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 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.
Claims 1-22 are rejected under 35 U.S.C. 103 as being unpatentable over Keidar et al (US 2023/0248249), hereinafter Keidar.
Regarding claim 1, Keidar discloses a method (Para. 0123-0128) comprising:
forming a cavity or recessed surface (Fig. 11, item 152) within a device substrate (Fig. 11, item 150, 151) (Para. 0123-0128);
filling the cavity or recessed surface with a liquid (Para. 0123-0128); and
conformally (Para. 0123-0128) forming parylene on the liquid (Para. 0123-0128) such that the parylene prevents the liquid from leaking (Para. 0123-0128) out of the cavity or recessed surface (Para. 0123-0128), embedding the liquid in the cavity or recessed surface of the device substrate (Para. 0123-0128).
Figure 11 of Keidar does not expressly disclose forming parylene in contact with the liquid. However, Figure 20 and Para. 0161-0162 of Keidar teaches polymer film layers 156 (including parylene) can be directly on and contacting the liquid layer in chamber 152. A person of ordinary skill in the art at the effective filing date of the invention would understand Keidar to teach conformally forming parylene on and contacting the liquid, in order to maximum the biocompatibility of the sensor (Keidar, Para. 0161-0162).
Regarding claim 2, Keidar discloses the method of claim 1, wherein the method includes conformally forming the parylene in a vacuum (Para. 0124).
Regarding claim 3, Keidar does not expressly disclose the method of claim 2, wherein the vacuum has a pressure between 25 mTorr and 100 mTorr.
However, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to set the vacuum to a pressure between 25 mTorr and 100 mTorr, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 4, Keidar discloses the method of claim 1, wherein conformally forming parylene on and contacting the liquid (Para. 0123-0128) includes conformally forming parylene on and contacting combination of the device substrate (Para. 0123-0128) (Fig. 11, parylene layer 156 contacts the substrate) and the liquid in the cavity (Para. 0123-0128) (Para. 0161-0162, Keidar teaches the paylene layer contacting the liquid layer) (Fig. 20) or recessed surface of the device substrate (Para. 0123-0128).
Regarding claim 5, Keidar discloses the method of claim 1, wherein the liquid is static in the cavity or the recessed surface (Para. 0123-0128, the liquid is static in the cavity because the liquid remains within the cavity due to the top layer sealing the cavity).
Regarding claim 6, Keidar discloses the method of claim 1, wherein the liquid flows in the cavity or the recessed surface (Para. 0123-0128, the liquid flows in and into the cavity when the cavity is being filled).
Regarding claim 7, Keidar discloses the method of claim 1, wherein filling the cavity or the recessed surface includes only partially filling the cavity or the recessed surface (Para. 0123-0128, the cavity is only partially filled because the membrane 155 is able to flex and move as the liquid moves within the cavity).
Regarding claim 8, Keidar does not expressly disclose the method of claim 1, wherein the device substrate is a silicon substrate.
However, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to form the substrate out of silicon, since it has been held to be within general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Regarding claim 9, Keidar discloses the method of claim 1, wherein the device substrate is a biocompatible substrate (Para. 0126-0127).
Regarding claim 10, Keidar discloses the method of claim 9, wherein the method includes forming the device substrate as part of a device that is implantable in a human (Para. 0126-0127).
Regarding claim 11, Keidar discloses the method of claim 1, wherein the liquid is a silicone oil (Para. 0126-0127), a liquid metal, a coolant liquid, or a biological liquid.
Regarding claim 12, Keidar discloses the method of claim 1, wherein the liquid has a composition that does not alter under conditions (Para. 0126-0127) for conformally forming the parylene on the liquid in the cavity (Para. 0123-0128).
Regarding claim 13, Keidar discloses the method of claim 1, wherein forming the cavity or recessed surface in the device substrate includes drilling the device substrate (Para. 0093), wet or dry etching the device substrate (Para. 0093), laser etching the device substrate, or three-dimensional printing of the cavity or the recessed surface in the device substrate.
Regarding claim 14, Keidar discloses the method of claim 1, wherein the parylene is parylene-C (Para. 0137).
Regarding claim 15, Keidar discloses the method of claim 1, wherein the parylene is a high temperature parylene (Para. 0137).
Regarding claim 16, Keidar discloses an article of manufacture (Fig. 11) (Para. 0123-0128) comprising:
a device substrate (Fig. 11, item 150, 151) (Para. 0123-0128);
a liquid (Para. 0123-0128) in a cavity (Fig. 11, item 152) or recessed surface of the device substrate (Para. 0123-0128); and
a conformal parylene capping layer (Para. 0123-0128) on the liquid such that the parylene prevents the liquid from leaking out (Para. 0123-0128) of the cavity or recessed surface (Para. 0123-0128), embedding the liquid in the cavity or recessed surface of the device substrate (Para. 0123-0128).
