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 .
The response of the applicant has been read and given careful consideration. Rejection(s) of the previous action not repeated below are withdrawn based upon the amendment and arguments of the applicant. Responses to the arguments of the applicant are presented after the first rejection they are directed to. The restriction requirement and the corresponding election remain and claims 9-20 are withdrawn.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1,2, and 5-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
It is not clear that the specification supports the language “there is no layout pattern between the first layer out pattern and the second layout pattern, between the first layout pattern and the third layout pattern and between the third layout pattern and the fourth layout pattern.”. While there are no intervening patterns directly between the first and second layout patterns or the third and fourth layout patterns. The protrusion (P12) of the second layout pattern which extends beyond the first edge (L1) of the first layout pattern ands the second edge of the first layout pattern (L2) is between the first layout pattern and the third layout pattern.
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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 1,2 and 5-7 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.
The language “The first extension portion comprises a first protruding portion protruding from the third edge of the second layout pattern; the first protruding portion exceeds the first edge of the first layout pattern, ….the first protruding portion further exceeds the second edge of the first layout pattern” conflicts with the language “there is no layout pattern between the first layer out pattern and the second layout pattern, between the first layout pattern and the third layout pattern and between the third layout pattern and the fourth layout pattern.”.
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Specifically, the portion of the protrusion (P12) extending of the second layout feature (102) beyond the line L2 extends into the space between the first layout pattern (100) and the third layout pattern (104). As the claim language is derived solely from the figures, there is no other basis for the interpretation of the claim language.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3 and 5-8 are rejected under 35 U.S.C. 101
Claims 1-5 and 5-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a layout patterns without significantly more. The claim recite only layout patterns as part of a photomask structure. This judicial exception (printed matter) is not integrated into a practical application because the mere arrangement of the layout patterns on the photomask is analogous to printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute “any new and useful art, machine, manufacture, or composition of matter,” or “any new and useful improvements thereof,” as provided in section 4886 of the Revised Statutes, 35 USCA § 31. Guthrie v. Curlett et al. (C. C. A.) 10 F.(2d) 725; Flint et al. v. Leonard & Co. (C. C. A.) 27 F.(2d) 215; In re Dixon, 44 F.(2d) 881,18 C. C. P. A.-, and cases therein cited. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there is no disclosed functional relationship between either the two layout patterns or the between the layout patterns and any substrate.
Any photomask structure/substrate merely serves as a support for the recited layout patterns. The examiner holds that there is no new or unobvious connection between the layout patterns (printed matter) recited and any physical mask structure. The individual layout patterns recited (as well as those illustrated in the figures) are known. The arrangement of them does not materially change how the individual patterns or the mask as a whole functions.
The “photomask structure” in the preamble gives the article structure, so it is not merely a disembodied pattern (analogous to a signal or wave).
The examiner rejects the claims under the “printed matter” doctrine. As the claims only recite layout pattern information which does not have a functional relationship with a physical structure, the claimed photomask with layout patterns do not fall within the four categories of patent eligible subject matter.
In the specification both “the first layout pattern” and the second layout pattern” print in the photoresist during the exposure(see claim 8). While the shape of the first layout pattern and the second layout pattern and their spatial relationship is recited in the claims, each of the layout patterns merely patterns/modulates incident light when used… in the same manner as any photomask pattern. There is no disclosed functional relationship between either the two layout patterns or the between the layout patterns and any substrate. Any substrate merely serves as a support for the recited layout patterns. The mask with the two layout patterns is not more than the sum of the individual parts/patterns.
In re Russell, 48 F 2d. 668, directly addresses the case where the only matter claimed to be new is the arrangement of the names in a directory. The examiner holds that the fact pattern in the instant application is analogous as only the layout of the photomask is described as new or unobvious. The mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute “any new and useful art, machine, manufacture, or composition of matter,” or “any new and useful improvements thereof,” as provided in section 4886 of the Revised Statutes, 35 USCA § 31. Guthrie v. Curlett et al. (C. C. A.) 10 F.(2d) 725; Flint et al. v. Leonard & Co. (C. C. A.) 27 F.(2d) 215; In re Dixon, 44 F.(2d) 881,18 C. C. P. A.-, and cases therein cited.
The examiner holds that there is no new or unobvious connection between the layout patterns (printed matter) recited and any (physical) mask structure/substrate (see discussion in In re Gulack, 703 F 2d 1381,1384-1385 (Fed Cir. 1983) and In re Miller, 418 F2d 1392 (CCPA, 1969)). The two individual layout patterns recited (as well as those illustrated in the figures) are known (see for example, Komatsu et al. 20020177076 and Kleitman et al. 3669666 applied below) and simply print out. The arrangement of them does not materially change how the individual patterns printout or the mask as a whole functions.
