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 Status
Claims 1-2, 5-13, 16-23 are pending where claims 6-8 are withdrawn.
The previous 112(a) rejection of claim 13 has been maintained as applicant did not submit a new set up claims to show that claim 13 has been canceled.
Election/Restrictions
Claims 1-2, 5, 9-12 and 16-23 are allowable. The restriction requirement between the product and the method, as set forth in the Office action mailed on 03/29/2023, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is maintained because the claims are directed to different statutory inventions and requires a different search strategy thus the allowance of claim 1 would not necessarily lead to the allowance of the method claims.
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.
Claim 13 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.
Claim 13 recites “the coating layer is disposed on the synthetic quartz glass substrate so that the coating layer covers an entire surface of the synthetic quartz glass substrate, only on which the transfer pattern is formed”, however the applicant’s specification fails to reasonably convey, disclose, or describe, that the coating layer can be disposed only on the transfer pattern.
Allowable Subject Matter
Claims 1-2, 5, 9-12 and 16-23 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, JP2009263815 (machine translation provided with this office action) discloses a template for imprinting (title) where the base is quartz ([0018]) having a transfer pattern formed on a surface there of (see pattern Fig. 1A), an aluminum oxide ([0072]) coating layer (first film 12) formed by ALD ([0020]) is formed on the pattern (Fig. 1A), where it is known in the art to utilize different materials for the coating layer from the substrate to improve releasability ([0068]). JP2009263815, however, does not explicitly disclose wherein a fracture strength of a portion of the transfer pattern where the coating layer is formed is higher than a fracture strength of the transfer pattern before the coating layer is formed and wherein the coating layer has a thickness of 50 nm or less, and the variation in thickness is within 10% of an average value of the thickness of the coating.
Terasaki et al. (US 20090092791 A1) of record discloses an imprinting mold (abstract) where the thickness selected is capable of canceling stresses at the front surface and the rear surface ([0053]). The instant specification highlights that the fracture strength (Young’s modulus) [0104] of the instant invention is based on the shape and strength of the transfer fine pattern before forming the coating layer and it depends on certain conditions to ensure that there is no breakage in the pattern such that a reproduced imprint mold will have the desired fracture strength [0107]. Thus, Terasaki would not cure the deficiencies of JP2009263815.
Response to Arguments
Applicant's arguments filed 11/14/2025 have been fully considered and are persuasive. The previous 103 rejection has been withdrawn.
Applicant states that claim 13 is cancelled to render the rejection under 35 U.S.C. 103 moot, however in the claims filed 02/26/2025, claim 13 has not been indicated as cancelled. For the purpose of compact prosecution claim 13 has been examined.
Conclusion
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/SUSAN D LEONG/Supervisory Patent Examiner, Art Unit 1754