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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/28/2026 has been entered.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed with the EPO on 6/8/2020. It is noted, however, that applicant has not filed a certified copy of the EP20178726.4 application as required by 37 CFR 1.55. In the remarks filed 9/15/2025, Applicant noted that a DAS code was provided to access the foreign priority document, however the document has not actually been provided.
Response to Arguments
In response to the amendments filed 1/28/2026, the previous rejections under 112(b) are withdrawn. The amendments have also necessitated new rejections under 112(d).
Applicant's arguments filed 1/28/2026 have been fully considered but they are not persuasive.
Regarding claim 1, Applicant argues that the claim requiring less than 2% reactive diluents its distinguishable over Umekawa because Umekawa uses polymerizable monomers in an amount over the 2% claimed and that these monomers are reactive diluents as claimed. Applicant further argues that reducing the amount of the monomers in Umekawa would fundamentally change Umekawa disclosed composition. Examiner disagrees. While many of the monomers discussed in [0022]-[0023] of Umekawa do likely meet the definition of the reactive diluents as claimed, the specific example, Composition VI, which is now the cited embodiment, does not describe such a high concentration of reactive diluents. The monomers used in Composition VI are described in Umekawa [0121]. Of these monomers, all but two are above 300 g/mol, see the attached documentation NK Ester Multifunctional Acrylate from Shin-Nakamura Chemical. Umekawa also describes in [0077] that the ratio of the oligomer to the monomers can be varied to modify the viscosity. It would be within the skill of a person of skill in the art to optimize the amount of oligomer and arrive at the claimed range. This would not alter the composition of Umekawa fundamentally because the claimed viscosity range is still disclosed in Umekawa.
Applicant also notes the difference in viscosity between the claim and Umekawa. Applicant notes that the composition, preparation conditions, and resulting properties are materially different and crucial to the invention. Applicant notes the coating thickness and imprint pattern size and argues they are not taught by Umekawa. Examiner disagrees. The viscosity, film thickness, and pattern size are addressed multiple times in Umekawa. Umekawa [0076]-[0077] specifically addresses the oligomer prepolymer with respect to viscosity, coating thickness, and pattern size. Umekawa [0086] describes the roll a diluent such as water has with respect to thickness of the coating film. Umekawa [0092] also relates curing thickness to the cure time. Umekawa discloses a viscosity range which includes the claimed viscosity. While the exact amounts of the components in the claims vary slightly from what is described in Composition VI, it is clear from the disclosure of Umekawa as a whole that the claimed values could be achieved merely by optimization using the teachings of Umekawa. The remaining dependent claims also remain rejected.
Applicant additionally argues that Nees, Nees 2, and Gourdin do not describe less than 2% of the reactive diluents or the other claimed limitations. In light of the rejection being updated, these limitations are taught by Umekawa. Any reactive diluents described in secondary references are not being combined with Umekawa to meet the claims.
Applicant additionally argues that it is not obvious to combine the teachings of Umekawa and Gourdin because they are directed to different technical fields. Examiner disagrees. Both Umekawa and Gourdin are related to embossing a polymer film. While the specificities of the composition may differ, the references are still analogous.
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.
Claims 6-7 are 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. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claims 6-7, most of the claim limitations described in claims 6-7 have been moved into claim 1. Claim 6 further specifies that the reactive diluent should be a different compound than the prepolymer however claim 1 already specifies that the reactive diluent is a monomer. A monomer would always be a different compound than a prepolymer since the prepolymer is polymerized at least one time and the monomer is not yet polymerized.
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.
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 1-2, 5-7, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over modified Umekawa (JP2019076889A, see English translation provided) as evidenced by NK Ester Multifunctional Acrylate (see NPL copy provided.)
