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 .
Response to Arguments
2 Applicant’s arguments, see pages 1-5, filed 12/18/2025, with respect to the rejection(s) of amended claim(s) 1 under U.S.C 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Matsugai (US 20200328248) in view of Rudmann (US 20100072640) and Rudmann (US 20070216048) .
3. Regarding amended claim 6 a new rejection is discussed below. Regarding amended claim 13 applicant argued that the two sections of the hydrophobic
layer 2 in FIG. 7 are a single barrier (viewed in cross-section) that surrounds the liquid
drop 4; they are not "an inner hydrophobic barrier and an outer hydrophobic barrier, the
inner hydrophobic barrier being smaller than the outer hydrophobic barrier and inside
the outer hydrophobic barrier.
4. Examiner maintain the rejection as WO’031 discloses that droplet-4 has hydrophobic layer-2 which has regions where surface of the hydrophilic layer 3 is exposed in the openings of the hydrophobic layer 2. That separation line/fence of the hydrophyllic layer-2 is marked as the inner hydrophobic barrier and the outer hydrophobic barrier. Figures 6- 7 showing the liquid drop-4 with two surfaces which are the inner and outside barriers), the inner hydrophobic barrier being smaller than the outer hydrophobic barrier and inside the outer hydrophobic barrier.
4. Claims 1,6, 9 are amended.
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.
Claim(s) 1-2, 9-11, 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsugai (US 20200328248) in view of Rudmann (US 20100072640) hereinafter Rudmann’640 and Rudmann (US 20070216048) hereinafter Rudman’648
Regarding Claim 1 : Matsugai discloses treating a surface of a substrate to cause the surface to comprise a hydrophobic portion and a hydrophilic portion ([0122]-[0123]; fluoride film known to be hydrophobic ; adhesion promoter film is hydrophyllic); providing a replication material over the hydrophilic portion (Figure 1, 3A-3D, [0123], [0124] material-501 is the replication material on which the lens resin portion-19 is formed ; the adhesion promoter film is formed between the substarte-18 and the replication material-501); and imprinting the replication material to cause the replication material to have a predetermined characteristic ([0122]-[0124]; [0127], the lens material 501 is dropped in a predetermined region on the protection substrate 18 on which the lens resin portion 19 is formed; mold -503 pressed against the lens material). Further, Matsugai discloses imprinting the replication material comprises curing the replication material to provide a cured replication material, wherein imprinting the replication material further comprises forming …structures on an upper surface of the replication material (Figure 3c , [0128], [0129], the lens/replication material-501 is irradiated with UV light for curing; Figures 3D-3E showing the structures on an upper surface of the material-501) and wherein …structures of the cured replication material are configured to perform an optical function , and wherein sidewalls of the cured replication material each comprises a concave portion (Figure 3e, sidewall of the lens/replication material-501 shows concave formed by the mold-503 which are convex on the sides).
Matsugai didn’t disclose that the imprinting the replication material further comprises forming a plurality of individual structures on an upper surface of the replication material, however, in the related field of endeavor pertaining to the art, Rudmann’640 discloses that production of individual replicated micro -optical components (Figure 1, [0031], individual structures -4 on the substrate)
It would have been obvious for one ordinary skilled in the art to combine the Matsugai’s teaching of the treating a surface of a substrate with that of Rudmann’s 640teaching of individual structures on the substrate for the mass production of the micro optical elements ([0006], Rudmann).
Further, the above combination didn’t disclose that the sidewalls correspond to portions of the replication material that are free from contact with the stamp during the imprinting the replication material. In the related field of endeavor pertaining to the art, Rudmann’648 discloses that the sidewalls correspond to portions of the replication material that are free from contact with the stamp during the imprinting the replication material (Figure 5, stamp/tool-10, replication material-13, [0064]) .
It would be obvious for one ordinary skilled in the art to modify Matsugai’s teaching with that of Rudmann’s 648 for the purpose of accurate thickness control of the replication material layer ([0010])
Regarding Claim 2, Matsugai discloses spreading of the replication material onto the hydrophobic portion is limited by a hydrophobicity of the hydrophobic portion ([0126]; fluorine the hydrophobic portion has the high contact angle-20).
Regarding Claim 9, Matsugai discloses wherein the predetermined characteristic comprises a surface structure of the replication material ([0122]-[0124]; [0127], the lens material 501 is dropped in a predetermined region on the protection substrate 18 on which the lens resin portion 19 is formed; mold -503 pressed against the lens material).