In the response of 10/21/2025, the applicant argues that the addition of “for forming a patterned photoresist layer” moves the claims outside of mere printed matter. The examiner disagrees, noting that this is merely an intended use. The claims are not directed to a process of use, but rather to a mask with the layout pattern. The specification makes it clear that a photoresist pattern itself is not a final use. The pattern show in in the figures, which are relied upon by the applicant only shows a portion of pattern which would be necessary for a useful circuit or semiconductor device. The rejection stands.
In the response of 2/12/2026, the applicant argues that the added language describing the layout patterns as being formed of “light transmitting patterns, opaque patterns or phase shifting patterns” based upon the language of the specification (prepub at [0045,0052-0054])]
The position of the examiner is that to overcome the 101 printed matter rejection requires more a mere recitation of materials or properties which does not describe an interaction between them and the underlying substrate. The text on the page of a book is opaque, but does not make the word patentable. In the case of programming, the code printed out on paper is not patentable, but combined with a computer in an executable form such as on a CD/DVD, this can be patented. The claims lack this type of functionality and are merely dead/inactive patterns on the mask.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1-2 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being fully anticipated by Fukuda WO 01/63653.
Fukuda WO 01/63653 describes phase shift masks formed on transparent substrates such as that of figure 7.
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In the response of 02/12/22026, the applicant argues that the protruding part of layout pattern 1. The examiner disagrees, the examiner interprets the first edge of the first layout pattern as the edge which is closes to the second layout pattern and the second edge as the (long) side parallel to the first edge of the first layout. The claim is open to the presence of the protrusion on the first layout pattern due to the “comprising” language of the claims, but is silent regarding it and the claims merely require the extension of the protrusion of the second layout pattern exceeds/extends beyond the first ands second edges of the first layout pattern. The rejection stands.
Claims 1,2 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kleitman et al. 3669666, in view of Nakagawa JP 2017044721 and Ohmi et al. 20060104413
Kleitman et al. 3669666 describes the use of tape on a transparent substrate to form integrated circuit patterns. Among the mask patterns illustrated the patterns of figures 41,43,44 and 45 (reproduced below), where the white portions are transparent and the dark portions are opaque.
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Nakagawa JP 2017044721 (machine translation attached) discloses that many devices such as a semiconductor element, a liquid crystal display element, and a package substrate manufactured using a projection exposure apparatus have a multilayer structure, and a pattern is transferred onto a substrate such as a wafer in an overlapping manner. Exposure is performed so that the same pattern is arranged on the substrate at a predetermined pitch, but in order to improve throughput, a plurality of identical patterns are arranged on a photomask and transferred simultaneously to a plurality of shot areas in one shot (one exposure) [0002]. The arrangement of 1, 4,8 and 16 mask patterns is illustrated in figure 4
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Ohmi et al. 20060104413 teaches the pattern portion 2709a in the master mask 2703 has a relatively small area of 32 mm.times.40 mm. That is, considering that the writing area of the general quadruple mask has the size of 132 mm.times.104 mm at maximum, it is 1/9 or less in terms of the area. Therefore, at least nine identical patterns of the pattern portion 2709a can be transferred and exposed onto the mask 2706 by step and repeat in a very short time (although depending on resist sensitivity, one pattern can be exposed in about one second) so that, as shown in FIG. 27, (c), nine pattern portions 2709b are formed on the mask 2706 in a short time.
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Kleitman et al. 3669666 exemplifies a mask meeting the limitations for the first and second layout patterns, but does not exemplify a mask with third and fourth layout meeting the claim limitations.
It would have been obvious to one skilled in the art to modify the masks illustrated in any of figures 41,43,44 and 45 of Kleitman et al. 3669666 by forming an array of two, four or more of these patterns so that they can be transferred at the same time and increase the throughput of the exposure process as taught by Nakagawa JP 2017044721 and Ohmi et al. 20060104413 to reduce the time required to desired number of patterns/devices. An example array of 4 would have patterns
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Alternatively , it would have been obvious to modify the processes of forming the masks of figures 41,43,44 and 45 of Kleitman et al. 3669666 by forming an array of two, four or more of these patterns using the same tape and techniques as used to form the first mask pattern.so that they can be transferred at the same time and increase the throughput of the exposure process as taught by Nakagawa JP 2017044721 and Ohmi et al. 20060104413 to reduce the time required to desired number of patterns/devices with a reasonable expectation of forming useful photomasks.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Martin J Angebranndt whose telephone number is (571)272-1378. The examiner can normally be reached 7-3:30 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark F Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARTIN J ANGEBRANNDT/Primary Examiner, Art Unit 1737 April 22, 2026
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