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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/26/2026 has been entered.
Claim Rejections - 35 USC § 112
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.
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 4 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 4 recites “the array has a ratio of at least 45”. Applicant has pointed to support for such an amendment from Figure 4. While support exists to recite the array has friction to adhesion ratio of greater than 45, the amended language does not have support to broadly recite an unspecified ratio is at least 45. Applicant is advised to point to support for such an amendment or amend or cancel the claim.
Claim 4 is also rejected for reciting unclear language of “the array has a ratio of at least 45”. It is unclear what ratio Applicant is referring to. For purposes of examination, the cited art is considered to meet the present claim 4.
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.
Claims 1-4, 6, 8-13 and 15-20 are rejected under 35 U.S.C. 103 as being obvious over Sitti et al. (US Pat. 9,731,422) in view of Lu et al. (PG Pub. 2014/0329061).
Regarding claim 1, Sitti et al. teach a microfiber array for use in handling an object comprising a dry adhesive microfiber array having a plurality of fibers [Abstract and 12:29-33]. Each fiber of the plurality of fibers terminates in an enlarged flat tip (enlarged tips taught Fig. 11) wherein each tip is flat.
Sitti et al. is silent regarding the claimed profile roughness and surface provides an increased friction to adhesion ratio compared to a smooth flat surface. However, Lu et al. teaches profile roughness as a results effective variable which controls coefficient of friction[0042 and claim 1]. Applicant admits and states in the Remarks dated 08/26/2026 “Lu expressly teaches that roughness is created through UV/ozone treatment or oxygen plasma treatment of the fibril tips. "UVO treatment significantly increases the surface roughness". Lu at [0042]. Lu explains that the nanostructured morphology is produced by surface treatment and results from non-uniform etching of the fibril surface, accompanied by the introduction of oxygen-containing functional groups such as hydroxyl, carbonyl, and carboxylic acid groups. Lu at [0041].” Therefore, it is abundantly clear that Lu teaches a plurality of topographical features extending from the flat surface. Although Lu does not disclose process of molding and embossing, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process of molding and embossing and given that Lu meets the requirements of the claimed microfiber array, Lu clearly meet the requirements of present claims microfiber array.
It would have been obvious to one of ordinary skill in the art to use the teachings of Lu et al. in Sitti et al. to vary the profile roughness through routine experimentation and arrive at any profile roughness including the claimed profile roughness to affect adhesion and control the coefficient of friction and arrive at the claimed invention.
Regarding claims 2, Sitti et al. teaches adding bumps to the tips and therefore provides controlled normal adhesion and also teaches controlled adhesion.
Lu et al. teach controlling the profile roughness to affect the friction force to adhesion force ratio and the coefficient of friction. Further, the recitation in the claims that the profile roughness of the roughened surface is “controlled to affect the friction to adhesion ratio” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that the cited art disclose the microfiber array as presently claimed, it is clear that the microfiber array of the cited art would be capable of performing the intended use, i.e. to control the friction to adhesion ratio, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claims 3-4, Sitti et al. teach controlling the normal adhesion and Lu et al. teach affecting profile roughness to affect the adhesion and friction and coefficient of friction, but are silent regarding the adhesion being zero, ratio between friction and adhesion and profile roughness. However, it would have been obvious to one of ordinary skill in the art to control the normal adhesion to be any value including zero, adjust the friction adhesion ratio and profile roughness in order to control and affect picking up and release of objects and arrive at the claimed invention.
Regarding claim 6, the object comprises a semiconductor device [12:14-15].
Regarding claim 8, Sitti et al. teach, a microfiber array for use in handling an object comprising a dry adhesive microfiber having a plurality of fibers with each having a flat tip [Abstract and 12:29-33]. Sitti et al. is silent regarding the claimed profile roughness and controlled coefficient of friction. However, Lu et al. teaches profile roughness as a results effective variable which also increases the ratio of friction to adhesion compared to a smooth surface [0042 and claim 1]. The roughened surface comprises a plurality of topographical features extending from the flat tip. However, Lu et al. teaches profile roughness as a results effective variable which controls coefficient of friction[0042 and claim 1]. Applicant admits and states in the Remarks dated 08/26/2026 “Lu expressly teaches that roughness is created through UV/ozone treatment or oxygen plasma treatment of the fibril tips. "UVO treatment significantly increases the surface roughness". Lu at [0042]. Lu explains that the nanostructured morphology is produced by surface treatment and results from non-uniform etching of the fibril surface, accompanied by the introduction of oxygen-containing functional groups such as hydroxyl, carbonyl, and carboxylic acid groups. Lu at [0041].” Therefore, it is abundantly clear that Lu teaches a plurality of topographical features extending from the flat surface. Although Lu does not disclose process of molding and embossing, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process of molding and embossing and given that Lu meets the requirements of the claimed microfiber array, Lu clearly meet the requirements of present claims microfiber array.
It would have been obvious to one of ordinary skill in the art to use the teachings of Lu et al. in Sitti et al. to vary the profile roughness through routine experimentation and arrive at any profile roughness including the claimed profile roughness to affect adhesion and control the coefficient of friction and arrive at the claimed invention.
