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 .
Prior art of Record
The prior art made of record in this office action shall be referred to as follows;
U.S. 2022/0124949 Nakagawa et al. (‘Nakagawa hereafter), App 17/427437
The above references will be referred to hereafter by the names or numbers indicated above.
Claim status:
Claims 10, 12, 13, 15, 17, 26 – 30 are being examined in current application.
Claims 11, 14, 16 & 18 – 25 have been withdrawn.
Claims 1 – 9 have been canceled.
Claims 12, 13 & 15 are objected to for allowable subject matter.
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 10 – 13, 15, 17, 26 -30 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 10, recites: “the one or more closed recesses are configured to define a closed space together with a microstructure in a state in which the microstructure is temporarily adhered to the surface of the silicone-based rubber film including the one or more closed recesses.”
It is indefinite what the term “temporarily adhered” is. A time frame, a condition or an event needs to be claimed in order to determine what is meant by temporarily adhered.
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 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.
Claim(s) 10, 17 & 26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2022/0124949 Nakagawa et al. (‘Nakagawa hereafter).
- Regarding Claim[s] 10, ‘Nakagawa discloses all the claim limitations including: A microstructure-transfer stamp component comprising a substrate and a silicone-based rubber film formed on the substrate (‘Nakagawa, Abst, “A stamp head unit including: a stamp component including at least a silicone-based rubber film on a quartz glass substrate; a stamp-component-holding component including a surface having a hole for vacuum suction of a surface of the quartz glass substrate of the stamp component.” Fig 4a & 4b, #4 (stamp component), #7 (silicon based rubber film), #6 (quartz glass), #2 (vacuum suction hole)), wherein one or more protrusions are formed on a surface of the silicone-based rubber film facing away from the substrate (‘Nakagawa, Fig 4a & 4b, #6 (quartz glass substrate), #9 (convex-shaped projection), #7 (silicone-based rubber film), and
a surface of the protrusion has one or more recesses each being closed except for a surface opening (‘Nakagawa, Examiner understands recess to be: “a small space created by building part of a wall further back from the rest.” Fig 8F shows a surface with recesses closed (below)), and
the one or more closed recesses are configured to define a closed space together with a microstructure in a state in which the microstructure is temporarily adhered to the surface of the silicone-based rubber film including the one or more closed recesses (‘Nakagawa, Fig 8F shows a surface with recesses closed (below)), Fig 8F is a cross section of a plan view similar to that shown in Fig 7 and Fig 7 shows a closed space. Closed is defined as two sides on the width, two sides on the length and a bottom are closed with only an open top, showing a closed recess. Para 0001, “The present invention relates to: a microstructure transfer apparatus for transferring a microstructure such as a semiconductor device formed or provided on a substrate to a different substrate; a stamp head unit used in this apparatus; a stamp component for transferring a microstructure; and a method for transferring a microstructure-integrated component.” Inherently to transfer the stamp component the microstructure and the stamp head will be touching and adhering to each other for a said period of time. Para 0007, “This means that if one stamp component can withstand twenty thousand transfers, only about twenty-four 4K displays can be made with one stamp component.” The stamp can be used more than once. Therefore the two parts are together only for a limited time and then separated.).
Regarding Claim[s] 17, ‘Nakagawa discloses all the claim limitations including: protrusion has a multi-tiered shape formed of circular pillars, polygonal pillars, frustums, or a combination thereof (‘Nakagawa, Fig 8F shows a multi-tiered shape of circular pillars, polygonal pillars, frustums, or a combination thereof (below)).
Regarding Claim[s] 26, ‘Nakagawa discloses all the claim limitations including: A microstructure-transfer stamp component comprising a substrate and a rubber film formed on the substrate,
wherein one or more protrusions are formed on a surface of the rubber film facing away from the substrate , and
surface of the protrusion has a plurality of recesses each being closed except for a surface opening (‘Nakagawa, Figs 3a & 3b, #8 (recesses/ groove structure), #2 (vacuum suction hole/ surface opening, Fig 8F (below)), and
the plurality of the closed recesses are configured to define a closed space together with a microstructure in a state in which the microstructure is temporarily adhered to the surface of the rubber film including the plurality of the closed recesses (“the plurality of the closed recesses are configured to define a closed space together with a microstructure in a state in which the microstructure is temporarily adhered to the surface of the rubber film including the plurality of the closed recesses.” Is an intended use limitation, see below)
(‘Nakagawa, Fig 8F shows a surface with recesses closed (below)), Fig 8F is a cross section of a plan view similar to that shown in Fig 7 and Fig 7 shows a closed space. Closed is defined as two sides on the width, two sides on the length and a bottom are closed with only an open top, showing a closed recess. Para 0001, “The present invention relates to: a microstructure transfer apparatus for transferring a microstructure such as a semiconductor device formed or provided on a substrate to a different substrate; a stamp head unit used in this apparatus; a stamp component for transferring a microstructure; and a method for transferring a microstructure-integrated component.” Inherently to transfer the stamp component the microstructure and the stamp head will be touching and adhering to each other for a said period of time. Para 0007, “This means that if one stamp component can withstand twenty thousand transfers, only about twenty-four 4K displays can be made with one stamp component.” The stamp can be used more than once. Therefore the two parts are together only for a limited time and then separated.).
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCCPA 1963).
Regarding Claim[s] 27, ‘Nakagawa discloses all the claim limitations including: A transfer method, comprising transferring a microstructure with the microstructure-transfer stamp component according to claim 26 by virtue of temporary adhesion between the microstructure-transfer stamp component and the microstructure (‘Nakagawa, Fig 8F, Para 0001 & 0007).
