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 Amendment
Claims 1, 3, 5-10, 12-18, and 20 are pending. Claims 1, 3, 5-10, 12-13, and 20 remain withdrawn.
Prior art rejections under 35 U.S.C. 103 are updated in view of the amendment.
Any new grounds of rejection are necessitated by claim amendments.
Claim Interpretation
The term “hard” in claim 14 (“carbon-based hard material” and “an inorganic hard-masking layer”), absent any specific definition, is subjective and therefore a material with any hardness is considered to meet “hard.”
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 14-18 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.
Amended claim 14 recites the limitation “the plurality of diffractive structures in the hard-masking layer…” in the last two lines. The claim previously recited “an embossing structuration arranged in a surface of the structure-bearing layer, the embossing structuration traversing the hard-masking layer, and wherein a surface cavity formed by the embossing structuration includes a plurality of diffractive structures.” Accordingly, the claim sets forth that the diffractive structures are part of the embossing structuration which is arranged in the structure-bearing layer. This is supported by the specification, which describes an embossing structuration 210 formed in structure bearing layers 32/36/30 beneath an etch opening 45 (e.g., Figs. 2B, 2C). As such, the reference to “the plurality of diffractive structures” that are “in the hard-masking layer” is unclear in view of the specification which indicates that these structures should be in the structure bearing layer, and the limitation adds ambiguity as to consideration of the claimed dimensions of these diffractive structures in claim 14 and 15. For further examination, these features are interpreted in line with the specification as being in the structure-bearing layer.
The indicated dependent claims are rejected for the reasons provided above.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 14-15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Gavillet et al., US 20100108638 A1, in view of Dai et al., US 20150301230 A1, with evidentiary support from OpenLearn, Table of hardness values and O’Shea et al., Diffractive Optics: Design, Fabrication, and Test, Ch. 6, SPIE, 2004 (“Diffractive Optics,” references of record).
Regarding claim 14, Gavillet discloses a structured embossing device (Abstract, Fig. 8) comprising:
A base (metal support 2, Fig. 8, [0019]) comprising an outer surface (surface facing upward, Fig. 8);
An adhesion layer directly on the outer surface of the base (barrier thin layer 4, Fig. 8, [0021]-[0023]), the adhesion layer having a thickness in a range between 100 nm and 200 nm ([0023] discloses an overlapping thickness range of 50-500 nm such that it would have been obvious to one of ordinary skill in the art to select at least the overlapping portion of the thickness range in order to implement a suitable thickness for the adhesion layer with a reasonable expectation of success, MPEP 2144.05 (I));
A structure-bearing layer directly on the adhesion layer (DLC thin layer 5, Fig. 8, [0021], [0024]) having a thickness in a range between 1 µm and 10 µm (DLC thin layer 5 and barrier thin layer 4 together forming the coating 3 having a thickness between about 100 nm and 10 µm, [0021], with the barrier thin layer 4 having a thickness between 50-500 nm, [0022]-[0023], such that the DLC thin layer has a minimum thickness above 0 and a maximum thickness of around 9.95 µm, overlapping the claimed range, and such that it would have been obvious to one of ordinary skill in the art to select at least the overlapping portion of the thickness range in order to implement a suitable thickness for the structure-bearing layer with a reasonable expectation of success, MPEP 2144.05 (I)), wherein the structure-bearing layer substantially comprises a material consisting of diamond-like carbon or tetrahedral amorphous carbon (diamond-like carbon layer, [0021]);
An inorganic hard-masking layer on the structure-bearing layer (hard mask 8 formed from inorganic material, Fig. 8, [0036]-[0037]) having a thickness of less than 100 nm (thickness between 10-50 nm, [0036], within the claimed range); and
An embossing structuration arranged in a surface of the structure-bearing layer (pattern formed in DLC thin layer 5 by etching, Fig. 8, [0050]-[0051]), the embossing structuration traversing the hard-masking layer (Fig. 8, [0050]-[0051]), and
