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 Interpretation
The phrase “displaying…the information” and equivalents has been interpreted as inclusive as displaying Figures that show the information because the claims explicitly contemplate that the display may require more analysis than the mere display of a number—specifically, claim 6 requires that the amount of a bubble is displayed by the size of a circle. Therefore, a picture of merging droplets (e.g. Fig. 9B of Wakamatsu) displays a ratio of the contour of each droplet to the whole circumference.
Claim Rejections - 35 USC § 101
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, 3-4, 6-16, and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a method for simulating a film forming process comprising bringing a plurality of droplets and generating via a model whether the applied droplets merge and displaying this information on a display. This is considered a judicial exception because it falls under a mathematical concept, MPEP 2106(a)(2)(I) applying mathematical concepts. MPEP 2106(a)(2)(I).
In the instant case, Claim 1 is directed to a process:
acquiring, with a processor and a memory communicatively connected to the processor in the computer, various parameters as a condition necessary for a film forming process, performed in a film forming apparatus, of bringing a plurality of droplets of a curable composition arranged on a first member into contact with a second member and forming a film of the curable composition in a space between the first member and the second member;
generating, with a processor and a memory communicatively connected to the processor in the computer, a model of each of the plurality of droplets of the curable composition based at least in part on the acquired various parameters;
calculating, with a processor and a memory communicatively connected to the processor in the computer, for each of the plurality of droplets of the curable composition, on whether the droplet merges with an adjacent droplet utilizing the generated model, and
controlling, with a processor and a memory communicatively connected to the processor in the computer, a display to display an image capable of identifying, for each of the plurality of droplets of the curable composition, whether the droplet merges with an adjacent droplet, wherein the image is generated based on the calculated information.
As drafted, the process is only a mathematical concept or mathematical calculation. “‘[M]athematical concepts’ as judicial exceptions is that a ‘mathematical formula as such is not accorded the protection of our patent laws.’’’ MPEP 21.06.04(a)(2)(I).
Importantly, the judicial exception is also not integrated into a practical application. The claim only recites calculation and modeling of information and displaying it. The courts have indicated that gathering and analyzing information using conventional techniques and displaying the result is not sufficient to show an improvement to technology. MPEP 2106.05(a)(II) (discussing TLI Communications LLC v. AV Auto., LLC, 823 F.3d 607, 612-13 (Fed. Cir. 2016))
Hence, the claims are not patent eligible based on the above reasoning and rationale.
In claim 1 as amended, there is an abstract idea of determining a condition for bringing the plurality of droplets together to form a film. Once the condition is determined, the process is executed according to the condition. While something is being performed, there is no particular practical application. The step is recited at a high degree of generality.
“A claim having broad applicability across many fields of endeavor may not provide meaningful limitations that integrate a judicial exception into a practical application or amount to significantly more. For instance, a claim that generically recites an effect of the judicial exception or claims every mode of accomplishing that effect, amounts to a claim that is merely adding the words "apply it" to the judicial exception. See Internet Patents Corporation v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015)” See MPEP 2106.05(f).
The judicial exception as drafted in amended claim 1 which recites and actual physical step of “ controlling…the film forming apparatus to form a film of the curable composition in the space between the first member and the second member based on the adjusted plurality of parameters...” However this step is well-understood, routine, conventional imprinting step. “The additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.” MPEP 2106.05(d). Additionally the Supreme has explained that the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. MPEP 2106.05(g) (Discussing the seminal case Parker v. Flook).
Re Claim 13, similar to the analysis of Claim 1, there is an abstract idea of determining a condition for bringing the plurality of droplets together to form a film. Once the condition is determined, the process is executed according to the condition. While something is being performed, there is no particular practical application. The step is recited at a high degree of generality.
Re Claim 15, similar to the analysis of Claim 1, there is an abstract idea of determining a condition for bringing the plurality of droplets together to form a film. Once the condition is determined, the process is executed according to the condition. While something is being performed, there is no particular practical application. The step is recited at a high degree of generality.
