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
This office action is in response to the Amendment filed on 04/16/2026.
Claims 1-9 are presently pending; claims 7-9 are withdrawn; claims 1-2 are amended; claims 1-6 are under examination.
The rejection of claim 2 under 35 U.S.C 112(b) is withdrawn in light of the amendments to the claims.
The 35 U.S.C. 103 rejection of claims 1-6 over ENOMOTO is maintained.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
For purposes of claim interpretation, “solid content” as recited in claims 1-2 (see claim 1 at line 9 and claim 2 at lines 3 and 5) is interpreted as meaning the content of components other than the solvent, as this would appear most in keeping with Applicant’s intent as discussed in the specification at paragraph [0012].
It is noted that the recitations of “for forming an interlayer for nanoimprint, which is used for forming an interlayer existing between a base material and a curable layer” in claim 1 (see claim 1 at lines 1-2) and “for forming an interlayer for nanoimprint” recited in claims 1-6 (see claim 1 at lines 9-11, claims 2-5 each at line 1 and claim 6 at lines 1 and 4) are merely directed toward an intended use of the composition formed and do not hold patentable weight in the present claims 1-6. Claims 1-6 are directed toward a method for producing a composition, not toward a method of using a composition or a method of forming an interlayer for a nanoimprint, and any composition formed by the method of claims 1-6 as claimed would be expected to be able to perform the intended use of being used to form an interlayer for a nanoimprint. See MPEP § 2111.02.
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.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Enomoto, et al. (U.S. Pub. No. 2012/0207943-A1) (hereinafter, “ENOMOTO”).
Regarding claim 1, ENOMOTO teaches a method for producing a composition (see ENOMOTO at generally at Abstract and paragraphs [0011], [0022], [0027], [0050], [0219] and [0224], teaching a method of producing a polymeric composition which may be used, e.g., to form a first layer between a substrate and a patterning layer, for nanoimprints), the method comprising:
a first filtering step of filtering a precursor composition 1 including a resin having a polymerizable group with a filter (see ENOMOTO at Abstract and paragraph [0027], teaching a first composition comprising a polymerizable monomer which is subjected to a first filtering step);
a preparing step of adding a solvent to the precursor composition 1 after the first filtering step to obtain a precursor composition 2 (see ENOMOTO at Abstract and paragraph [0027], teaching adding solvent to the filtered composition);
and a second filtering step of filtering the precursor composition 2 with a filter (see ENOMOTO at paragraph [0036], teaching subjecting the composition comprising the solvent to a second filtering step).
ENOMOTO does not explicitly teach that a proportion of a total solid content of the obtained composition to a total mass of the obtained composition overlaps with and thereby renders obvious the claimed range of 0.1% to 0.8% by mass. However, ENOMOTO teaches a solvent content of up to 99% by mass, i.e., a solid content of 1% by mass or more; 1% is very close to 0.8%. As set forth in MPEP § 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Therefore, the claimed method is obvious over ENOMOTO.
Regarding claim 2, as applied to claim 1 above, ENOMOTO teaches a method according to claim 1, wherein a concentration of solid contents of the precursor composition 1 subjected to the first filtering step is greater than 1.0% by mass (see ENOMOTO at Abstract and paragraph [0027], teaching no solvent in the first composition) and a concentration of solid contents of the precursor composition 2 before being subjected to the second filtering step is very close to and thereby renders obvious the claimed range of 0.8% by mass or lower (see ENOMOTO at paragraph [0201], teaching a solvent content in the second composition of up to 99% by mass, i.e., a solid content of 1% by mass or more). As set forth in MPEP § 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
Regarding claim 3, as applied to claim 1 above, ENOMOTO teaches a method according to claim 1, wherein a pore diameter of the filter used in the second filtering step is smaller than a pore diameter of the filter used in the first filtering step (see ENOMOTO at paragraph [0058]).
Regarding claim 4, as applied to claim 1 above, ENOMOTO teaches a method according to claim 1, wherein a filtration speed in a case where the precursor composition 1 passes through the filter in the first filtering step is 1.0 to 100.0 cm/min (see ENOMOTO at paragraphs [0055], [0060], [0255] and Tables 1-2, teaching filtration speeds and filtration areas resulting in filtration speeds within this range, e.g., a filtration speed of 0.05 L/min (i.e., 50 cm3/min) and a filtration area of 17 cm2, resulting in a filtration speed of 2.9 cm/min).
Regarding claim 5, as applied to claim 1 above, ENOMOTO teaches a method according to claim 1, wherein at least one filter used in the second filtering step is polyethylene, polypropylene, nylon, or polytetrafluoroethylene (see ENOMOTO at paragraphs [0040] and [0062], teaching polypropylene, polyethylene and nylon).
Regarding claim 6, as applied to claim 1 above, ENOMOTO teaches a method according to claim 1, wherein a content of a polymerization inhibitor overlaps with and thereby renders obvious the claimed range of 0.01 mass% or lower with respect to the total mass of the composition for forming an interlayer for nanoimprint (see ENOMOTO at paragraph [0126], teaching that polymerization inhibitor is a preference and therefore not required (i.e., the content could be 0%), and teaching an amount of polymerization inhibitor of 0.001 to 1% by mass).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Response to Arguments
Applicant's arguments filed 04/16/2026 have been fully considered but they are not persuasive.
Applicant argues:
“claim 1 is amended to state that the proportion of the total solids content… to the total mass… is 0.1% to 0.8% (rather than 0.1% to 1.0%) by mass. The amendment to claim 1 is intended to remove the portion overlapping with Enomoto, specifically the reference to 1.0 mass percent” (see Remarks at pg. 7).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious over ENOMOTO because the ranges no longer overlap at 1.0 mass percent, the Examiner respectfully disagrees; as set forth in the rejection of amended claim 1 above, MPEP § 2144.05 states that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
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 extension fee 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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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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