Regarding claim 1, Umekawa meets the claimed, A method of preparing an article having a micro- or nanostructured surface, the method comprising the following steps: (a) providing an aqueous dispersion of a prepolymer having at least one polymerizable carbon-carbon double bond, (Umekawa [0131] describes composition VI which includes a meth acrylate oligomer) wherein the viscosity of the dispersion is less than 2000 mPa s, (Umekawa [0131] describes the viscosity is 330 mPa s) b) applying a film of the aqueous dispersion on the surface of a substrate, (Umekawa [0151] describes applying the composition VI to a wafer substrate) (c) drying the film, (Umekawa [0151] describes drying) (d) embossing the dried film, without embossing the substrate, to form micro- or nanostructures on the surface of the dried film, (Umekawa [0152] describes embossing the film with microfeatures) and (e) curing the embossed film to obtain the article having a micro- or nanostructured surface (Umekawa [0151] describes irradiating with a light for photocuring.)
The composition VI in [0131] of Umekawa does not describe the claimed less than 2% weight of reactive diluents and does not explicitly meet the claimed, wherein the aqueous dispersion contains, on a dry weight basis, 0 wt% to less than 2 wt% of reactive diluents that are monomers having at least one polymerizable carbon-carbon double bond and a weight average molecular weight Mw of less than 300 g/mol, however, Umekawa [0077] describe the ratio of the oligomer to the monomer can be varied depending on the desired viscosity of the resulting composition. Umekawa describes the ratio of the oligomer prepolymer to the monomer is a result-effective variable which affects the viscosity of the final composition. It would have been obvious to a person of ordinary skill in the art before the filing date to optimize the amount of oligomer prepolymer according to routine experimentation in order to optimize the viscosity, see MPEP §2144.05(II)(B). Additionally, Umekawa [0121] describes the monomers used in Composition VI. Of those monomers, only the AMP-10G and the A-LEN-10 are actually monomers under 300 g/mol and meet the claimed limitations regarding reactive diluents, see NK Ester Multifunctional Acrylate product sheet attached.
Composition VI in Umekawa [0131] does not explicitly disclose an aqueous dispersion because the composition is diluted with ether rather than water and does not meet the claimed, providing an aqueous dispersion, and a combined total weight of water and the prepolymer makes up 80 to 100 wt% of the aqueous dispersion, however, Umekawa [0086] discloses water as an alternative for ether for dilution and discloses that the amount of water added is a result-effective variable which affects the stabilization of the composition or thickness of the film thereby affecting the dimensions of the patterns produced, see also [0090]. It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the ether with water and to also modify the amount of water added to the composition through routine experimentation in order to optimize the stability and thickness of the composition thereby optimizing the size of the patterns created, see Umekawa [0086].
Regarding claim 2, Umekawa meets the claimed, The method according to claim 1, wherein the prepolymer is selected from the group consisting of urethane acrylates, epoxy acrylates, polyester acrylates, polyacrylates, polyether acrylates, and polyolefin acrylates (Umekawa [0131] describes meth(acrylate) oligomer, a polyacrylate.)
Regarding claim 5, Umekawa [0131] describes the meth acrylate oligomer molecular weight is 1500 g/mol and does not explicitly meet the claimed, The method according to claim 1, wherein the weight average molecular weight of the prepolymer is at least 2000 g/mol, however, Umekawa [0077] describes the molecular weight of 1,000-20,000 depending on the desired viscosity.
Umekawa describes the molecular weight of the oligomer is a result-effective variable which affects the viscosity of the coating and thereby the thickness and the pattern size, see Umekawa [0076]. It would have been obvious to a person of ordinary skill in the art before the filing date to modify via routine optimization he molecular weight of the oligomer used to be within the claimed range in order to optimize the viscosity, thickness, and thereby pattern size of the film, see Umekawa [0076]-[0077].
Regarding claim 6, Umekawa meets the claimed, The method according to claim 1, wherein the aqueous dispersion contains, on a dry weight basis, 0 wt% to less than 2 wt% of a reactive diluent that is a compound different from the prepolymer, as described in reference to claim 1, Umekawa discloses modifying the amount of the oligomer prepolymer to monomer ratio. This range can be optimized in order to optimize the viscosity of the mixture.
