bDETAILED 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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/23/2025 has been entered.
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.
Claims 1-5, 7-17 and 20 are rejected under 35 U.S.C. 112(b), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 and 20 recite “performing a corrective action….. before performing the curing” is ambiguous as it is not clear what it refers to. In the specification there is no specific description about corrective action related to incomplete spread other than aborting the curing (para [0026]). Appropriate correction is required.
Claim 8 is indefinite in view of claim 5 element c) which does not mention about presence of particles.
Claim 11 recites “performing a corrective action” which is indefinite in view of the corrective action in claim 1. Is it the same corrective action or a separate corrective action?
Claim 12 is indefinite as there is no d) step in claim 5.
Claims 2-5, 7-17 are also rejected being dependent on rejected claim 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially createddoctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321(d)may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign aterminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-4, 13, 15-16, 20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of US Patent 11,908,711 Cho et al. (US PGPUB 2014/0211105 A1). Although the conflicting claims are not identical, they are not patentably distinct from each other.
Regarding claim 1: A method of planarizing a substrate comprising:
dispensing formable material onto a substrate;
contacting, at a planarizing station at a first location, a superstrate held by a superstrate chuck with the formable material on the substrate, thereby forming a multilayer structure including the superstrate, a film of the formable material, and the substrate;
releasing the superstrate from the superstrate chuck;
moving the multilayer structure from the first location to a curing station located at a second location away from the first location,
curing the film of the formable material of the multilayer structure at the curing station; and
while the multilayer structure is being transferred between the planarizing station and the curing station, detecting incomplete spread of the formable material within the multilayer
structure;
in a case that the detected incomplete spread is above a threshold,
performing a corrective action to address the incomplete spread before performing the curing; and
processing the cured film to make the article.
Claim 1 of ‘8711: A method of planarizing a substrate comprising:
dispensing a formable material onto the substrate;
contacting, at a planarizing station at a first location, a superstrate held by a superstrate chuck with the formable material on the substrate, thereby forming a multilayer structure including the superstrate, a film of the formable material, and the substrate;
releasing the superstrate from the superstrate chuck;
moving the multilayer structure from the planarizing station to a curing station located at a second location away from the first location, the curing station including an array of light-emitting diodes;
after the multilayer structure leaves the planarizing station and before the multilayer structure arrives at the curing station, detecting particles between the superstrate and the substrate of the multilayer structure using a detector (equivalent to performing detection related to the multilayer structure while the multilayer structure is being transferred between the planarizing station and the curing station as particles are related to the multilayer structure);
after detecting the particles and before the multilayer structure arrives at the curing station, removing the particles using a particle removal device, wherein the particle removal device is a vacuum or an electrostatic tool; and
curing the film of the formable material by exposing the film of the formable material to light emitted from the array of light-emitting diodes (equivalent to curing the film of the formable material of the multilayer structure at the curing station), after the curing, moving the multilayer structure from the curing station to the planarizing station, the detector is operated again to detect further particles and removing the further particles using the particle removal device;
wherein the planarizing station, the curing station, the detector, and the particle removal device are contained within a common housing and the multilayer structure travels linearly along a rail between the planarizing station and the curing station within the common housing.
Claim 1 of ‘8711 does not explicitly talk while the multilayer structure is being transferred between the planarizing station and the curing station, detecting incomplete spread of the formable material within the multilayer
structure;
in a case that the detected incomplete spread is above a threshold,
performing a corrective action to address the incomplete spread before performing the curing.
However claim 1 of ‘8711 teaches after the multilayer structure leaves the planarizing station and before the multilayer structure arrives at the curing station, detecting particles between the superstrate and the substrate of the multilayer structure using a detector which would be obvious to as particles are related to the multilayer structure. Cho teaches in Fig. 4-5, 13-15 about detecting incomplete spread (concave/convex shape) of the formable material 310a within the multilayer structure;
in a case that the detected incomplete spread is above a threshold,
performing a corrective action (adding second adhesive 320a to make it flat) to address the incomplete spread before performing the curing (Fig. 5 shows 320a is spread on 310a first and then curing by 800).