“A claim having broad applicability across many fields of endeavor may not provide meaningful limitations that integrate a judicial exception into a practical application or amount to significantly more. For instance, a claim that generically recites an effect of the judicial exception or claims every mode of accomplishing that effect, amounts to a claim that is merely adding the words "apply it" to the judicial exception. See Internet Patents Corporation v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015)” See MPEP 2106.05(f).
Claim 16 is directed to computer-readable storage medium (CRM) with a program for performing Claim 1. The use of CRM (a generic computer component) is not considered to be something significantly more. Mere instruction to apply an exception using a generic computer component cannot provide an inventive concept.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-4, 6-16 and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1, 13, 15, and 16, are each amended to contain a limitation regarding “adjusting…at least one parameter of the acquired one or more parameters”, where the parameters include arrangement of droplets, volume of each droplet, or physical properties of the curable composition. However, the specification only contemplates adjusting the arrangement [0050], not the volume or physical properties.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 3-4, 6-10, 13-16 and 18 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Wakamatsu (US 2014/0131313; Wakamatsu).
Claims 1 and 13-16: Wakamatsu teaches a method of controlling a computer [0190-0193], comprising:
Acquiring, with a processor (CPU) and memory communicatively connected to the processor [0190-193], various parameters as a condition necessary for a film forming process, performed in a film forming apparatus, of brining a plurality of droplets of a curable composition arranged on a first member into contact with a second member and forming a film of the curable composition in a space between the first member and the second member (Wakamatsu simulates [0001, 0123-0126] the behavior of droplets in a nanoimprinting method, in which a stamper (second member) is pressed against resist (a film formed from droplets of a curable composition [0047]) coated on a substrate (first member) [0003].);
Calculating, with a processor and memory communicatively connected to the processor [0190-0193], the spreading behavior [0056, 123, 134] of the plurality of droplets of the curable composition based at least on the acquired parameters and calculating, for each of the plurality of droplets of the curable composition, information on whether the droplet merges with an adjacent droplet based on the calculated behavior (the simulation predicts unions of droplets [0126] into a unified film [0123] (understood as being a unified film formed by the merging of many droplets). Fig. 9B shows a ratio of a part contacting a contour of the adjacent droplet to a whole circumference of the contour of the droplet.;
Determining, via the processor and the memory, for each link generated by setting a node at each of the plurality of droplets of the curable composition and connecting the nodes whether the droplets merge with each other (the simulation predicts unions of droplets [0126] into a unified film [0123] (understood as being a unified film formed by the merging of many droplets). Because a uniform film is desired, all droplets are desired to merge with their nearest neighbors. The simulated film is displayed, such that closed links can be identified (See Fig. 9B).;
Determining, via the processor and the memory, for each closed region formed by a plurality of closed links adjacent to each other, an amount of a bubble included in the closed region (Wakamatsu teaches obtaining an amount of a bubble included in a closed region formed by closed links and displaying it as a circle (Figs. 9B,13 [0126, 0134, 0218]).);
Displaying [output 0123], with a processor and a memory communicatively connected to the processor in the computer [0190-0193], the information on whether the droplet merges with the adjacent droplet on a display together with information indicating a spreading state of the droplet (the predicted spread is displayed—see, e.g., Fig. 9B, Fig. 13B and 14B [0218]);
Adjusting, via the processor and the memory, at least one parameter of the acquired one or more parameters, such as the arrangement of droplets [0134] based on an abnormality caused by the bubble to reduce a defect in the film forming process (When the simulation produces abnormalities, the arrangement of droplets may be shifted to reduce the presence of abnormalities [0123, 0131, 0134]);
Controlling, with a processor and a memory communicatively connected to the processor in the computer [0190-0193], the film forming apparatus to form the film of the curable composition in the space between the first member and the second member based on the adjusted parameters [0047-0050, 0058, 0134];
Wherein the various parameters include at least one of an arrangement of the plurality of droplets on the first member [0126] and Fig. 7, a volume of each droplet [0124, 0126], and physical properties of the curable composition (Such as density, viscosity, and surface tension [0123]).