Figure 11 of Keidar does not expressly disclose forming parylene in contact with the liquid. However, Figure 20 and Para. 0161-0162 of Keidar teaches polymer film layers 156 (including parylene) can be directly on and contacting the liquid layer in chamber 152. A person of ordinary skill in the art at the effective filing date of the invention would understand Keidar to teach conformally forming parylene on and contacting the liquid, in order to maximum the biocompatibility of the sensor (Keidar, Para. 0161-0162).
Regarding claim 17, Keidar discloses the article of manufacture of claim 16, wherein the device substrate is a biocompatible substrate (Para. 0126-0127).
Regarding claim 18, Keidar discloses the article of manufacture of claim 16, wherein the liquid is a silicone oil, a liquid metal, a coolant, or a biological liquid (Para. 0126-0127).
Regarding claim 19, Keidar discloses the article of manufacture of claim 16, wherein the conformal parylene is a conformal encapsulating combination (Para. 0123-0128) of the device substrate and the liquid in the cavity or recessed surface of the device substrate (Para. 0123-0128).
Regarding claim 20, Keidar discloses the article of manufacture of claim 16, wherein the liquid is static in the cavity or recessed surface (Para. 0123-0128, the liquid is static in the cavity because the liquid remains within the cavity due to the top layer sealing the cavity).
Regarding claim 21, Keidar discloses the article of manufacture of claim 16, wherein the article of manufacture includes a channel (Fig. 11, item 157) to flow the liquid in the cavity or recessed surface (Para. 0123-0128).
Regarding claim 22, Keidar discloses a method (Para. 0123-0128) comprising:
forming a cavity or recessed surface (Fig. 11, item 152) in a device substrate (Fig. 11, item 150, 151) (Para. 0123-0128) by a material removal process (Para. 0093), by a material additive process, or combination of material removal process and material additive process, the cavity or recessed surface having a top level (Para. 0123-0128);
filling the cavity or recessed surface with a liquid (Para. 0123-0128) to a level below the top level (Para. 0123-0128), the liquid being a composition (Para. 0123-0128) that maintains a structural format of the composition (Para. 0123-0128) under processing conditions for capping the liquid in the cavity (Para. 0123-0128); and
capping the liquid (Para. 0123-0128) in the device substrate by conformally depositing parylene (Para. 0123-0128) on the liquid (Para. 0123-0128) such that the parylene prevents the liquid from leaking out (Para. 0123-0128) of the cavity (Para. 0123-0128), embedding the liquid in the cavity of the device substrate (Para. 0123-0128).
Figure 11 of Keidar does not expressly disclose forming parylene in contact with the liquid. However, Figure 20 and Para. 0161-0162 of Keidar teaches polymer film layers 156 (including parylene) can be directly on and contacting the liquid layer in chamber 152. A person of ordinary skill in the art at the effective filing date of the invention would understand Keidar to teach conformally forming paylene on and contacting the liquid, in order to maximum the biocompatibility of the sensor (Keidar, Para. 0161-0162).
Response to Arguments
Applicant's arguments filed 07/21/2026 have been fully considered but they are not persuasive for the following reasons:
Regarding Applicant’s argument that Keidar does not teach a device substrate, Examiner disagrees. Can 150, 150 of Keidar is a device substrate because can 150, 151 is made of a material and contains a device 120. Applicant asserts that can 150, 151 of Keidar is not a device substrate as used in the instant application, but Examiner disagrees. Can 150, 151 teaches the limitations of the device substrate as claimed. Examiner recommends incorporating further details to define the device substrate. Therefore, the rejection is maintained.
Regarding Applicant’s argument that Keidar does not disclose forming parylene in contact with the liquid, Examiner notes that the above rejection does not state that Keidar discloses forming parylene in contact with the liquid. As stated in the 35 USC 103 rejection above, Figure 11 of Keidar does not expressly disclose forming parylene in contact with the liquid. However, Figure 20 and Para. 0161-0162 of Keidar teaches polymer film layers 156 (including parylene) can be directly on and contacting the liquid layer in chamber 152. A person of ordinary skill in the art at the effective filing date of the invention would understand Keidar to teach conformally forming parylene on and contacting the liquid, in order to maximum the biocompatibility of the sensor (Keidar, Para. 0161-0162). Therefore, the rejection is maintained.
Regarding Applicant’s argument that Keidar does not disclose that transduction medium layer 144 is a liquid, Examiner disagrees. Keidar teaches transduction medium 144 can be parylene, silicone, epoxy, or other polymer deposition (see Para. 0158 of Keidar) and silicone and epoxy can be liquids. Examiner recommends further defining the liquid as claimed. Therefore, the rejection is maintained.
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 VERONICA MARTIN whose telephone number is (571)272-3541. The examiner can normally be reached Monday-Thursday 8:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at (571)270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VERONICA MARTIN/Primary Examiner, Art Unit 3731
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