Therefore it would have been obvious to one of ordinary skill in the art, at the time of applicant’s invention to apply Cho’s teachings of making a corrective action of flatness of improper spread of formable material to Norikane’s method and thereby preventing bubbles to be formed and overall strength of the device is improved (Cho, [0014] – [0015]).
Regarding claim 20: A method of manufacturing an article, comprising:
dispensing formable material onto a substrate;
contacting, at a planarizing station at a first location, a superstrate held by a superstrate chuck with the formable material on the substrate, thereby forming a multilayer structure including the superstrate, a film of the formable material, and the substrate;
releasing the superstrate from the superstrate chuck;
moving the multilayer structure from the first location to a curing station located at a second location away from the first location,
curing the film of the formable material of the multilayer structure at the curing station; and
while the multilayer structure is being transferred between the planarizing station and the curing station, detecting incomplete spread of the formable material within the multilayer
structure;
in a case that the detected incomplete spread is above a threshold,
performing a corrective action to address the incomplete spread before performing the curing; and
processing the cured film to make the article.
Claim 7 of ‘8711: A method of manufacturing an article, comprising:
dispensing a formable material onto a substrate;
contacting, at a planarizing station at a first location, a superstrate held by a superstrate chuck with the formable material on the substrate, thereby forming a multilayer structure including the superstrate, a film of the formable material, and the substrate;
releasing the superstrate from the superstrate chuck;
moving the multilayer structure from the first location to a curing station located at a second location away from the first location, the curing station including an array of light-emitting diodes;
after the multilayer structure leaves the planarizing station and before the multilayer structure arrives at the curing station, detecting particles between the superstrate and the substrate of the multilayer structure using a detector (equivalent to performing detection related to the multilayer structure while the multilayer structure is being transferred between the planarizing station and the curing station as particles are related to the multilayer structure);
after detecting the particles and before the multilayer structure arrives at the curing station, removing the particles using a particle removal device, wherein the particle removal device is a vacuum or an electrostatic tool; and
curing the film of the multilayer structure by exposing the film to light emitted from the array of light-emitting diodes (equivalent to curing the film of the formable material of the multilayer structure at the curing station); and
after the curing, moving the multilayer structure from the curing station to the planarizing station, the detector is operated again to detect further particles and removing the further particles using the particle removal device;
processing the cured film to make the article, wherein the planarizing station, the curing station, the detector, and the particle removal device are contained within a common housing and the multilayer structure travels linearly along a rail between the planarizing station and the curing station within the common housing.
Claim 7 of ‘8711 does not explicitly talk about while the multilayer structure is being transferred between the planarizing station and the curing station, detecting incomplete spread of the formable material within the multilayer
structure;
in a case that the detected incomplete spread is above a threshold,
performing a corrective action to address the incomplete spread before performing the curing.
However claim 7 of ‘8711 teaches after the multilayer structure leaves the planarizing station and before the multilayer structure arrives at the curing station, detecting particles between the superstrate and the substrate of the multilayer structure using a detector which would be obvious to as particles are related to the multilayer structure. Cho teaches in Fig. 4-5, 13-15 about detecting incomplete spread (concave/convex shape) of the formable material 310a within the multilayer structure;
in a case that the detected incomplete spread is above a threshold,
performing a corrective action (adding second adhesive 320a to make it flat) to address the incomplete spread before performing the curing (Fig. 5 shows 320a is spread on 310a first and then curing by 800).
Therefore it would have been obvious to one of ordinary skill in the art, at the time of applicant’s invention to apply Cho’s teachings of making a corrective action of flatness of improper spread of formable material to Norikane’s method and thereby preventing bubbles to be formed and overall strength of the device is improved (Cho, [0014] – [0015]).