Regarding claim 7, Umekawa meets the claimed, The method according to claim 6, wherein the reactive diluent is a monomer (Umekawa [0121] describes the monomer mixture used in Composition VI contains NK Ester A-LEN-10 and AMP-10G which are both monomers.)
Regarding claim 13, Umekawa meets the claimed, An article having a micro- or nanostructured surface obtainable by the method of claim 1 (Umekawa [0152] describes the final article made from the method described.)
Regarding claim 14, Umekawa meets the claimed, The use of an article having a micro- or nanostructured surface of claim 13 in shark skin technology, moth eye technology, antifouling technology and diffractive or refractive light-guiding and superhydrophobic surface technology (Umekawa [0095] describes moth-eye technology and water repellency.)
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over modified Umekawa as applied to claim 6 above, and further in view of Nees (US 2017/0343900).
Regarding claim 8, Umekawa meets the claimed, The method according to claim 6, wherein the aqueous dispersion contains a surfactant that is a compound different from the prepolymer and from the reactive diluent (Umekawa [0076] describes a surfactant and [0079] describes surfactants which do not overlap with either the polymer or the diluent.)
While Umekawa [0079] describes surfactants, they do not explicitly meet the claimed, and that is selected from the group consisting of alkyl- (meth)acrylates, poly-siloxane (meth)acrylates, perfluoroalkyl (meth)acrylates, perfluoropolyether (meth)acrylates, alkyl vinyl ethers, polysiloxane vinyl ethers, perfluoroalkyl vinyl ethers, and perfluoropolyether vinyl ethers.
Analogous in the field of embossing and embossing compositions, Nees also described a UV curable polymer with a surfactant and meets the claimed, and that is selected from the group consisting of alkyl- (meth)acrylates, poly-siloxane (meth)acrylates, perfluoroalkyl (meth)acrylates, perfluoropolyether (meth)acrylates, alkyl vinyl ethers, polysiloxane vinyl ethers, perfluoroalkyl vinyl ethers, and perfluoropolyether vinyl ethers (Nees [0015] describes a surfactant including siloxane methacrylates, perfluoroalkyl methacrylates, perfluoropolyether methacrylates, etc.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the surfactant of Umekawa with the specific surfactants described in Nees in order to reduce the adhesion of the lacquer to the imprinting tool and reliably mold the design, see Nees [0015].
Regarding claim 9, Umekawa meets the claimed, The method according to claim 8, wherein the aqueous dispersion contains on a dry weight basis, 0.1 wt% to 3 wt% of the surfactant, Umekawa does not explicitly meet the claimed range, however it would be obvious to a person of ordinary skill in the art that modifying the amount of surfactant is a result-effective variable which alters the uniformity of the film, see Umekawa [0076]. It would have been obvious to a person of ordinary skill in the art before the filing date to modify the surfactant amount through routine optimization in order to achieve a desired uniformity, see MPEP §2144.05(II)(B).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over modified Umekawa as applied to claim 1 above, and further in view of Nees 2 (US 2017/0349707.)
Regarding claim 10, Umekawa does not specify the surface energy and does not meet the claimed, The method according to claim 1, wherein the dry material of the dried film has a surface energy of 10 mN/m to 40 mN/m.
Analogous in the field of imprinting and lacquer compositions, Nees 2 meets the claimed, The method according to claim 1, wherein the dry material of the aqueous dispersion has a surface energy of 10 mN/m to 40 mN/m (Nees 2 [0051] describes an micropatterned embossing lacquer surface which has a surface energy of 12 mJ/m2.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the dried film of Umekawa, which is meant to be water repellent (see [0095]) with the surface energy of the dried film as disclosed in Nees 2 in order to help contribute to the water-repellent and dirt repellent characteristics, see Nees 2 [0051].
Claims 3-4 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Umekawa (JP2019076889A, see English translation provided) modified by Gourdin (US 2017/0197459, made of record on the IDS dated 12/5/2022).
