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 Arguments
The rejections under 112(b) have been withdrawn in response to the amendments filed 10/6/2025.
Applicant's arguments filed 10/6/2025 have been fully considered but they are not persuasive.
Applicant argues that the cited references do not teach the amended claim limitations because the claims require the shrinking to occur while the polymer is restrained. Applicant argues that Iwashita describes shrinkage in an unrestrained manner because the resin shrinks until it contacts the regulation member as opposed to being constrained while shrinking. Examiner disagrees. The broadest reasonable interpretation of “constrained” in the claim does not necessarily require that the constraint, for example the regulation member of Iwashita, is actually applying a force to the resin while being shrunk. Restricting the scope of where the resin is able to shrink and in what shape is enough to meet the broadest reasonable interpretation of the claim. Additionally, as per Iwashita [0071], “Furthermore, according to the embodiment shown in FIGS. 8A and 8B, the heat-shrinking resin 110 after the shrinkage has a shape along the surface of the shrinkage regulation member 810. Therefore, it is possible to reduce the occurrence of asperities or wrinkles on the heat-shrinking resin 110 during the shrinkage.” This implies that the resin is shrunk against the regulation member to smooth out any wrinkles. This certainly would encompass the interpretation of claims as argued by Applicant. With respect to the shrinkage in the other directions, Iwashita describes the resin is fixed to another member while shrinkage occurs, see [0073], the fixing also constitutes being “constrained.” Claims 2-20 also remain rejected.
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 no obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 5-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (Polymer shrinkage of hot embossed microstructures for higher aspect ratio and smaller size, see copy made of record on the IDS dated 7/23/2024) and Iwashita (US 2015/0284855.)
Regarding claim 1, Zhu meets the claimed, A method of producing nanoscale features on a pre-stressed polymer film, the method comprising: (Zhu Section 2 describes embossing a pre-stressed plastic) imprinting the pre-stressed polymer film with a nanoscale or microscale pattern; (Zhu Section 2.3 describes hot embossing the polymer, Section 2.2 describes patterns such as microneedles and US penny designs were made) shrinking the pre-stressed polymer film in a second direction with a first heat treatment process; (Zhu Section 2.5 describes baking the polymer to shrink it) to produce the nanoscale features on the pre- stressed polymer film (Zhu Section 3.1 describes the results of the shrunk microneedle and penny patterns.)
Zhu does not describe a second heat shrinking or a step of constraining the polymer film and does not meet the claimed, constraining the pre-stressed polymer film in a first direction with a first constraint; releasing the first constraint; constraining the pre-stressed polymer film in a third direction with a second constraint, the third direction being different than the first direction; shrinking the pre-stressed polymer film in a fourth direction with a second heat treatment process; and releasing the second constraint.
Analogous in the field of patterning resin films, Iwashita meets the claimed, constraining the pre-stressed polymer film in a first direction with a first constraint; shrinking while the pre-stressed polymer film is constrained in the first direction (Iwashita [0068]-[0069] describes using a regulation member 810 inserted inside of a cylindrical heat-shrinking resin 110 to regulate the shrinking of the resin in the radial direction) constraining the pre-stressed polymer film in a third direction with a second constraint, the third direction being different than the first direction; (Iwashita [0073] discloses another heat-shrinking step where the heat-shrinking resin 110 is pinned at two points to constrain the shrinking in a planar direction within the shape of a rectangle) while the pre-stressed polymer film is constrained in the third direction shrinking the pre-stressed polymer film in a fourth direction with a second heat treatment process; (Iwashita [0073] describes shrinking the resin using heat.) Iwashita does not explicitly describe releasing the first constraint; and releasing the second constraint, however, it would have been obvious to a person of ordinary skill in the art before the filing date to remove the restraints so that the heat-shrunk polymer can continue being processed.