Regarding Claim 10, Matsugai discloses wherein treating the surface of the substrate comprises at least one of: roughening a portion of the surface to generate the hydrophobic portion ([0110]), or smoothing a portion of the surface to generate the hydrophilic portion ([0123], hydrophilic layer is deposited as smooth layer).
Regarding Claim 11, Matsugai discloses imprinting the replication material comprises curing the replication material ([0127-[0128], ultraviolet curing).
Regarding Claim 21, Matugai discloses in Figures 3D-3E showing the plurality of structures on an upper surface of the replication material-501 but didn’t disclose that
the cured replication material has a dimension less than about 100 µm. In the related field of endeavor pertaining to the art, Rudmann discloses plurality of individual structures replicated from a prototype are micro optical elements , and should allow for control, at least, of the thickness dimension of the final replica. Therefore, it would be obvious that based on the dimension required of the final replica, the dimension can be controlled ([0006], [0009], [0014]).
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395. See MPEP 2143
It would be obvious for one ordinary skilled in the art to combine Matsugai teaching with that of the Rudmann’s’640 teaching of controlled dimension for the purpose of desired optical properties of the optical element produced.
Regarding Claim 22, Matsugai/Rodmann disclose wherein the plurality of individual structures of the cured replication material are configured to perform one or more optical functionalities from the list consisting of: lensing ([0128])
Claim(s) 3-5,7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsugai (US 20200328248), listed in IDS as WO-2019131488 and Rudmann (US 20100072640) hereinafter Rudmann’640 and Rudmann (US 20070216048) hereinafter Rudman’648 and as applied in Claims 1 and 2 further in view of Hoshino (US 8338502).
Regarding Claim 3, Matsugai discloses wherein the hydrophobicity of the hydrophobic portion is characterized by a large contact angle ([0123]; high contact angle has a larger contact angle) but did not disclose that it characterized by a water contact angle of greater than about 70 degrees. In the related field of endeavor pertaining to the art, Hoshino discloses hydrophobic portion/water repellant portion has water contact angle of greater than about 70 degrees (Col 11 line 59-61).
It would be obvious for one ordinary skilled in the art prior to the time of applicant’s invention to combine Matsugai substrate with hydrophobic and hydrophilic portion with that of Hoshino’s specific contact angle for the purpose of distinguishing the water repellant/hydrophobic portion on the substrate (Col 11 line 52-54).
Regarding Claim 4 , Matsugai discloses treating a surface of a substrate to cause the surface to comprise a hydrophobic portion and a hydrophilic portion ([0122]-[0123]; fluoride film known to be hydrophobic ; adhesion promoter film is hydrophyllic and has a smaller contact angle). Matsugai fails to disclose that hydrophilic portion is characterized by a water contact angle of less than about 40 degrees. In the related field of endeavor pertaining to the art, Hoshino discloses that hydrophobic substrate is treated with hydrophilic treatment (Col 8 line 65-66) and hydrophilic portion is characterized by a water contact angle of less than about 40 degrees (Col 12 line 7-9).
It would be obvious for one ordinary skilled in the art prior to the time of applicant’s invention to combine Matsugai substrate with hydrophobic and hydrophilic portion with that of Hoshino’s specific contact angle for the purpose of wettability of the material (Col 12, line 28-30).
Regarding Claim 5, Matsugai discloses wherein the hydrophobicity of the hydrophilic portion and the hydrophobicity of the hydrophobic portion are each characterized by a water contact angle ([0123]) but did not disclose that wherein a difference between the water contact angle of the hydrophilic portion and the water contact angle of the hydrophobic portion is greater than about 30 degrees. In the related field of endeavor pertaining to the art, Hoshino discloses that difference between the water contact angle of the hydrophilic portion and the water contact angle of the hydrophobic/water repellant portion is greater than about 30 degrees (Col 11, line 62-65).
It would be obvious for one ordinary skilled in the art prior to the time of applicant’s invention to combine Matsugai’s substrate with hydrophobic and hydrophilic portion with that of Hoshino’s specific difference between contact angle for the purpose of accurately realizing the patter between hydrophilic portion and hydrophobic/water repellant portion (Col 12, line 25-27).
Regarding Claim 7, Matsugai discloses the substrate has hydrophobicity of the hydrophobic portion but did not disclose that treating the surface of the substrate comprises plasma-treating the surface of the substrate.
In the related field of endeavor pertaining to the art, Hoshino discloses that treating the surface of the substrate comprises plasma-treating the surface of the substrate (Col 9, line 37-38).
