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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/26/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 4-7, 9-11, and 20-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 20, the claims are drawn to “ ... an electrical circuit and traces formed on a microfeature array.” However, the claims do not recite any structure which constitutes an electrical circuit. It is, therefore, unclear what constitutes the “electrical circuit” of the invention, or if the “electrical circuit” is intended to be part of the claimed invention. Additionally, the preambles of claims 1 and 20 have language which further obfuscates the intent of the Applicant: specifically, the wording “In a nanoimprint lithography development environment having a substrate adapted for roll to roll microfeature imprinting.” It does not appear that any of the structure implied by such an “environment” is part of what is being claimed. It is suggested that, for clarity, this wording be removed from the claim. Appropriate correction and/or clarification is required.
Regarding claims 2, 4-7 and 9-11, the preamble of the claims recite a microfeature array, but the claims depend from claim 1, which is drawn to “an electrical circuit and traces formed on a microfeature array.” It is not clear if the invention is to meant be drawn to a microfeature array or to the structure made up “an electrical circuit and traces formed on a microfeature array.”
Further regarding claim 9, the claim recites “further comprising a trace …” However, claim 1 already requires a trace. It is not clear if claim 9 is reciting an additional trace, or if it is the same trace. Since it cannot be ascertained what Applicant is intending to claim, prior art cannot be applied.
Further regarding claims 21 and 22, the claims are drawn to “the trace of claim 10”; however, claim 10 is not drawn to a trace. Rather, it is drawn to a microfeature array. The claims are further obfuscated by the fact that claim 10, based on its preamble, is drawn to a different structure than parent claim 1. Since it cannot be ascertained what Applicant regards as the invention, prior art cannot be applied.
Appropriate correction and/or clarification is required.
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.
Claim(s) 1, 2, 4, 5, 7, and 20-22 is/are rejected under 35 U.S.C. 102a1 as being anticipated by King et al. (US 2012/0126458).
Regarding claim 1, King et al. disclose “in a nanoimprint lithography development environment having a substrate adapted for roll to roll microfeature imprinting, an electrical circuit and traces formed on a microfeature array (Figure 8), comprising: a substrate adapted for nanoimprint lithography (see the base in Figure 8), the substrate responsive to ink printing techniques (this limitation is an intended use of the substrate: the substrate of King et al. is more than capable of being ‘responsive’ to ink printing techniques); a first microchannel set including plurality of microchannels in the substrate extending in a first direction (Figure 8: see the spaces between the raised features which run substantially vertically in the Figure); and a second microchannel set including a plurality of microchannels in the substrate extending in a second direction (Figure 8: see the spaces between the raised features which run substantially horizontally in the Figure), the microchannels of the first set intersecting with the microchannels of the second set (Figure 8), each microchannel of the plurality of microchannels in the first microchannel set and the second microchannel set defining an array of micropillars, each micropillar of the array of micropillars defined by an intersection of the first and second sets of microchannels (Figure 8), each microchannel having a width based on an intended width of a printed trace of ink onto the substrate (this is an intended use of the microfeature array which does not recite any structure which defines over the structure of King et al.); and a continuous trace on the substrate (paragraph 63: the solidified metal).” Regarding the limitation that the substrate be “responsive to ink printing techniques,” since a liquid metal is provided to the structure of King et al., Examiner interprets the liquid metal to be an ‘ink’, and therefore the substrate is interpreted to be ‘responsive’ to the printing technique of liquid metal being applied. Regarding the final limitation “the trace having a width based on a drop spacing of a deposited ink, the drop spacing less than the width of the ink trace, the trace formed from a plurality of ink layers, each ink layer deposited and dried on the substrate,” the limitation amounts to a product-by-process limitation. In such cases, it has been held that the claims are not limited to the manipulations of the recited steps, rather only to the structure implied by the steps. See MPEP §2113. In this instance, the structure implied by the recited process only requires a single layer of material which