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the step of embossing and shrinking a polymer as described in Zhu with the additional steps of constraining the polymer and heating it to shrink it in two directions as described in Iwashita in order to achieve a particular desired shape and pitch during shrinking and avoid asperities or wrinkles during shrinking, see Iwashita [0070]-[0071].
Regarding claim 2, Zhu meets the claimed, The method of claim 1, wherein a temperature of the first heat treatment process is controlled to achieve final shrink dimensions between 100% and 30% of original dimensions of the pre-stressed polymer film (Zhu Section 2.3 describes controlling the temperature during baking and 2.1 describes the final dimensions are 2/5 of the original size, about 40%, see also Figure 5A showing the shrunk penny design is approximately 40% of the size of the original penny.)
Regarding claim 3, neither Zhu not Iwashita describe two different temperatures and do not explicitly meet the claimed, The method of claim 1, wherein the first heat treatment process is conducted at a first temperature and the second heat treatment process is conducted at a second temperature, the first temperature being different than the second temperature, however, Zhu Section 2.5 describes different temperatures can be used in the shrinking process to control the rate of shrinking. It would have been obvious to a person of ordinary skill in the art before the filing date to modify the temperatures of the two heat shrinking processes as described in Zhu and Iwashita in order to control the rate of the shrinking, see Zhu Section 2.5.
Regarding claim 5, Zhu meets the claimed, The method of claim 1, wherein the pre- stressed polymer film is a thermoplastic material or an elastomeric material (Zhu Section 2.1 describes polystyrene.)
Regarding claim 6, Iwashita meets the claimed, The method of claim 1, wherein a shrinkage gradient is achieved by controlling the placement of the first constraint or controlling a magnitude of the first constraint relative to a location of the pattern (Iwashita [0073] describes how the resin can be shrunk into a desired shape, i.e. creating a shrinkage gradient, via fixing the resin at different points.)
It would have been obvious to a person of ordinary skill in the art before the filing date to control the placement of the constraint as described in Iwashita to create a shrinkage gradient in order to achieve a particular desired shape after shrinking, see Iwashita [0073].
Regarding claim 7, Zhu meets the claimed, The method of claim 1, wherein the pre- stressed polymer film is imprinted at a temperature between 110°C and 140°C using a force in a range of about 1000 N to about 10,000 N (Zhu Section 2.3 and Table 1 discloses embossing at 120°C at 5MPa which is approximately 1417 N over the area of a penny.)
Regarding claim 8, Zhu and Iwashita meet the claimed, The method of claim 1, wherein the first heat treatment process is performed for a first duration and the second heat treatment process is performed for a second duration (Zhu Section 2.5 describes a 5 minute process for the first heat shrinking and while Iwashita does not disclose a particular time, the process inherently has some type of duration.)
Regarding claim 9, Zhu meets the claimed, The method of claim 1, wherein the first heat treatment process is applied to obtain partial shrinkage of the nanoscale or microscale pattern to achieve a tunable degree of miniaturization (Zhu Section 2.5 and 3.1 ponders altering the temperature of the heat treatment to affect distortion and slow shrinking.)
Regarding claim 10, Iwashita does not explicitly meet the claimed, The method of claim 1, wherein the second direction is orthogonal to the first direction, however Iwashita [0073] does describe that the step of regulating the shrinkage can be performed by fixing two or more points of the heat-shrinking resin to another member in order to conform to any desired shape. It would have been obvious to a person of ordinary skill in the art before the filing date to use a constraint in any desired direction in order to produce a desired shape, see Iwashita [0073].
Regarding claim 11, Iwashita meets the claimed, The method of claim 1, wherein the fourth direction is orthogonal to the third direction (Iwashita [0073] describes fixing the corners while allowing shrinking inward.)
Regarding claim 12, Iwashita does not explicitly meet the claimed, The method of claim 1, wherein the second direction and the third direction are a same direction, however Iwashita [0073] does describe that the step of regulating the shrinkage can be performed by fixing two or more points of the heat-shrinking resin to another member in order to conform to any desired shape. It would have been obvious to a person of ordinary skill in the art before the filing date to use a constraint in any desired direction in order to produce a desired shape, see Iwashita [0073].