It would be obvious for one ordinary skilled in the art prior to the time of applicant’s invention to combine Matsugai with that of Hoshino’s plasma treatment to improve wettability of the surface.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsugai (US 20200328248) in view of Rudmann (US 20100072640) hereinafter Rudmann’640 and Rudmann (US 20070216048) hereinafter Rudman’648 as applied in Claim 1 further in view of Yilbas (US 20170137329)
Regarding Claim 6, Matsugai discloses the surface of the substrate comprises directing laser light at the surface of the substrate ([0088],[0362] )., but didn’t disclose that the laser light causes a portion of the substrate illuminated by the laser light to become hydrophobic or hydrophilic. In the related field of endevaor Yilbas discloses that surface treated with laser can become hydrophobic ([0006]).
It would have been obvious for one ordinary skilled in the art to modify Matsugai teaching with that of Yilbas’s surface treatment for the purpose of increasing the hydrophobicity of the surface to be treated
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsugai (US 20200328248), listed in IDS as WO-2019131488 and Rudmann (US 20100072640) and Rudmann (US 20070216048) hereinafter Rudman’648 in view of Hoshino (US 8338502) as applied in Claim 7 in view of WO-2019180031, hereinafter WO’031
Regarding Claim 8, Matsugai discloses the substrate has hydrophobicity of the hydrophobic portion but did not disclose that wherein treating the surface of the substrate comprises: providing a physical mask over the surface of the substrate. In the related field of endeavor pertaining to the art , WO’831 discloses providing a physical mask over the surface of the substrate ([0110]) and plasma-treating the surface of the substrate to generate the hydrophilic portion in areas of the surface not covered by the physical mask ([0110]-[0111]).
It would be obvious for one ordinary skilled in the art to combine Matsugai’s substrate with hydrophobic and hydrophilic portion with that of the teaching of physical mask of WO’031 for the purpose of controlling the thickness of the masked hydrophobic layer ([0110], WO’031).
Claim(s) 12 -13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsugai (US 20200328248), listed in IDS as WO-2019131488 and Rudmann (US 20100072640) hereinafter Rudmann’640 and Rudmann (US 20070216048) hereinafter Rudman’648 as applied in Claim 1 and in view of WO-2019180031, hereinafter WO’031
Regarding Claim 12, Matsugai discloses the substrate has hydrophobicity of the hydrophobic portion but did not disclose that the hydrophobic portion separates the plurality of hydrophilic areas from one another. In the related field of endeavor pertaining to the art, WO’031 discloses hydrophilic portion comprises a plurality of hydrophilic areas (Figure 5-6, [0109], hydrophyllic layer-3 is provided with plurality of structures-30), and wherein the hydrophobic portion separates the plurality of hydrophilic areas from one another (Figures 6-7 showing that hydrophobic portion-2 separates the plurality of hydrophilic areas-3 from one another), the method further comprises: dicing the substrate along the hydrophobic portion ([0098], Figure 1, sections 1A are diced on the substrate covered with hydrophobic layer-2).
It would be obvious for one ordinary skilled in the art Here should be added “, prior to the time of applicant’s invention”. to combine Matsugai’s substrate with hydrophobic and hydrophilic portion with that of the teaching of separating hydrophobic and hydrophilic portion with plurality of hydrophilic areas WO’031 for the purpose of creating selectively wettable substrates ([0006], WO’031).
Regarding Claim 13, Matsugai discloses the substrate has hydrophobicity of the hydrophobic portion but did not disclose that the hydrophobic portion comprises an inner hydrophobic barrier and an outer hydrophobic barrier . In the related field of endeavor pertaining to the art, WO’031 discloses wherein the hydrophobic portion comprises an inner hydrophobic barrier and an outer hydrophobic barrier (Figure 7 showing the liquid drop-4 with two surfaces which are the inner and outside barriers), the inner hydrophobic barrier being smaller than the outer hydrophobic barrier and inside the outer hydrophobic barrier (Figure 7 showing that inner hydrophobic barrier being smaller than the outer hydrophobic barrier and inside the outer hydrophobic barrier; V2>V1, [0118]), and wherein the hydrophilic portion is inside the inner hydrophobic barrier (Figure 7, portion-30 of the hydrophyllic portion-3 are inside the hydrophobic barrier-2 ).
It would be obvious for one ordinary skilled in the art prior to the time of applicant’s invention to combine Matsugai’s substrate with hydrophobic and hydrophilic portion with that of the teaching of separating hydrophobic and hydrophilic portion with plurality of hydrophilic areas WO’031 for the purpose of creating selectively wettable substrates ([0006], WO’031).
Conclusion
THIS ACTION IS MADE FINAL. 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 DEBJANI ROY whose telephone number is (571)272-8019. The examiner can normally be reached 9:30-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindenlang can be reached at 571-270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEBJANI ROY/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741