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 .
This Final rejection is in response to the Applicant’s amendment received on 12/15/2025, in response to the Non-Final Office Action mailed on 9/22/2025.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-6) in the reply filed on 06/11/2025 is acknowledged.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “formation unit configured to form a desired substrate-side mark” “alignment unit configured to align” in claim 1. [0076] discloses a process device serving as a formation unit for forming substrate-side mark. This is interpreted as a dispenser for dispensing material; [0042] the drive system of the substrate holding unit functions as alignment unit configured to align substrate-side mark and mold side mark.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 (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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 6 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Saito et al. (US 2018/0253000 A1).
Regarding claim 6, Saito et al. teach using a glass substrate for use in an imprint system for having curable composition thereon (see [0138]). Claim additionally recites intended use of the glass substrate including “A glass substrate that is used for use in an imprint system configured to align a substrate-side mark and a mold-side mark when a pattern formed on a mold is transferred to an imprint material supplied on a substrate, wherein the substrate-side mark is formed by applying a predetermined material different from the imprint material onto a surface of the glass substrate, applying the imprint material on top of the predetermined material, and then transferring the substrate-side mark to the predetermined material by etching the imprint material and the predetermined material, and processing the predetermined material, and wherein a difference in a predetermined optical property between the predetermined material and the imprint material is larger than a difference in the predetermined optical property between the imprint material and the glass substrate.” It is noted that the use of the substrate for intended process is given little patentable weight as it does not materially distinguish the prior arts substrate from the claim substrate.
Allowable Subject Matter
Claims 1-4 are allowed.
The following is an examiner’s statement of reasons for allowance: the Applicant argued that the closest prior art Khusnatdinov (US 8,967,992) and Suzuki (US 2014/0340660) references as applied fail to teach an imprint system, that transfer a pattern formed on a mold to an imprint material supplied onto a glass substrate, the imprint system comprising at least one processor or circuit configured to control formation unit configured to form a desired substrate-side mark using a predetermined material different from the imprint material by applying the predetermined material onto the a surface of the glass substrate, applying the imprint material on top of the predetermined material, transferring the substrate-side mark to the predetermined material by etching the imprint material and the predetermined material, and processing the substrate-side mark, wherein a difference in a predetermined optical property between the predetermined material and the imprint material is larger than a difference in the predetermined optical property between the imprint material and the glass substrate; and an alignment unit configured to align the substrate-side mark including the predetermined material and a mold-side mark provided on the mold.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAHIDA SULTANA whose telephone number is (571)270-1925. The examiner can normally be reached Mon-Friday (8:30 AM -5:00 PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached at 571-270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NAHIDA SULTANA
Primary Examiner
Art Unit 1743
/NAHIDA SULTANA/Primary Examiner, Art Unit 1743