Regarding claim 13, Iwashita meets the claimed, The method of claim 1, wherein the third direction and the first direction differ by an angle, the angle being less than about 90 degrees, however Iwashita [0073] does describe that the step of regulating the shrinkage can be performed by fixing two or more points of the heat-shrinking resin to another member in order to conform to any desired shape. It would have been obvious to a person of ordinary skill in the art before the filing date to use a constraint in any desired direction in order to produce a desired shape, see Iwashita [0073].
Regarding claim 14, Iwashita does not specify, The method of claim 1, however Iwashita [0073] does describe that the step of regulating the shrinkage can be performed by fixing two or more points of the heat-shrinking resin to another member in order to conform to any desired shape. It would have been obvious to a person of ordinary skill in the art before the filing date to include an additional constraint and heat treatment process in any desired direction in order to produce a desired shape, see Iwashita [0073].
Regarding claim 15, Zhu meets the claimed, The method of claim 1, wherein the imprinted pattern is a two-dimensional pattern (Zhu Section 2.2 describes both two- and three-dimensional designs were produced, the two-dimensional design being posts and needles.)
Regarding claim 16, Zhu meets the claimed, The method of claim 1, wherein the imprinted pattern is a three-dimensional pattern (Zhu Section 2.2 describes both two- and three-dimensional designs were produced, the three-dimensional design being the penny.)
Regarding claim 17, Zhu uses a hot-embossing method in the cited embodiment and does not meet the claimed, The method of claim 1, wherein imprinting the prestressed polymer film includes imprinting the prestressed polymer film using xurography or laser machining lithography, Zhu Section 1 also describes other methods of pre-patterning including laser ablation.)
The courts have held that substituting prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to simply substitute one method of patterning for another, such as laser ablation, with reasonable expectation of successfully obtaining the polymer pattern, see Zhu Section 1.
Regarding claim 18, Iwashita meets the claimed, The method of claim 1, wherein the first constraint is a uniaxial constraint (Iwashita [0069] describes a constraint in the radial direction.)
Regarding claim 19, Iwashita does not explicitly disclose, The method of claim 1, wherein the second constraint is a uniaxial constraint, however Iwashita [0073] does describe that the step of regulating the shrinkage can be performed by fixing two or more points of the heat-shrinking resin to another member in order to conform to any desired shape. It would have been obvious to a person of ordinary skill in the art before the filing date to use a uniaxial constraint in order to shrink the resin into a desired direction to produce a desired shape, see Iwashita [0073].
Regarding claim 20, Zhu meets the claimed, A method of producing nanoscale features on a pre-stressed polymer film, the method comprising iteratively repeating the method of claim 1 (Zhu Section 2.2 describes the process is performed twice, once for a 2D pattern and once for a 3D pattern.)
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Zhu as modified by Iwashita as applied to claim 1 above, and further in view of Hercules Inc, “Hercules” (GB1131517A, see copy provided.)
Regarding claim 4, neither Zhu nor Iwashita use a mechanical clamp during the heat shrinking and do not meet the claimed, The method of claim 1, wherein the first constraint is mechanical clamp, adhesive bonding or an electromagnetic means.
Hercules also discloses a heat shrinking process for thermoplastic materials and meets the claimed, The method of claim 1, wherein the first constraint is mechanical clamp, adhesive bonding or an electromagnetic means (Hercules page 2 lines 104-111 describe clamping a piece of thermoplastic in a mold during heat shrinking. The mold clamp is a mechanical clamp.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the regulation member in Zhu as modified by Iwashita with the clamping mold as described in Hercules in order to keep the thermoplastic fabric taught during heat shrinking, see Hercules page 2 lines 109-111.
Conclusion
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.
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/V.B./ Examiner, Art Unit 1744
/XIAO S ZHAO/ Supervisory Patent Examiner, Art Unit 1744