Wherein a surface cavity formed by the embossing structuration includes a plurality of structures (openings 6 forming nanopattern, Fig. 8, [0024]), wherein a depth of each one of the plurality of structures is between 50 nm and 10 µm ([0025] discloses an overlapping depth/height dimension of between about 5-500 nm, and [0052] discloses the openings formed by etching extending to the interface between layers 4 and 5, such that the depth/height is the same as the thickness of the DLC layer 5, which has a minimum thickness above 0 and a maximum thickness of around 9.95 µm as set forth above), a width of each one of the structures is between 100 nm and 10 µm ([0025] discloses an overlapping width dimension of between about 5-500 nm, where the mean height to width ratio is greater than 1), and the plurality of structures have a periodicity (the pattern is regular/repeating, Fig. 8, [0024]-[0026]) between 0.1 µm and 10 µm across an entire surface of the structured embossing device (where the width L of a groove is between 5 to 500 nm, [0025], and the pitch P is described in one example as 50 nm, [0026], Fig. 1, then a periodicity of L+P can range from 55 to 550 nm, overlapping the claimed range; the pattern repeating over the entire depicted surface, Fig. 1, 8). As Gavillet discloses overlapping depth, width, and periodicity ranges for the formed structures, it would have been obvious to one of ordinary skill in the art to select at least the overlapping portion of the ranges in order to implement suitable dimensions for the patterned surface with a reasonable expectation of success, MPEP 2144.05 (I).
In the state depicted in Fig. 8, Gavillet discloses that material of the thin hard-masking layer (hard mask layer 8) remaining on a surface of unstructured portions of the structure-bearing layer is not removed (present in Fig. 8 on top of unstructured portions of layer 5). Gavillet does describe that the hard mask layer 8 is ultimately able to be removed after the DLC layer 5 has been nanopatterned ([0037], Fig. 9) but Gavillet still discloses a structure meeting the claim requirements in Fig. 8. Note that patents are relevant as prior art for all they contain (MPEP 2123), and the filed specification of the instant application describes that the presence or absence of a remainder of a thin masking layer after structuring of the structure-bearing layer is essentially insignificant ([00036], last three sentences).
Gavillet describes throughout that the mold element is “nanopatterned” (Abstract), with features on a nano- or micro-scale (e.g., [0021], [0025]) and that the structured mold can be used for producing nanopatterned objects such as antireflection dashboards presenting nanotextures, and holograms ([0056]), i.e., objects that have a particular optical effect. Gavillet is silent as to the structures being “diffractive” structures.
In this case, “diffractive” structures in an embossing tool is understood to mean embossing structures that can emboss a corresponding diffractive pattern into a given substrate. A “diffractive” structure is fundamentally a repeating groove structure. This is evidenced by Diffractive Optics, which shows that a diffractive element is a periodic structure of repeating grooves/openings (e.g., Figs. 6.1, 6.2). Since the nanopatterned, repeating groove structures of Gavillet (Fig. 8) would have been capable of forming corresponding structures having a diffractive effect (in use as a mold), as evidenced by the use of the same shape for typical diffractive optical elements, then they are considered to meet “diffractive.” This configuration generally aligns with Applicant’s characterization of “micro-optic” “diffractive structures” as micro-scale openings exhibiting a regular, repeating pattern (arguments/remarks 10/16/2025, pp. 8-9).
Gavillet further discloses the plurality of diffractive structures in the hard-masking layer are positioned at predefined locations (the openings are formed by application of nanoparticles 10 defining an organized void lattice 11 defining the pattern required for the hard mask, [0038], [0042], for forming the predetermined pattern in the DLC layer 5, [0050], Fig. 8).
Gavillet discloses the base is composed of a material such as steel ([0019]), a presently exemplified base material (filed specification, [00021]). Gavillet is silent as to the outer surface of the base having a surface roughness value Ra in a range between 10 nm and 50 nm and a hardness of at least 0.3 GPa (described in the present specification as roughly equivalent to 300 Vickers, [00017]).
