, toluene and perfluorotoluene ([0136], [0161], [0209]).
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 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 Rejections - 35 USC § 103
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, 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.
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.
Claim(s) 1, 4, 6, 8, 29, 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over 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, 8, 29, 30:
Knowlton is directed to methods of electrochemical deposition utilizing microdroplets of solution onto MEMS surfaces (Abstract). The solution may contain non-conductors alongside one or more 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 30].
Knowlton does not expressly teach an embodiment wherein solutions include additional solvents alongside benzonitrile specifically.
However, as discussed above, Knowlton does expressly disclose that the electrolyte solutions may include other known solvents, e.g. tetrahydrofuran.
Therefore, a prima facie case of obviousness exists to combine the use of two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)
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 Knowlton product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reid as applied to claims 1 – 4, 6, 7 above, and further in view of Wang et al. US 2018/0105541 (hereafter “Wang”).
Regarding claim 5:
Reid discloses that the anti-stiction materials on MEMS surfaces are formed from one or more silicon compound precursors and involve metal oxide three dimensional bonds and/or inorganic crosslinking such as an Si – O – Si bond (Abstract); that the compound precursors may be annealed after deposition at a temperature of preferably 200°C or less ([0210]); and that the resultant films can be post-baked in atmospheres such as air, nitrogen, argon or helium for final hardening ([0221]).
Reid does not expressly teach that when the treating is via a heat treatment, the heat treatment is an annealing cycle under vacuum, or alternatively when the treating is via an electrochemical treatment, the electrochemical treatment comprises actuation of the MEMS device.
Within the analogous art, Wang is directed to compositions and methods of forming silicon oxide films (Abstract) for purposes such as passivation layers ([0110]) in devices such as MEMS ([0110]). The films are made using an organo-silicon precursor that may be vapor deposited onto a substrate using vapor deposition processes such as plasma enhanced cyclic chemical vapor deposition (Abstract; [0017] – [0020], [0035], [0095]). After deposition, Wang discloses that the resultant silicon oxide film may be annealed to increases properties such as density ([0100] – [0101]). The annealing process can be conducted in a vacuum or inert environment ([0102]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the annealing step of Reid to use specifically a vacuum annealing cycle as the annealing step as taught by Wang because the specific annealing method of vacuum annealing has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to the Reid method in the prior art and the results would have been predictable to one of ordinary skill in the art.
Allowable Subject Matter
Claims 9 – 13 are allowed.
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.
Response to Arguments
Applicant's arguments filed July 13, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
a.) Neither Reid nor Knowlton disclose such a vapor to which a MEMS device component is exposed, followed by forming "a passivation layer on at least one exposed surface of the MEMS device component,"
In response to the applicant's arguments, please consider the following comments.
a.) Contrary to Applicant’s argument, Reid clearly indicates that additional solvents may be incaluded ([0136], [0161], [0209]). Applicant’s arguments pertaining to Knowlton are partially convincing. However, Knowlton renders obvious the present claim in the manner discussed 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 extension fee 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 date of this final action.
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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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