Regarding claim 9, the tips provide a controlled normal adhesion. As set forth above in the 35 USC 112 rejection of claim 9, the cited art is considered to meet the present limitations of controlled normal adhesion as it is unclear what is meant by such a recitation as such is subjection language. Sitti et al. teaches adding bumps to the tips and therefore provides controlled normal adhesion and also teaches controlled adhesion.
Regarding claims 10-12, Sitti et al. teach controlling the normal adhesion and Lu et al. teach affecting profile roughness to affect the adhesion and friction and coefficient of friction, but are silent regarding the adhesion being zero, ratio between a force of friction and force of adhesion and profile roughness, but are silent regarding the adhesion being zero, friction to adhesion ratio and profile roughness. However, it would have been obvious to one of ordinary skill in the art to control the normal adhesion to be any value including zero, adjust the friction adhesion ratio and profile roughness in order to control and affect picking up and release of objects and arrive at the claimed invention.
Regarding claim 13, the object comprises a semiconductor device [12:14-15].
Regarding claim 20, the previous combination is silent regarding the profile roughness being uniform across the flat surface. However, it would have been obvious to one of ordinary skill in the art to have the profile roughness to be uniform across the flat surface in order to keep properties consistent and uniform across surface to have uniform properties and arrive at the claimed invention.
Regarding claim 15, Sitti et al. teach a method of fabricating a microfiber array for use in handling semiconductor devices comprising forming the microfiber array from a curable polymer using a mold curing the polymer to form a cured microfiber array [Abstract and 0148] and wetting the tips of the cured microfiber array with a second curable polymer and the second curable polymer is liquid and placing the microfiber array with wetted tips on a flat, roughened surface, wherein the wetted tips of the microfiber array are in contact with the flat, roughened surface; and curing the second curable polymer, wherein the cured second polymer forms tips with a flat surface and having a profile roughness similar to the flat, roughened surface [0089, 0148].
Sitti et al. is silent regarding the claimed topographical features. However, Lu et al. teaches profile roughness as a results effective variable which controls coefficient of friction[0042 and claim 1]. Applicant admits and states in the Remarks dated 08/26/2026 “Lu expressly teaches that roughness is created through UV/ozone treatment or oxygen plasma treatment of the fibril tips. "UVO treatment significantly increases the surface roughness". Lu at [0042]. Lu explains that the nanostructured morphology is produced by surface treatment and results from non-uniform etching of the fibril surface, accompanied by the introduction of oxygen-containing functional groups such as hydroxyl, carbonyl, and carboxylic acid groups. Lu at [0041].” Therefore, it is abundantly clear that Lu teaches a plurality of topographical features extending from the flat surface.
It would have been obvious to one of ordinary skill in the art to use the teachings of Lu et al. in Sitti et al. to vary the topographical features to affect adhesion and control the coefficient of friction and arrive at the claimed invention.
Regarding claims 16-18, The previous combination is silent regarding the claimed further method steps. However, it would have been obvious to one of ordinary skill in the art to mold the cured microfiber array with a casting material to form a negative replica of the microfiber array with roughened tips and molding the negative replica with the curable polymer to form an additional microfiber array in order to be more efficient and create more arrays as needed. The claimed injection molding or compression molding would have been obvious to one of ordinary skill in the art given the limited number of types of molding and such is known in the art to one ordinary skill in the art.
Regarding claim 19, Sitti et al. teach glass as the molding material. But are silent as to it being frosted. It would have been obvious to one of ordinary skill in the art to use frosted glass as the roughened surface given the limited number of types of glass and arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 08/26/2026 have been fully considered but they are not persuasive.
Applicant admits Lu teaches the claimed topographical features and states in the Remarks dated 08/26/2026 “Lu expressly teaches that roughness is created through UV/ozone treatment or oxygen plasma treatment of the fibril tips. "UVO treatment significantly increases the surface roughness". Lu at [0042]. Lu explains that the nanostructured morphology is produced by surface treatment and results from non-uniform etching of the fibril surface, accompanied by the introduction of oxygen-containing functional groups such as hydroxyl, carbonyl, and carboxylic acid groups. Lu at [0041].” However, Applicant argues Lu does not teach the features are molded and embossed. Although Lu does not disclose process of molding and embossing, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process of molding and embossing and given that Lu meets the requirements of the claimed microfiber array, Lu clearly meet the requirements of present claims microfiber array. Lu arriving the claimed featured by a different method, does not prevent Lu from reading on the present claims article. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113 I.
Applicant argues the motivation to modify the tips is different in Lu than the present invention. Rationale different from Applicant’s is permissible. See MPEP 2144 IV. he reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Further, the present specification teaches the surface roughness affect the friction. Given Lu teaches increasing the surface roughness, Lu also teaches varying the fiction and adhesion.
Applicant is invited to amend the claims over the cited art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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/Shawn Mckinnon/Examiner, Art Unit 1789
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