In the analogous art, Dai discloses the use of a stainless steel as a base material for a structured coating ([0051]), where the surface roughness Ra of the outer surface of the base material is from 0.1 nm to 50 nm ([0052]), an overlapping range. It would have been obvious to one of ordinary skill in the art to implement a surface roughness at least within the overlapping portion of range in order to specify a suitable surface roughness for the outer surface of the base with a reasonable expectation of success, MPEP 2144.05 (I).
Regarding the hardness of various steels, OpenLearn evidences that steels have Vickers hardness values ranging from around 140 HV to 1000 HV (Table 3), overlapping the claimed range of at least 0.3 GPa or around 300 Vickers. Accordingly, since a material and its properties are inseparable (MPEP 2112.01(II)), the steel as taught by the prior art had a hardness value within the range of around 140 to 1000 HV, and it would have been obvious to one of ordinary skill in the art to implement a hardness value at least in the overlapping portion of the expected hardness range in order to specify an expected suitable hardness for the base component with a reasonable expectation of success, MPEP 2144.05 (I).
Gavillet discloses the adhesion layer being optionally composed of chromium nitride ([0023]), presently exemplified as a suitable adhesion layer material ([00020]), and as set forth above, Gavillet discloses the base being made of steel. Gavillet does not explicitly state the hardness of the adhesion layer is greater than the hardness of the outer surface of the base.
The present specification evidences that chromium nitride is harder than steel in paras. [00020]-[00021], describing the adhesion layer being, e.g., CrN, and the base made of steel being a “comparatively soft material,” where the hardness of the adhesion layer is between that of the base and the structuration-bearing layer. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. MPEP 2112.01(II). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the adhesion layer being composed of chromium nitride in order to specify a suitable material type as taught by Gavillet and, in doing so, the hardness of the chromium nitride adhesion layer would have been greater than the hardness of the outer surface of the steel base.
Gavillet is silent as to the surface roughness of the structure-bearing layer and therefore as to the structure-bearing layer having a Ra roughness value of less than 100 nm.
However, the prior art structure-bearing layer is composed of the same material as claimed (diamond-like carbon, [0021]) and is formed using the same technique (CVD, PVD, [0033]) for thin film deposition as those disclosed (CVD, PVD, [00022]). Accordingly, one of ordinary skill in the art would have reasonably expected substantially the same property for the resulting Ra roughness. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." MPEP 2112 (V). When the structure recited in the prior art reference is substantially identical to that of the claim, claimed properties are presumed to be inherent. MPEP 2112.01 (I). In this case, the prior art layer is formed of the same material and via the same thin film deposition technique in order to function in the same manner, such that one of ordinary skill in the art would have reasonably expected the same property in terms of average surface roughness.
Gavillet discloses the structure-bearing layer being composed of DLC (diamond-like carbon, [0021]) and the adhesion layer composed of chromium nitride ([0023], see above), but Gavillet does not explicitly state the hardness of the structure-bearing layer is greater than that of the adhesion layer.
The present specification evidences that DLC is harder than CrN in paras. [00020]-[00021], describing the structure-bearing layer being, e.g., DLC, and the adhesion layer being, e.g., CrN, where the hardness of the adhesion layer is between the hardness of the comparatively soft steel base and the extremely hard DLC structuration-baring layer. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. MPEP 2112.01(II). Accordingly, the hardness of the DLC structure-bearing layer would have been greater than the hardness of the chromium nitride adhesion layer.
Regarding claim 15, modified Gavillet discloses the device of claim 14, and Gavillet teaches the ratio between the depth and the width of the diffractive structure is in a range between 0.25 and 1.2 ([0025] discloses an overlapping ratio of at least greater than 1, such that it would have been obvious to one of ordinary skill in the art to select at least the overlapping portion of the range in order to implement suitable dimensions for the cavity structure with a reasonable expectation of success, MPEP 2144.05 (I)).
Regarding claim 17, modified Gavillet discloses the device of claim 14, and Gavillet discloses the base includes a plate (support 2 shown as relatively flat, Fig. 8, meeting a “plate” absent further definition) made of a metal ([0019]).
