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
Applicant's arguments filed 11/25/25 have been fully considered but they are not persuasive to the extent that they apply to the current rejection. Applicant argues that the passages that the examiner has identified as applicant admitted prior art, are not prior art as they are not explicitly labeled as such. However, the term “conventional” means that this is the generally known and performed procedure. In other words, it is work performed prior to filing which is the definition of prior art. Applicant argues that Arai has the entire contact surface reach the substrate, however, Arai clearly displays that a portion of the mold remains deformed and not in contact with the substrate from Fig 3. All that Arai appears to disclose is that a larger portion of the mold can be made to be in contact with the substrate, and whether or not this would constitute the entirety of the pattern would depend on the desired size of the designer. This teaching combined with the decrease in pressure to make the mold surface lie flat and contact the surface in entirety by decreasing the tilt and pressure as disclosed in AAPA (Fig 4a-4d, fig 6a-6d) would disclose all the limitations of the instant invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 10 of copending Application No. 18418963 in view of Arai (JP 2017-174960A).
As to claims 1-7, copending application no. 18418963 discloses all of these features in claims 1-6, 10 except further supplying the gas into the cavity so as to increase a deformation amount of the contact surface after the contact surface and the composition start to contact each other in the bringing while the mold is tilted.
Arai teaches an imprint method [Abstract] which comprises supplying pressure to a fluid into the cavity [Fig 2] and then further supplying [Fig 3] so as to increase a deformation amount of the contact surface after the contact surface and the composition start to contact each other in the bringing in order to ensure transfer uniformity even if the pattern itself is irregular [page 5 last 2 paragraphs -Page 6 para. 5, Page 9 example 1-1, Page 8 2nd paragraph, Fig 1-3,]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of AAPA and state further supplying the gas into the cavity so as to increase a deformation amount of the contact surface after the contact surface and the composition start to contact each other in the bringing, as suggested by Arai, and the composition start to contact each other in the bringing in order to ensure transfer uniformity even if the pattern itself is irregular.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, 13 of copending Application No. 18671177 in view of Arai (JP 2017-174960A).
As to claims 1-7, copending application no. 18671177 discloses all of these features in claims 1-6, 10 except further supplying the gas into the cavity so as to increase a deformation amount of the contact surface after the contact surface and the composition start to contact each other in the bringing while the mold is tilted.
Arai teaches an imprint method [Abstract] which comprises supplying pressure to a fluid into the cavity [Fig 2] and then further supplying [Fig 3] so as to increase a deformation amount of the contact surface after the contact surface and the composition start to contact each other in the bringing in order to ensure transfer uniformity even if the pattern itself is irregular [page 5 last 2 paragraphs -Page 6 para. 5, Page 9 example 1-1, Page 8 2nd paragraph, Fig 1-3,]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of 18671177 and state further supplying the gas into the cavity so as to increase a deformation amount of the contact surface after the contact surface and the composition start to contact each other in the bringing, as suggested by Arai, and the composition start to contact each other in the bringing in order to ensure transfer uniformity even if the pattern itself is irregular.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Applicant Admitted Prior Art referred to as AAPA in view of Arai (JP 2017-174960A).
As to claim 1, AAPA teaches a forming method of forming a composition on a substrate using a mold, wherein the mold has a contact surface that is to be brought into contact with the composition on the substrate and a cavity provided in a surface on an opposite side of the contact surface, the method comprising: supplying a gas into the cavity (C) so as to increase a pressure in the cavity to deform the contact surface into a convex shape toward the substrate [0047-0052, Fig 5A-5D of instant specification]; relatively tilting the mold with respect to the substrate [0021, 0026, Fig 5A-5D of instant specification]; bringing the contact surface and the composition on the substrate into contact with each other in a state in which the contact surface has been deformed in the supplying the gas and the mold has been tilted in the relatively tilting [0047-0052, Fig 5A-5D of instant specification]. AAPA teaches the method is performed for bringing the contact surface into contact with the composition on a deficient shot region of the substrate, the deficient shot region being arranged in a periphery portion of the substrate to come into contact with one a part of the contact surface [0047-0052, Fig 5A-5D of instant specification]. AAPA teaches to decrease the pressure to make the mold surface lie flat and contact the surface in entirety by decreasing the tilt and pressure as disclosed in AAPA [Fig 4a-4d, fig 6a-6d].