Regarding claim 3, Umekawa does not describe a hydrophilic residue. Analogous in the field of embossing films, Gourdin meets the claimed, The method according to claim 1, wherein the prepolymer contains hydrophilic residues selected from acidic or ionic residues (Gourdin [0089] and [0094]-[0095] describes a hydrophilic residue compound including carboxylic acid, sulfonic acid, carboxylate, and sulfonate.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the embossing film of Umekawa with the embossing film having a hydrophilic residue of Gourdin in order to help render the polymer dispersible in the aqueous medium, see Gourdin [0089].
Regarding claim 4, Gourdin further meets the claimed, The method according to claim 3, wherein the hydrophilic residues are selected from the group consisting of carboxylic acid, sulfonic acid, carboxylate and sulfonate residues (Gourdin [0089] and [0094]-[0095] describes a hydrophilic residue compound including carboxylic acid, sulfonic acid, carboxylate, and sulfonate.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the embossing film of Umekawa with one of the hydrophilic substances described in Gourdin in order to help render the polymer dispersible in the aqueous medium, see Gourdin [0089].
Regarding claim 11, Umekawa meets the claimed, The method according to claim 1, the aqueous dispersion contains less than 2 wt% of a monomeric reactive diluent, (As described in reference to claim 1, Umekawa discloses modifying the amount of the oligomer prepolymer to monomer ratio. This range can be optimized in order to optimize the viscosity of the mixture.) and wherein the prepolymer is cured by UV radiation (Umekawa [00151]-[0152] describe photocuring.)
Additionally, Umekawa Composition VI does not explicitly disclose, wherein the prepolymer is a urethane acrylate however Umekawa [0077] describes a urethane meth acrylate oligomer can be used in alternative. The courts have held that substituting one known prior art element for another according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to simply substitute the oligomer used in Composition VI of Umekawa with another of the alternatives suggested in [0077] such as the urethane oligomer because they are a known oligomer for use in the composition.
Umekawa does not meet the claimed molecular weight in Composition VI, wherein the weight average molecular weight of the prepolymer is at least 2000 g/mol, however the molecular weight disclosed in Umekawa [0077] describes a range of 1,000-20,000. Umekawa describes the molecular weight of the oligomer is a result-effective variable which affects the viscosity of the coating and thereby the thickness and the pattern size, see Umekawa [0076]. It would have been obvious to a person of ordinary skill in the art before the filing date to modify via routine optimization he molecular weight of the oligomer used to be within the claimed range in order to optimize the viscosity, thickness, and thereby pattern size of the film, see Umekawa [0076]-[0077].
Umekawa does not describe hydrophilic residues and does not meet the claimed, containing hydrophilic residues selected from the group consisting of carboxylic acid, sulfonic acid, carboxylate and sulfonate residues.
Analogous in the field of embossing films, Gourdin meets the claimed, containing hydrophilic residues selected from the group consisting of carboxylic acid, sulfonic acid, carboxylate and sulfonate residues. (Gourdin [0089] and [0094]-[0095] describes a hydrophilic residue compound including carboxylic acid, sulfonic acid, carboxylate, and sulfonate),
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the embossing film of Umekawa with the embossing film having a hydrophilic residue of Gourdin in order to help render the polymer dispersible in the aqueous medium, see Gourdin [0089].
Regarding claim 12, Umekawa does not explicitly meet the claimed, The method according to claim 1 wherein the prepolymer has a number of double bond equivalents divided by the total mass of the prepolymer of less than 2.5 meq/g .
Gourdin meets the claimed, The method according to claim 1 wherein the prepolymer has a number of double bond equivalents divided by the total mass of the prepolymer of less than 2.5 meq/g (Gourdin [0116] describes a range of 0.05 to 6 meq/g, since the range described in Gourdin overlaps the claimed range, it would have been obvious to a person of skill in the art to use a polymer with a DBE in the claimed range in order to polymerize the polymer as desired, see MPEP §2144.05(I).
Conclusion
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/V.B./Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744