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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-6, in the reply filed on 10/31/2025 is acknowledged.
Claims 7-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/31/2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 § 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.
Claim 2 is 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 2 recites the limitation "a concentration of solid contents of the precursor composition 2 subjected to the second filtering step is 1.0% by mass or lower" (see claim 2 at lines 5-6); however, the meaning of this limitation is unclear as the claim does not specify whether this is a solid contents of precursor composition 2 before filtering or after filtering, i.e., it is not clear whether “subjected to” means that the precursor composition 2 has been subjected to the second filtering step or is to be subjected to the second filtering step, rendering the metes and bounds of the claim unclear.
For purposes of examination, Examiner treated this limitation in claim 2 as meaning the solid contents of the precursor composition 2 after being subjected to the second filtering step. Clarification is requested.
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.
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),
wherein 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 1.0% by mass (see ENOMOTO at paragraph [0201], teaching a solvent content of up to 99% by mass, i.e., a solid content of 1% by mass or more).
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)).
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 subjected to the second filtering step overlaps with and thereby renders obvious the claimed range of 1.0% 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, 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)).
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)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731