Claim 3: Because a uniform film is desired, all droplets are desired to merge with their nearest neighbors. The simulated film is displayed, such that closed links can be identified (See Fig. 9B). Display of a film with uniform coverage (e.g., Fig. 14) will necessarily indicate that the ratio of closed links to links equals 1.
Claim 4: Figs 9B, 13B, and 14 show the displayed information in color (gray).
Claim 6: Wakamatsu teaches obtaining an amount of a bubble included in a closed region formed by closed links and displaying it as a circle (Figs. 9B,13 [0126, 0134, 0218]).
Claim 7: The process determines the presence/absence of abnormalities, such as filling defects and bubbles in the behavior of the curable composition in the process based on the calculated information [0005, 0123, 0126, 014, 0218].
Claim 8: Figs. 9B, 13, and 14 display information indicating the states of the plurality of droplets (whether or not they have merged) and the presence (Fig. 13B) or absence (Fig. 14B) of the abnormality such as gas bubbles in the behavior of the curable composition in the process [0005, 0123, 0126, 014, 0218].
Claim 9: The simulation identifies the location of the droplets where the abnormality occurs. See Fig. 9B, 13B, [0218].
Claim 10: The droplet where the abnormality occurred may be distinguished from the droplet where no abnormality occurred (Fig. 9B).
Claims 13-14: Wakamatsu teaches a system comprising a memory and a processor [0190-0193] for performing the steps of claim 1, which are substantially duplicated in claim 13. It then performs the imprinting process [0047-0050, 0058].
Claim 15: Wakamatsu discloses that after setting a predetermined droplet arrangement pattern (i.e., condition) based on the simulation method, the droplets are arranged on a substrate. [0047-0050, 0058, 0134, 0157].
Claim 16: The computer controlling the method of claim 1 may be on non-transitory media, such as a hard disk [0192].
Claim 18: The droplets are arranged in a two-dimensional pattern (Fig. 9).
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.
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.
Claims 4, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wakamatsu ‘313 as applied to claims 1, 3, and 10 above, and further in view of Isogai (US 2012/0083667).
Wakamatsu teaches the limitations of claims 1, 3, and 10, as discussed above, but does not explicitly teach displaying the detected abnormality in a different color or via blinking. However, it is very well known in displaying information to display the information that deserves attention in a different color (such as red) or by blinking. See, for example, Isogai ‘667, which seeks to draw attention to a detected abnormality by displaying in a different color or via blinking [0039].
Therefore, it would have been obvious at the time of filing the instant invention to have displayed the defects simulated by Wakamatsu by displaying in a different color or via blinking in order to draw attention to the defect.
Response to Arguments
Applicant's arguments filed 10/24/25 have been fully considered but they are not persuasive.
Applicant argues that the claims integrate the abstract idea into a practical application.
The argument is unconvincing because the claims are claims that generically recites an effect of the judicial exception or claims every mode of accomplishing that effect, amounts to a claim that is merely adding the words "apply it" to the judicial exception.
Applicant argues that [0003, 0005-0007, 0050, 0083, 0087-0089] teach that adjusting by trial and error using the actual apparatus is time-consuming and costly. However, the adjustment is a well-understood, routine, conventional simulation step, recited at a high level of generality. There is nothing tying the calculations done to the adjustments that are made. Insofar as the amended claims recite more particular calculations, there is no nexus claimed or disclosed of how to use these calculations to select the adjusted arrangement. The method checks for merging and the formation of bubbles, and if the result is unsuitable, picks another one. However, this is exactly what is described by Wakamatsu. The concept of doing computer simulations to find operative conditions is well known. In the instant application, no particular means or method of adjusting is claimed or disclosed. “The additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.” MPEP 2106.05(d). Additionally the Supreme Court has explained that the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. MPEP 2106.05(g) (Discussing the seminal case Parker v. Flook).
