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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/28/2025 has been entered.
Response to Arguments
The previous rejections under 112(b) were withdrawn in response to the amendments however the amendments necessitated new rejections under 112(b), see below.
Applicant's arguments filed 11/28/2025 have been fully considered but they are not persuasive.
Applicant argues that Miyazawa does not describe the claimed invention because Miyazawa does not achieve alignment via mechanical interlocking and that Miyazawa does not produce a cured embossed pattern as required by claim 1. Examiner disagrees. Miyazawa Figures 3C-3D clearly show that the mold interlocks with the previously formed and cured pattern in the cured resin layer 19. The claim notes that the interlocking occurs with the features of “the previously cured embossed pattern” however there is no cured embossed pattern claimed and no step of curing the embossing pattern either. Regardless, Miyazawa does align and interlock with the cured portion of the resin 19, see Figure 3C-3D.
Applicant argues with respect to claim 7 that substituting Ogawa’s roll structure into Applicant’s resin-curing embossing would defeat the purpose of Applicant’s invention because Ogawa teaches a roll-to-roll imprinting method rather than a discrete process. Examiner disagrees. The cylindrical roll of Ogawa could be used in the patterning method described in Miyazawa instead of the planar mold. Examiner also notes that the combination is made of Miyazawa and Ogawa, not Ogawa modifying Applicant’s invention. Ogawa does not need to teach all of the claimed limitations which Miyazawa already teaches. Applicant again notes the substitution of Ogawa into Applicant’s workflow would be inoperable. Examiner notes that modifications are made to the primary reference, not to the claimed invention. Applicant generally refers to the cited combination rendering the references unsatisfactory for their intended purposes or for Applicant’s intended purpose but does not provide further evidence of this.
Applicant argues that the cited references teach away from Applicant’s invention because the usefulness of Applicant’s invention was not appreciated. This is not persuasive. A reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims, see MPEP §2131.05.
Applicant also argues that Miyazawa could not be modified to meet the limitations of claim 6 including the trimming because Miyazawa intentionally leaves a portion of uncured resin and argues that Miyazawa teaches that the cured pattern must not be disturbed. Examiner disagrees. First, it is noted that claim 6 does not require the trimmed portion to be cured. Claim 1 also does not recite a curing step. Further, as per the claim, any edge defect or excess resin at the edge of the embossing pattern can be removed. This is what is occurring in Park. Miyazawa could also remove excess overflowed resin at the edge of the pattern without affecting the imprinting process.
Applicant presents arguments involving Auer Jongepier; however Auer Jongepier is no longer cited in the rejection and these arguments are considered moot.
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 and 3-7 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.
Claim 1 recites “the previously cured embossed pattern.” There is insufficient antecedent basis for this limitation in the claims. There is no previously recited cured embossed pattern and also no recited step of curing any pattern. This will be interpreted to mean any cured pattern.
Claim 7 recites the limitations “the stamp polarity and embossing polarity”. There is no previously cited polarity of either the stamp or the embossing pattern and it is not entirely clear what the “polarity” means. Additionally, it is not clear if “embossing” refers to “the embossing pattern” or “a previously formed embossing pattern” or something else entirely. This will be interpreted such that “polarity” refers to an end portion of any embossing pattern and stamp.
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.
Claims 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyazawa (US 2017/0157836.)
Regarding claim 1, Miyazawa meets the claimed, A process for embossing a film, the process comprising: heating resin formulations to create a stamp (Miyazawa [0038] describes heating a thermoplastic resin to make a stamp for embossing a substrate) for continuing an embossing pattern wherein said embossing pattern is repeated; (Miyazawa [0039] and Figure 3 shows a step and repeat embossing process) peeling said stamp from said embossing pattern over an integer of number patterns repositioning said stamp by shifting to overlap with a previously formed embossing pattern on a substrate by an amount effective for self-alignment (Miyazawa [0040]-[0042] and Figure 3 show the stamp is peeled, moved and overlapped with a portion of the previous pattern) pressing said stamp into an area of overlap to effect nanoscale physical interlocking between corresponding features of the previously cured embossed pattern to achieve said self-alignment, (Miyazawa [0042] and Figures 3C-3D show the mold 2 is moved to the next processing region and matched with the cured resin layer 9, the pattern 3 on the mold 2 is clearly interlocked with the pattern 3r on the cured resin layer 19) thereby forming an aligned region, to enable a seamlessly replicating pattern upon a pattern area; (Miyazawa [0042] describes repeating and pressing the stamp to replicate the pattern) wherein the embossing process is repeated in an orthogonal direction relative to an initial embossing direction to expand the seamlessly replicated pattern across a wider area on the substrate, (Miyazawa Figure 3 shows the initial embossing is done in the vertical direction and the imprinting process is expanded along the horizontal direction in further pressing steps) and wherein the embossing process is performed in a vertically integrated workflow (Miyazawa [0034]-[0043] describe both the mold manufacturing process and the embossing process are performed making those processes in a vertical workflow.)