Regarding claim 18, modified Gavillet discloses the device of claim 14, and Gavillet discloses the surface cavity that is forming the embossing structuration is in the form of a groove or trench (hollow patterns/openings, Fig. 8, meeting either groove or trench).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Gavillet et al., US 20100108638 A1, in view of Dai et al., US 20150301230 A1, with evidentiary support from OpenLearn and Diffractive Optics, as applied to claim 14 above, and further in view of Mitamura, US 20150017275 A1 (of record).
Regarding claim 16, modified Gavillet discloses the device of claim 14, and Gavillet discloses the base includes a generally flat support made of a metal material ([0019]). Gavillet discloses the support being a flat structure meeting a plate but is silent as to the support being a cylinder.
In the analogous art, Mitamura teaches that plate and roll/drum-shaped molds, synonymous with cylinders, were known alternatives suitable for being formed to have fine pattern structures for performing molding ([0113]). Mitamura discloses that roll-shaped molds can be favorable for transferring a pattern to a large area ([0113]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the base of Gavillet to use the form of a cylinder, instead of a plate, as taught by Mitamura, as a substitution of one known base form for another yielding predictable results. MPEP 2143(I)(B). Each form has the same function of serving as a base for a multilayered mold device having fine patterned structures. Furthermore, the cylinder form would have been more useful for certain applications, such as for patterning a larger area, as taught by Mitamura.
Response to Arguments
Applicant's arguments filed 03/18/2026 have been fully considered but they are not persuasive. Applicant argues (p. 8) that Gavillet’s hard mask layer 8 is removed following the nanopatterning of the thin layer 5, whereas the present claim requires that the material of the hard-masking layer is not removed.
This argument is not found persuasive because the apparatus as disclosed in Fig. 8 still contains the hard-masking layer on a surface of unstructured portions of the structure-bearing layer as claimed. Patents are relevant as prior art for all they contain (MPEP 2123). While the layer may ultimately be removed as shown in Fig. 9, the assembly shown in Fig. 8 corresponds to the claimed structure. Applicant’s specification describes that whether such a thin hard mask layer is removed after patterning of the structure-bearing layer or not is essentially insignificant in terms of the mechanical characteristics of the device ([00036], last three sentences).
Applicant argues (pp. 8-9) that Gavillet does not disclose the structural features of its openings are positioned at predefined locations as presently recited.
This argument is not found persuasive as Gavillet discloses that the openings are formed in the hard mask layer (step performed at Fig. 7) so that the mask layer 8 can be used to define the corresponding openings 6 in the DLC thin layer 5 and thereby form the predetermined pattern in the DLC thin layer 5 ([0050]). In other words, the openings in the mask layer are positioned at predefined locations in order to form the corresponding predetermined pattern in the DLC layer.
Applicant disagrees (p. 9) regarding the openings 6 demonstrating periodicity as recited in claim 14 across an entire surface of the device because the pattern only repeats over the entire depicted surface.
This argument is not found persuasive as the entire depicted surface is still an entire surface of the device and corresponds to the nanopattern that is intended to be imparted to the mold as a whole.
Applicant argues (pp. 9-10) that the Office has not provided any evidence or reasoning supporting inherency with respect to the structure-bearing layer having a roughness value of less than 100 nm.
This argument is not found persuasive because reasoning was provided in the previous Office Action as to this finding. The Non-Final Rejection dated 12/18/2025 explained that the prior art structure-bearing layer is composed of the same material and is formed via the same thin film deposition technique as presently disclosed in order to function in the same manner as presently disclosed (pp. 7-8). These facts were provided to support the inherency conclusion as to properties of the material layer that would be presumed to be present and this reasoning is not addressed in the response. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant to show that the prior art does not necessarily or inherently possess the claimed characteristics. MPEP 2112.
Conclusion
Applicant's amendment necessitated the new ground(s) 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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/J.L.G./Examiner, Art Unit 1754
/SUSAN D LEONG/Supervisory Patent Examiner, Art Unit 1754
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