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 .
Claims 13-17 and 20-34 are pending. Claims 1-12, 18, and 19 have been canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 17 depends on claim 13, and recites the limitation “wherein the thickness of the opaque material varies across at least one of the length or the width of the transparent substrate”.
Claim 13 recites a layer of opaque material in a transparent substrate, and “a pattern of micro- or nano-patterned indentations that locally reduce the thickness of the opaque material in indented regions while increasing the thickness of the opaque material in adjacent regions”.
The variation in thickness of the opaque material on the transparent substrate in claim 13 means that the thickness of the opaque material varies across at least one of the length or the width of the transparent substrate.
Therefore, claim 17 fails to further limit the subject matter of claim 13.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
Claims 13, 14, 17, 32, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. (US 2010/0308009).
With regard to claims 13, 14, and 17, Zhu et al. teach a process comprising the steps of:
-providing a substrate (30) and forming a resist (330) on the substrate (30);
-providing a master stamp (20) with a nanopattern (208);
-pressing the nanopattern (308) in the resist (330) and forming the nanopattern (308) in the resist (330)(par.0082-0083, fig.6A-6C).
The substrate (30) may be quartz (par.0058), and it meets the limitations for the “transparent substrate” in claim 13, and the limitations of claim 14.
Zhu et al. do not specifically teach that the negative or a positive nanoimprint resist is opaque.
However, there are only two possibilities: the resist is transparent or the resist is opaque.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use an opaque resist in the process of Zhu et al., with a reasonable expectation of success.
The step of providing a substrate (30) and forming a resist (330) on the substrate (30) of Zhu et al. is equivalent to the steps of “providing a transparent substrate” and “depositing a layer of opaque material on the transparent substrate” in claim 13.
The step of pressing the nanopattern (308) in the resist (330) and forming the nanopattern (308) in the resist (330) of Zhu et al. is a step of “mechanically indenting the layer of opaque material”.
Zhu et al. further show that the master stamp (20) with a nanopattern (208) may deform and distribute a resist layer (110) to form a pattern of nanopatterned indentations that locally reduce the thickness of the opaque material in indented regions while increasing the thickness of opaque material in adjacent regions (see fig.3A-3C, par.0040).
The variations of thickness of the resist layer (110) means that the thickness of resist material varies across at least one of the length or the width of the transparent substrate in claim 17.
It would be expected that the thickness variations produce spatial variations in transmission of light through the opaque material, as required in claim 13.
With regard to claim 32, that the protrusions of the nanopattern may have a size of 50-20 nm (par.0029). This range includes the claimed range.
With regard to claim 33, the limitation “the fabricated semi-transparent photomask is configured to pattern another material using at least one of photolithography or nanoimprint lithography” only requires that the photomask is capable of patterning another material.
The structure comprising a transparent substrate (30) and the patterned opaque resist material (330) has the structure required for a stamp for a nanoimprint lithography.
Claims 20, 26, and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Kobrin et al. (WO 2009/094009) in view of Cheo (US 2004/0096338), or Liu et al. (US 2011/0074268), or Kim et al. (US 2018/0209504).
With regard to claims 20 and 30, Kobrin et al. teach a metal layer or film deposited on the outer surface of a rotatable mask, which is typically a transparent cylinder. The metal layer or film has a specific series of through nanoholes (par.0028).
Kobrin et al. fail to teach that the photomask is a seamless cylinder, tube or sleeve.
However, Kobrin et al. teach that a seamless nanostructure is desirable and would eliminate the stitching error (par.0010).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to obtain a seamless cylinder comprising the transparent cylinder and the metal layer or film having a series of through nanoholes of Kobrin et al. in order to eliminate the stitching error.
The metal layer or film having a specific series of through nanoholes implies the step of “forming a foil or film around a base cylinder, the foil or film formed as a seamless sleeve or sheet of material” in claim 20, and meets the limitations for claim 30 for “the foil or film comprises a metal”.
Kobrin et al. fail to teach a step of indenting the foil or film with a pattern of micro- or nanopatterned features.
However, it is common knowledge that a hole may be formed by indenting (see par.0015 of Cheon, par.0036 of Liu et al., or par.0040 of Kim et al.).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to obtain the through nanoholes of Kobrin et al. by indenting with a die having a nanometer pattern.
The rotatable mask of modified by Kobrin has the same structure required by claim 20, so it may function as conformal master.
With regard to claim 26, Kobrin et al., Cheon, Liu et al., or Kim et al. fail to teach the severing step.
However, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to cut the rotatable mask of modified by Kobrin, in order to obtain a rotatable mask or a plurality of rotatable masks of desired size(s).
A cutting step meets the limitations of claim 26.
With regard to claim 29, Kobrin et al. teach that the metal layer or film deposited on the outer surface of a rotatable mask wherein the metal layer or film has a specific series of through nanoholes is used for surface plasmon technology (par.0028). Surface plasmon technology is a near-field photolithography (par.0025).
With regard to claim 31, Kobrin et al. teach that the masks allow for the formation of patterns with a size of 1mm to 1 nm (par.0025). Therefore, it would be expected that the pitch of the nanohole pattern at least overlaps the claimed range.
Allowable Subject Matter
Claims 15, 16, 21-25, 27, 28, and 34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Zhu et al. (US 2010/0308009) teach that the substrate (30) may be a flexible or rigid flat plate (par.0058), but fail to teach a seamless cylinder, tube or sleeve.
There are no prior art teachings that would motivate one of ordinary skill to modify Zhu et al. and obtain the method in claim 34 of the instant application.
The priori art fails to teach the methods in claims 15, 16, 21-25, 27, and 28.
Response to Arguments
Applicant’s arguments with respect to claims 13-17 and 20-34 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see pages 5 and 6 of the Remarks filed on March 30, 2026, with respect to the rejection of claims 13-17, 24, 29, and 32-34 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is have been fully considered and are persuasive. The rejection of claims 13-17, 24, 29, and 32-34 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph has been withdrawn.
Applicant’s arguments, see pages 8-11 of the Remarks filed on March 30, 2026, with respect to the rejection of claims 20, 26, and 29-31 under 35 U.S.C. 103 as being unpatentable over Kobrin et al. (WO 2009/094009) in view of Easterbrook et al. (WO 01/058617) is have been fully considered and are persuasive. The rejection of claims 20, 26, and 29-31 under 35 U.S.C. 103 as being unpatentable over Kobrin et al. (WO 2009/094009) in view of Easterbrook et al. (WO 01/058617) has been withdrawn.
The examiner would like to note that:
-the rejection of claims 13-16, 32, and 33 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wu et al. (US 2004/0027675) is withdrawn after the applicant’s amendment to claim 13;
-the rejection of claims 13, 15-17, 32, and 33 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kobrin et al. (WO 2009/094009) is withdrawn after the applicant’s amendment to claim 13; and
-the rejection of claim 34 under 35 U.S.C. 103 as being unpatentable over Kobrin et al. (WO 2009/094009) is withdrawn after the applicant’s amendment to claim 13.
However, new grounds of rejection for claims 13, 14, 17, 20, 26, and 29-31 are shown in paragraphs 3-7 above.
Conclusion
Applicant's amendment necessitated the new grounds 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.
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/ANCA EOFF/Primary Examiner, Art Unit 1722
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