Regarding claim 3, Miyazawa meets the claimed, The process according to claim 1 wherein said area is a flat surface (Miyazawa Figure 3 shows a flat surface.)
Regarding claim 4, Miyazawa meets the claimed, The process according to claim 1 wherein said embossing process is self- aligning (Miyazawa [0042] describes how the pattern is aligned) and begins with embossing a pattern by way of a stamp and liquid resin on a flat substrate, (Miyazawa [0040] describes a liquid resin spread along the base 7, see base 7 is flat in Figure 3) using said resin to spread over said substrate, and then stamping the plastic film into resin to create said embossing pattern on the substrate (Miyazawa [0040]-[0043] describe spreading the resin on the base and forming the pattern using the mold 2.)
Regarding claim 5, Miyazawa meets the claimed, The process according to claim 4 wherein ultraviolet light waves cure said resin (Miyazawa [0040] and [0038] describe irradiation, UV lights, etc., to cure resin) and stamp and is peeled from said embossing pattern on the substrate while retaining said stamp (Miyazawa [0041]-[0042] describe the mold 2 is removed but kept and reused.)
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Miyazawa modified by Park (US 2016/0306275.)
Regarding claim 6, Miyazawa does not describe a cleaning process and does not meet the claimed, The process according to claim 5 wherein an edge of the formed embossing pattern on the substrate is trimmed to remove any edge defects or excess resin and thereby expose a clean nanoscale feature boundary for subsequent mechanical engagement so that only the embossing pattern remains.
Analogous in the field of imprinting, Park meets the claimed, The process according to claim 5 wherein an edge of the formed embossing pattern on the substrate is trimmed to remove any edge defects or excess resin and thereby expose a clean nanoscale feature boundary for subsequent mechanical engagement so that only the embossing pattern remains (Park [0075]-[0076] describes a step and repeat imprint process where an overflowed portion 220a of the resist is trimmed via etching from the edge of the pattern 220 to leave only the pattern 220 prior to the next imprinting step.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the process of overlapping and imprinting as described in Miyazawa with the process of removing the overflowed portion at the edge of the pattern as described in Park in order to properly expose the base substrate prior to the further imprinting steps, see Park [0076].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Miyazawa modified by Ogawa (US 2010/0246191).
Regarding claim 7, Miyazawa meets the claimed, and wherein the stamp polarity and embossing polarity are aligned and engaged along two overlapped areas to enable formation of said embossing pattern (Miyazawa Figure 3C-3D shows the stamp and embossing pattern are aligned in both the cured resin layer 19 and the transfer layer 9. Alternatively or additionally, Miyazawa [0043] also discloses repeating the overlapping and stamping multiple times to produce the desired size.)
Miyazawa does not disclose a cylindrical mold or cylindrical mold surface. Analogous in the field of embossing, Ogawa meets the claimed, The process according to claim 1 wherein a cylindrical surface of the stamp is used to emboss the substrate (Ogawa [0122] describes a roll mold 31 in a roller or cylindrical shape.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the shape of the mold in Miyazawa with a cylindrical mold as described in Ogawa in order to continuously produce a pattern, see Ogawa [0129].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 9,205,594: see Figures 1 or 2 and the accompanying description describing a step and repeat process where the mold is aligned with the previous patterned portion before imprinting a new portion.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Zhao can be reached on 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.B./Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744