AAPA does not explicitly state further supplying the gas into the cavity so as to increase a deformation amount of the contact surface after the contact surface and the composition start to contact each other in the bringing while the mold is tilted.
Arai teaches an imprint method [Abstract] which comprises supplying pressure to a fluid into the cavity [Fig 2] and then further supplying [Fig 3] so as to increase a deformation amount of the contact surface after the contact surface and the composition start to contact each other in the bringing in order to ensure transfer uniformity even if the pattern itself is irregular [page 5 last 2 paragraphs -Page 6 para. 5, Page 9 example 1-1, Page 8 2nd paragraph, Fig 1-3,]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of AAPA and state further supplying the gas into the cavity so as to increase a deformation amount of the contact surface after the contact surface and the composition start to contact each other in the bringing, as suggested by Arai, and the composition start to contact each other in the bringing in order to ensure transfer uniformity even if the pattern itself is irregular.
As AAPA already disclosed tilting at the point in time of contact between the mold and the contact surface the combination of AAPA and Arai would disclose an increase in deformation/pressure during the tilting at least briefly.
Claims 2-7 are rejected under 35 U.S.C. 103 as being unpatentable over AAPA in view of Arai (JP 2017-174960A), as applied to claim 1 above, and in further view of Wakabayashi (US 2016/0297136).
As to claim 2, AAPA teaches decreasing the gas in the cavity so as to decrease the deformation amount of the contact surface after the further supplying the gas [0047-0052, Fig 5A-5D of instant specification]and decreasing a tilt of the mold with respect to the substrate [0047-0052, Fig 5A-5D of instant specification], and the combination of AAPAand Sato teaches the further supplying of gas as explained above but does not explicitly state wherein the decreasing the tilt is performed in a period from a start of the further supplying the gas to a start of the decreasing the gas.
Wakabayashi teaches a method of imprinting [Abstract] wherein deforming the mold by supply gas and adjusting tilting the mold are performed simultaneously (s104) [0040, Fig 4]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of AAPA and adjusted/decreased the tilt during the further supplying of gas, as suggested by Wakabayashi, as this had proven successful at imprinting a pattern to the substrate. Furthermore, a mere change in sequence is generally considered to be obvious, see MPEP 2144.04 IV C.
As to claim 3, AAPA teaches the decreasing the tilt (s510) is performed so as to end after the further supplying the gas ends [0047-0052, Fig 5A-5D of instant specification].
As to claim 4, AAPA teaches decreasing the tilt is performed so as to start after the further supplying the gas ends [0047-0052, Fig 5A-5D of instant specification].
As to claims 5 and 6, AAPA teaches decreasing the gas in the cavity so as to decrease the deformation amount of the contact surface after the further supplying the gas [0047-0052, Fig 5A-5D of instant specification] and decreasing a tilt of the mold with respect to the substrate [0047-0052, Fig 5A-5D of instant specification], and the combination of AAPA and Sato teaches the further supplying of gas as explained above but does not explicitly state the decreasing the tilt is performed so as to end at the same time as the further supplying the gas ends or before the further supplying the gas ends.
Wakabayashi teaches a method of imprinting [Abstract] wherein deforming the mold by supply gas and adjusting tilting the mold are performed simultaneously (s104) [0040, Fig 4]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of AAPA and adjusted/decreased the tilt during the further supplying of gas, as suggested by Wakabayashi, as this had proven successful at imprinting a pattern to the substrate. Furthermore, a mere change in sequence is generally considered to be obvious, see MPEP 2144.04 IV C.
As to claim 7, AAPA teaches the decreasing the gas and the decreasing the tilt are performed such that the entire contact surface contacts the composition [Fig 4a-4d of instant specification].
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARMAND MELENDEZ whose telephone number is (571)270-0342. The examiner can normally be reached 9 AM- 6 PM Monday-Friday.
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/ARMAND MELENDEZ/ Primary Examiner, Art Unit 1759
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