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 .
Election/Restrictions
Applicant’s election of claims 1-15 & 17 in the reply filed on 10/21/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected apparatus, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/21/25.
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.
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 1-5, 8-15 & 17 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US PG Pub 2008/0308971; hereafter ‘971) in view of Takemura (US PG Pub 2016/0236381; hereafter ‘381) and Jones et al. (US PG Pub 2007/0228593; hereafter ‘593).
Claim 1: ‘971 is directed towards a film forming method (title) comprising:
discretely arranging, on a substrate, a plurality of droplets of a curable composition containing a polymerizable compound that is a nonvolatile component, and a solvent that is a volatile component (see abstract and claims 1-18);
volatizing the solvent contained in the liquid film by enhancing a solvent volatilization effect as compared to the process of forming the liquid film (see abstract and claims 1-18); and
forming a cured liquid film by curing the liquid film (see abstract and claims 1-18).
‘971 teaches that the droplets are applied as discrete portions with a predetermined volume to obtain desired final feature density and residual layer thickness (¶ 27) wherein the discrete portions (droplets) spread and interconnect to form interstitial regions of connected droplets which subsequently form a continuous layer (¶ 29) and spreading to form a continuous layer is controlled based on drop density, spreading properties of the droplets, and evaporation rates of the solvent with additional manipulated environmental conditions (¶ 52). I.e. ‘971 teaches controlling the spreading and evaporation to form the continuous layer. ‘917 is directed towards nanoimprint lithography (see abstract).
‘971 does not teach analyzing an image obtained by capturing a process in which each of the plurality of droplets is connected to an adjacent droplet on the substrate, thereby forming a continuous liquid film on the substrate and if the analysis satisfies a predetermined condition representing that a forming state of the liquid film is sufficient, a process advances to the volatizing and then advances to the forming.
However, ‘593, which is also in the field of nanoimprint lithography (see abstract) discloses a method of residual layer thickness measurement and correction (title) in which compensation of non-uniformity of a residual layer is performed by calculating a corrected fluid drop pattern (abstract) based on analysis of images obtained for different drop patterns to determine the optimum drop pattern for the desired result using an algorithm (see claims and ¶s 23-27).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘593 into the process of ‘971 and use image analysis of captured images to determine the droplet pattern and proceeding to film forming because it is recognized in the art to capture images of the droplet pattern to determine when an optimal fluid pattern is obtained to produce the desired results.
The combination does not teach performing the image analysis in real-time during the process.
However, ‘381, which is also in the field of nanoimprint lithography (title & abstract) disclose a method of operating an imprint apparatus which includes error detection throughout the entire process (abstract) such that during each step of the process a detector unit determines if correction needs to be made or continue to the next step (Fig. 2 & abstract).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘381 into the combination such that the image analysis of the combination is done is real-time to determine when to proceed to the next step during the process because it is known in the art to perform real-time detection of errors to determine when to advance to subsequent steps in the field and it would have predictably improved the process to use real-time analysis of the images to determine when to proceed to subsequent steps in the combination because it would have improved throughput while increasing yield.
Claim 2: ‘381 teaches that when the satisfactory conditions are not detected the process does not advance to subsequent steps (Fig. 2).
Claim 3: ‘971 teaches controlling humidity and temperature (¶ 52) while evaporating the solvent (¶ 45) – i.e. a steam of the solvent is present.
Claim 4: Gas is present on the surface during the process which in turn is expelled from the surface during the formation of the film (¶s 8 & 25), discloses that the process is performed at ambient conditions (¶ 45) and that humidity can be controlled (¶ 52).
It would have been obvious to one of ordinary skill in the art at the time of filing to perform the process in clean dry air because the humidity can be controlled and thus it can be maintained at 0% humidity because generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 5: The combination teaches that the predetermined condition is based on the image analysis as discussed above.
The combination does not teach the condition is a signal intensity of the image falls below a predetermined condition.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to choose to use a lower bound as the condition because the choice is between an upper bound or a lower bound for the signal threshold and it is prima facie obvious to choose between finite possibilities.
Claim 8: The combination does not teach a specific image unit or that it relatively scans the imaging unit and the substrate.
However, imaging units that relatively scan the image unit and substrate are an art known type of imaging unit and it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate said structure and process into the combination because it is an art known means for imaging and would have predictably been suitable for the process of the combination.
Claims 9-14: The combination renders claims 9-14 obvious because the “if, then” limitation is a contingent limitation which is optional based on the outcome of claim 1 and "[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed". Thus, the combination renders the claims obvious. See MPEP §2111.04(II).
Claim 15: ‘971 further teaches the forming includes:
bringing the liquid film into contact with a flat surface of a mold (see Fig. 4 and ¶ 28);
after the bringing, curing the liquid film in a state in which the liquid film and the flat surface of the mold are in contact, thereby forming a cured film (see Fig. 4 and ¶ 28); and
after the curing, separating the cred film from the mold (see Fig. 4 and ¶ 28).
The “if, then” limitation is a contingent limitation which is optional based on the outcome of claim 1 and the combination teaches forming the cured film. Therefore, the combination renders obvious the claim because "[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed". Thus, the combination renders the claims obvious. See MPEP §2111.04(II).
Claim 17: ‘971 further teaches processing the substrate with the film formed thereon in the forming and manufacturing an article from the processed substrate (see ¶ 6).
Allowable Subject Matter
Claims 6 & 7 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759