Regarding claim 2: Claims 1 and 2 of ‘8711 teaches the limitations.
Regarding claims 3-4: Claim 1 of ‘8711 teaches the limitations.
Regarding claim 13: Claim 1 of ‘8711 teaches the limitations.
Regarding claim 15: Claim 5 of ‘8711 teaches the limitations.
Regarding claim 16: Claim 6 of ‘8711 teaches the limitations.
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 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 of this title, 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.
4. Claims 1, 3-4, 13-17, 20 are rejected under 35 U.S.C. 103 as being obvious over Norikane et al (US 2020/0142299 A1) in view of Koole et al. (WO 2012/022561 A1) also evidenced by and Kasumi et al (US 2010/0031833 A1) and further in view of Sato et al. (US PGPUB 2012/0141659 A1, sato‘1659) and Cho et al. (US PGPUB 2014/0211105 A1)
Regarding claims 1, 13-16, 20: Norikane teaches in Fig. 4A-4D about a method of planarizing a substrate comprising:
dispensing formable material 1M onto the substrate 1 (Fig. 4A);
contacting, (Fig. 4B) at a planarizing station at a first location, a superstrate 11 held by a superstrate chuck 12 with the formable material on the substrate, thereby forming a multilayer structure including the superstrate, a film of the formable material, and the substrate (Fig. 4B);
releasing the superstrate from the superstrate chuck (Fig. 4C);
moving the multilayer structure from the first location to a curing station located at a second location away from the first location; and
curing the film of the formable material of the multilayer structure at the curing station; and (by exposing the film of the formable material to light emitted from the array of light-emitting diodes as shown in Fig. 4D, [0042]).
while the multilayer structure is being transferred between the planarizing station and the curing station, detecting incomplete spread of the formable material within the multilayer
structure;
in a case that the detected incomplete spread is above a threshold,
performing a corrective action to address the incomplete spread before performing the curing; and
processing the cured film to make the article.
Norikane does not teaches moving the multilayer structure from the first location to a curing station located at a second location away from the first location and detecting incomplete spread of the formable material within the multilayer structure;
in a case that the detected incomplete spread is above a threshold,
performing a corrective action to address the incomplete spread before performing the curing.
Koole teaches in [0047], Fig. 2a about moving the multilayer structure from the first location to a curing station located at a second location (cleaning station which is not shown and as what type/how curing is happening therefore cleaning can be interpreted as curing of the film in BRI ) away from the first location (Kasumi also evidenced in Fig. 2 about moving the multilayer structure from the first location to a curing station located at a second location away from the first location, the curing station including an array of light-emitting diodes (pressing happens in press station 120 and curing happens in curing station 130 different than the press station)).
Koole further teaches in Fig. 2b and [0047] about performing detection related to the multilayer structure (defect particles 27 of the imprintable medium on the patterned surface 22 of the imprint substrate 20 which is related/part to the multilayer structure of Norikane) while the multilayer structure is being transferred between the planarizing station and the curing station. Sato ‘1659 also teaches in 3,4A-4C, 7A-7D about performing detection related to the multilayer structure before curing by the inspection unit 8a/8b/22a/22b etc. to detect particle.
Therefore it would have been obvious to one of ordinary skill in the art, at the time of applicant’s invention to apply Koole’s and Kasumi’s teachings to Norikane’s method to do curing in a different location to have advantage at least one of throughput, maintenance and manufacturing cost (Kasumi, [0006] – [0007]) and to initiate a cleaning step when necessary, speeding processing by eliminating unnecessary cleaning, the elimination of false positives from transferred anti-adhesion compound is reduced or eliminated (Koole, abstract) and efficiently detects particle present on an imprint area while limiting reductions in productivity (Sato ‘1659, [0006])
Norikane in view of Koole and Kasumi still does not talk about in a case that the detected incomplete spread is above a threshold,
performing a corrective action to address the incomplete spread before performing the curing.