Applicant argues that Ex parte Desjardins forbids analysis of prior art and that prior art does not transform a technological improvement into an abstract idea. The argument is unconvincing because in Ex parte Desjardins, it was concluded that the claims represented an improvement in the technology over conventional systems. (See pp. 7-9) In this case, they do not, as discussed above.
Applicant argues that Wakamatsu does not teach calculating a ratio of contour to total circumference for each droplet. The argument is unconvincing because the information may be calculated and displayed symbolically (see original claims 5-6). Wakamatsu displays the ratio in Fig. 9B.
Applicant argues that Wakamatsu does not determine closed links between droplets. The argument is unconvincing because Wakamatsu displays the merging behavior, including the union of droplets [0126] so it has calculated which droplets have merged [0056, 123, 134].
Applicant argues that the closed links are essential for detecting trapped pockets that form bubbles. The argument is unconvincing because Wakamatsu detects bubbles of residual gas (Figs. 9B,13 [0126, 0134, 0218]).
Applicant argues that Wakamatsu does not teach quantifying the bubble risk in each region. The argument is unconvincing because nothing about “bubble risk” is claimed. Applicant argues that Wakamatsu does not disclose merge ratio information, closed region identification, or bubble amount data. The argument is incorrect because Fig. 13 shows bubble amounts (8) present in a film (7) of merged droplets [0218].
Applicant argues that Wakamatsu does not teach reducing bubble defects. The argument is unconvincing because it is incorrect. It is clear that Wakamatsu repeats its calculations until it finds one without bubbles (Fig. 14, [0134, 0218]).
Applicant argues that Wakamatsu does not disclose calculation of a numerical ratio. The argument is unconvincing because original claims 5-6 make it clear that the instant claims calculations need not be numerical.
Applicant argues that Wakamatsu never uses the term “nodes” or “links” in its description of merging. The argument is unconvincing because it is a difference only in terminology. Wakamatsu teaches droplets. The claims define the nodes as the positions of the droplets. Wakamatsu clearly sets an arrangement of droplets, and therefore had “nodes” even if it did not use the term. Likewise, the claims define each link is a combination of nodes, Wakamatsu has an array of nodes, every combination of which is a “link”, even if it did not use the term. Likewise, the claims define each closed link as a link that merged. Wakamatsu calculates and displays the merge behavior (Figs. 13-14). Therefore it has calculated which links are “closed”, even if it does not used the term. In the desired embodiment (Fig. 14), the film is completely merged and so, all its links are closed.
Applicant argues that [0126], [0134, and [0218] teach unions of droplets and spreading but doesn’t teach bubbles or closed regions. The argument is unconvincing because Fig. 13 shows “defects” which are circular and made of “residual gas” [0218]. There are bubbles, even if Wakamatsu does not use the term. As discussed above, the claims discuss closed links as merged droplets. Wakamatsu calculates and displays the merge behavior (Figs. 13-14). Therefore it has calculated which links are “closed”, even if it does not used the term. In the desired embodiment (Fig. 14), the film is completely merged and so, all links are closed.
Regarding the Asano references, the arguments are convincing. Perfection of the foreign priority documents overcomes the rejections under 35 USC 102(a)(1) and the statement of common ownership overcomes the rejections under 35 USC 102(a)(1). The art rejections based on the Asano references are withdrawn.
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 MICHAEL B CLEVELAND whose telephone number is (571)272-1418. The examiner can normally be reached Monday-Friday; 9:00 am - 5:30 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, Alexa Neckel can be reached on 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B CLEVELAND/Supervisory Patent Examiner, Art Unit 1712