Regarding Claim[s] 28, ‘Nakagawa discloses all the claim limitations including: A method for manufacturing an electric equipment, comprising transferring an electric device with the microstructure transfer stamp component according to claim 26 by virtue of temporary adhesion between the microstructure-transfer stamp component and the electric device (‘Nakagawa, Fig 8F, Para 0001 & 0007).
Regarding Claim[s] 29, ‘Nakagawa discloses all the claim limitations including: A method for manufacturing an electronic equipment, comprising transferring an electronic device with the microstructure-transfer stamp component according to claim 26 by virtue of adhesion between the microstructure-transfer stamp component and the electronic device (‘Nakagawa, Fig 8F, Para 0001 & 0007).
Regarding Claim[s] 30, ‘Nakagawa discloses all the claim limitations including: A method for manufacturing an LED display (‘Nakagawa, Para 0047, “For example, using the inventive microstructure-transfer apparatus, the desired LEDs can be transferred to pixel positions in a display, disposed, and fixed to manufacture a display panel having all pixels or a partial pixel area of the display. By transferring microstructures such as semiconductor lasers, IC chips, one-dimensional to three dimensional packages with compound-mounted IC and LSI, various functional devices including inorganic or organic semiconductors, electric circuit elements such as resistors, capacitors, and coils, various microsensor elements, various functional devices of MEMS (microelectromechanical system), and sensors and so on, instead of LEDs (organic/inorganic), according to the microstructure-transfer method of the present invention, a new functional product having a combination of these various functional devices, that is, a microstructure-integrated product can be manufactured.”), comprising transferring an LED with the microstructure-transfer stamp component according to claim 26 by virtue of adhesion between the microstructure-transfer stamp component and the LED (‘Nakagawa, Fig 8F, Para 0001, 0007, 0047).
Allowable Subject Matter
Claims 12 & 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art neither anticipates nor renders obvious the combination of limitations found in claims 12 and 15 with the limitations of claim 10. Specifically, the prior art does not teach the combination of limitations wherein “the closed recess has a bottom with curvature,” and “a shape of the surface opening of the closed recess is a polygon, and a vertex of the polygon is arc-shaped.”
The closest prior art is as cited above (‘Nakagawa). ‘Nakagawa does not teach the closed recess with a curvature at the bottom and does not teach a closed recess that is a polygon, and the vertex of the polygon is arc-shaped.
Neither of these references anticipates nor renders obvious the combinations of limitations mentioned above. Furthermore, Examiner finds no motivation found to modify the prior art to include the specific limitations of dependent claim 13. To modify the prior art would require improper hindsight and furthermore would destroy the workability of the references cited.
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U.S. 2022/0124949 Figure 8F
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
Applicant argues Pg 7, that the prior art does not teach: “"the one or more closed recesses are configured to define a closed space together with a microstructure in a state in which the microstructure is temporarily adhered to the surface of the silicone-based rubber film including the one or more closed recesses.”
As discussed above: ‘Nakagawa, Fig 8F shows a surface with recesses closed (below)), Fig 8F is a cross section of a plan view similar to that shown in Fig 7 and Fig 7 shows a closed space. Closed is defined as two sides on the width, two sides on the length and a bottom are closed with only an open top, showing a closed recess. Para 0001, “The present invention relates to: a microstructure transfer apparatus for transferring a microstructure such as a semiconductor device formed or provided on a substrate to a different substrate; a stamp head unit used in this apparatus; a stamp component for transferring a microstructure; and a method for transferring a microstructure-integrated component.” Inherently to transfer the stamp component the microstructure and the stamp head will be touching and adhering to each other for a said period of time. Para 0007, “This means that if one stamp component can withstand twenty thousand transfers, only about twenty-four 4K displays can be made with one stamp component.” The stamp can be used more than once. Therefore the two parts are together only for a limited time and then separated.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., (Pg 7) “can provide a microstructure transfer stamp component that can optimize the temporary adhesive strength of the surface of the rubber film stamp in a short period of time. In addition, the use of the inventive stamp component allows for selective pickup of a single microstructure or a large number of microstructures from a certain region in a donor part, which is densely populated with many microstructures, without involving any contact with adjacent microstructures.” (Pg 7 & 8) “Additionally, as described in paragraph [0034], upon temporary adhesion between the microstructure and the surface of the protrusion including the closed recess, the closed recess defines a closed space. Since the pressing is performed with an optimized pressing amount for temporary adhesion, the closed space in the closed recess is subjected to reduced pressure upon the temporary adhesion. As a result, when the volume of the recess space is small, a suction force, albeit being weak, acts on the microstructure, which can stabilize the adhesion condition.”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993)
Applicant should amend the claims with the highlighted subject matter (above) that Applicant says is not taught in the prior art. Since the limitations have not been claimed. Examiner would need to search and consider any new amendment prior to any allowance.
Conclusion
Examiner encourages Applicant to fill out and submit form PTO-SB-439 to allow internet communications in accordance with 37 CFR 1.33 (MPEP 02.03). Should the need arise to perfect applicant-proposed or examiner’s amendments, authorization for e-mail correspondence would have already been authorized and would save time.
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 LAWRENCE AVERICK whose telephone number is (571) 270-7565. The examiner can normally be reached 8:00AM - 3:00PM M- F ET.
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/LAWRENCE AVERICK/ Primary Examiner, Art Unit 3799
01/05/2026