Cho teaches in Fig. 4-5, 13-15 about detecting incomplete spread (concave/convex shape) of the formable material 310a within the multilayer structure;
in a case that the detected incomplete spread is above a threshold,
performing a corrective action (adding second adhesive 320a to make it flat) to address the incomplete spread before performing the curing (Fig. 5 shows 320a is spread on 310a first and then curing by 800).
Therefore it would have been obvious to one of ordinary skill in the art, at the time of applicant’s invention to apply Cho’s teachings of making a corrective action of flatness of improper spread of formable material to Norikane’s method and thereby preventing bubbles to be formed and overall strength of the device is improved (Cho, [0014] – [0015]).
Regarding claim 3: Kasumi teaches in Fig. 2 wherein the moving of the multilayer structure
from the planarizing station to the curing station comprises linearly translating the multilayer
structure.
Regarding claim 4: Kasumi teaches in [0032] wherein the multilayer structure is linearly
translated via a rail (170a-170c) extending from the planarizing station to the curing station.
Regarding claim 13: Kasumi teaches in Fig. 1, further comprising, after the curing, moving the multilayer structure from the curing station to the planarizing station.
Regarding claim 14: Norikane teaches in Fig. 4A-4D further comprising, removing the superstrate from the cured film of the multilayer structure at the planarizing station.
Regarding claim 15: Kasume teaches in [0004] – [0008] wherein the superstrate is transparent with respect to the light emitted from the light-emitting diodes (being cured through UV station 130, the superstrate needs to be transparent).
Regarding claim 16: Kasume teaches in [0004] – [0008] wherein the superstrate chuck is not transparent with respect to the light emitted from the light-emitting diodes (being cured through UV station 130, the superstrate chuck does not need to be transparent).
Regarding claim 17: Kasumi teaches in Fig. 2 and [[0033] wherein the dispensing of the
formable material is performed ata dispensing station 112 located a third location away from the
first location and the second location.
5. Claim 2 is rejected under 35 U.S.C. 103 as being obvious over Norikane et al (US 2020/0142299 A1) in view of Koole et al. (WO 2012/022561 A1), Kasumi et al (US 2010/0031833 A1), Sato et al. (US PGPUB 2012/0141659 A1, hereafter sato‘1659) and Cho et al. (US PGPUB 2014/0211105 A1) and Lennon et al. (US PGPUB 2007/0110893 A1) and further in view of Tada et al. (CN 105810153 B)
Regarding claim 2: Norikane teaches in Fig. 4A-4D and Kasumi teaches in Fig. 1
wherein the planarizing station and the curing station are contained within a common housing.
Norikane in view of Koole and Kasumi teaches using UV light for curing but does not explicitly talk about using array of light-emitting diodes for curing.
Lennon teaches in [01017] about using array of light-emitting diodes for curing for low exposure density for large area curing.
Thus, it would have been obvious to try by one of ordinary skill in the art, at the time the invention was made, to use light emitting diodes in the method of curing according to the teaching of Lennon for low exposure density for large area curing [01017], since it has been held that choosing from a finite number of identified, predictable solutions such as UV light or light emitting diodes used for curing, with a reasonable expectation of success is obvious. KSR Int'l v. Teleflex Inc., 127 S.Ct. 1727 (2007).
Norikane in view of Kasumi and Lennon does not explicitly talk about wherein the curing station includes a diffuser configured to spread light emitted from the light-emitting diodes.
Tada teaches in page 4 about using a diffuser with light emitting diodes to prevent the change of the display color from the light source (page 3).
Thus, it would have been obvious to try by one of ordinary skill in the art, at the time the invention was made, to use diffuser in Norikane’s method to prevent the change of the display color from the light source (page 3).