could be made by application of layers of metal that were applied adjacent each other and allowed to join together. Therefore, the structure of King et al. comprising the micropillar array and the solidified metal is deemed to meet the required structure of the claim. Regarding claim 2, the claim is drawn to an intended use of the microfeature array; no structure of the microfeature array is recited which defines over the structure of King et al. Regarding claim 4, King et al. further disclose “wherein the first set of microchannels forms a parallel array of microchannels and the second set of microchannels forms a parallel array of microchannels, the first set of microchannels substantially perpendicular to the second set of microchannels (Figure 8).” Regarding claim 5, King et al. further disclose “wherein each micropillar in the array of micropillars is defined by a protruding substrate region flanked by intersecting opposing pairs of microchannels (Figure 8).” Regarding claim 7, King et al. further disclose “wherein each microchannel in the first set of microchannels has a width and a spacing, the spacing between 0.5 and 3 times the width (Figure 8).” Regarding claim 20, King et al. disclose “in a nanoimprint lithography development environment having a substrate adapted for roll to roll microfeature imprinting, an electrical circuit and traces formed on a microfeature array (Figure 8), comprising: a substrate adapted for nanoimprint lithography (see the substrate in Figure 8); a microchannel set including one or more microchannels in the substrate extending in a first direction (Figure 8), each microchannel of the microchannel set defining an array of micropillars, each micropillar of the array of micropillars defined by an intersection of the first and second sets of microchannels (Figure 8), each microchannel having a width and a depth (Figure 8); and a continuous trace on the substrate (paragraph 63: the solidified metal).” Regarding the limitation that the substrate be “responsive to ink printing techniques,” since a liquid metal is provided to the structure of King et al., Examiner interprets the liquid metal to be an ‘ink’, and therefore the substrate is interpreted to be ‘responsive’ to the printing technique of liquid metal being applied. Regarding the final limitation “the trace having a width based on a drop spacing of a deposited ink, the drop spacing less than the width of the ink trace, the trace formed from a plurality of ink layers, each ink layer deposited and dried on the substrate,” the limitation amounts to a product-by-process limitation. In such cases, it has been held that the claims are not limited to the manipulations of the recited steps, rather only to the structure implied by the steps. See MPEP §2113. In this instance, the structure implied by the recited process only requires a single layer of material which could be made by application of layers of metal that were applied adjacent each other and allowed to join together. Therefore, the structure of King et al. comprising the micropillar array and the solidified metal is deemed to meet the required structure of the claim. Regarding the rest of the claim, “a width based on an intended width of a printed trace of ink onto the substrate and a depth based on an accumulated thickness of one or more layers of ink deposited in the microchannel,” the limitations do not recite any structure which would define over the structure of King et al. The microfeature array of King et al. has microchannels which have a width and a depth based upon desired outcomes, thus meeting the claim limitations.
Claim Rejections - 35 USC § 103
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 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.
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over King et al. Regarding claim 6, King et al. disclose all that is claimed, as in claim 1 above, except “wherein each microchannel has a width and a depth, and an aspect ratio between the width and the depth of at least 10.” However, King et al. clearly show that these two parameters can easily be varied and/or optimized (paragraph 75, Figure 8), specifically exemplifying a 50 µm width and a 15 µm depth (Figure 8), and further teach that the width and/or depth can be varied over the range of 10 nm to 100 µm, and specifically suggest 1 µm (paragraph 34). It has been held that when the general conditions are disclosed in the art, it is not inventive to discover the optimum or workable ranges through routine experimentation. See MPEP §2144.05. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to set the width to 50 µm, as shown in Figure 8, and to set the height to 1 µm, in order to determine the optimal or workable range of the value of each parameter, and because King et al. specifically exemplify a 50 µm width and specifically suggest a 1 µm height.
Response to Arguments
Applicant’s arguments filed 01/26/26 have been fully considered but are moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853