6. Claims 5, 7-11 are rejected under 35 U.S.C. 103 as being obvious over Norikane et al (US 2020/0142299 A1) in view of Koole et al. (WO 2012/022561 A1), Kasumi et al (US 2010/0031833 A1), Sato et al. (US PGPUB 2012/0141659 A1, sato‘1659) and Cho et al. (US PGPUB 2014/0211105 A1)and further in view of Sato et al. (US PGPUB 2012/0188536)
Regarding claim 5: Sato teaches in claim 10 about further comprising detecting one or more of:
a) a presence of particles between the superstrate and the substrate of the multilayer structure (claim 10, [0005] – [0006] )
Thus, it would have been obvious to try by one of ordinary skill in the art, at the time the invention was made, to use Sato’s method in Norikane’s method to prevent breaking of the pattern to be transferred (Sato, [0006]).
Regarding claim 7: Koole teaches (as explained in claim 1) and Saito in claim 10 teaches where the detecting is performed by a detector 50 located between the planarizing station and the curing station.
Regarding claim 8: Sato teaches in [0006] wherein, in a case that c) the presence of particles are detected on the upper surface of the superstrate, removing the detected particles (particles being sandwiched can be interpreted on the upper surface of the substrate).
Regarding claim 9: Sato teaches in [0006], [0042], [0047] wherein the detected particles are removed as the multilayer structure is moving from the planarizing station to the curing station (removing particles happens outside of the imprint process).
Regarding claim 10: Sato teaches in [0047] wherein the detected particles are removed via a vacuum or an electrostatic tool located between planarizing station and the curing station (Sato teaches about a cleaning device or the like).
It has been held that to be entitled to weight in method claims, the recited-structure limitations therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure. Ex parte Pfeiffer, 1962 C.D. 408 (1961)
Regarding claim 11: Sato teaches in [0006] further comprising:
in case that a) the presence of particles between the superstrate and the substrate of the multilayer structure are detected (claim 10, [0006]), ,
prior to curing performing a corrective action to address the detected presence of particles between the superstrate and the substrate of the multilayer structure before
proceeding to curing ([0042], [0047], only examining presence of particles being the limitation).
7. Claim 12 is a rejected under 35 U.S.C. 103 as being obvious over Norikane et al (US 2020/0142299 A1) in view of Koole et al. (WO 2012/022561 A1), Kasumi et al (US 2010/0031833 A1), Sato et al. (US PGPUB 2012/0141659 A1, sato‘1659) and Cho et al. (US PGPUB 2014/0211105 A1)and further in view of Sato et al. (US PGPUB 2012/0188536) and Resnick et al. (US PGPUB 2019/0227437 A1)
Regarding claim 12: Resnick teaches in [0063] about further comprising:
in case that d) the presence of scratches on the upper surface of the superstrate of the multilayer structure are detected,
prior to curing the film of the multilayer structure, reforming the multilayer structure with a superstrate without scratches ([0063] teaches the superstrate 18 can be inspected for scratches or other defects along the surface used in forming the planarization layer 64. The inspection can be performed by visual inspection using a bright light, dark field, scattered light, phase and specular detection methods or the like. In an embodiment, the protective layer 27 or both the protective layer 27 and buffer layer 25 may be removed and replaced by new layer(s) when the defect density exceeds a threshold).
Thus, it would have been obvious to try by one of ordinary skill in the art, at the time the invention was made, to use Resnick’s method in Norikane’s method to extend the useful life of a superstrate (Resnick, [0002]).
Response to Arguments
8. Applicant’s arguments, see page 2-3, filed on 09/23/2025, with respect to the rejection(s) of claim(s) 1, 20 under 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Norikane et al (US 2020/0142299 A1) in view of Koole et al. (WO 2012/022561 A1), Kasumi et al (US 2010/0031833 A1), Sato et al. (US PGPUB 2012/0141659 A1, sato‘1659) and Cho et al. (US PGPUB 2014/0211105 A1).
Conclusion
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/Mohammed Shamsuzzaman/Primary Examiner, Art Unit 2897