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 without traverse of Group I, claims 1-10 in the “Response To Restriction Requirement” filed on January 12, 2026 is acknowledged. Non-elected claims 11-18 of Group II and non-elected claims 19 and 20 of Group III are hereby withdrawn from consideration.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on August 29, 2023 was filed before the mailing date of this Office Action. The submission is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the IDS is being considered by the Examiner.
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.
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.
Claims 1-10 are 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 1, recites both: (i) an apparatus (i.e., wherein the template has: a first region on the first surface, a first recessed portion in the first region, a second region adjacent to first region on the first surface, and a second recessed portion in the second region, and the following relationship is satisfied for the template: D1 > 2(H1 + H2)/π[,] where D1 is a shortest distance between the first recessed portion and the second recessed portion, H1 is a depth of the first recessed portion from the first surface, and H2 is a depth of the second recessed portion from the first surface, lines 6-16); and (ii) method steps of using the apparatus (i.e., placing an imprint material on an object; pressing a first surface of a template against the imprint material on the object to mold the imprint material; curing the molded imprint material on the object; [and] removing the template from cured imprint material, lines 1-6). “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b).” Please see, MPEP 2173.05(p)(II). For purpose of examining the elected pattern forming method of Group I, claims 1-10, the Examiner is interpreting claim 1 as reciting: “A pattern forming method, comprising: placing an imprint material on an object; pressing a first surface of a template against the imprint material on the object to mold the imprint material; curing the molded imprint material on the object; removing the template from cured imprint material.” The apparatus limitations of claim 1 regarding the template are not afforded patentable weight because they render claim 1 indefinite under 35 U.S.C. 112(b).
Claims 2-10 are also rejected as being indefinite under 35 U.S.C. 112(b) by virtue of their dependency on independent claim 1. The Examiner notes that claims 2-6, 9, and 10 also appear to be apparatus claims because they recite additional limitations regarding the template. For purpose of examination, the apparatus limitations of claims 2-6, 9, and 10 regarding the template are being interpreted by the Examiner as not adding any additional steps or step limitations to the method of independent claim 1.
The Examiner also notes that only dependent claim 8 appears to recite an additional method step and, for purpose of examination, will be interpreted by the Examiner as drafted. The Examiner additionally notes that dependent claim 7 appears to only recite an additional limitation regarding the object which is also an apparatus, not an additional method step or step limitation. For purpose of examination, the apparatus limitation of claim 7 regarding the object is being interpreted by the Examiner as not adding any additional step or step limitation to the method of independent claim 1.
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.
Claims 1 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0070733 A1 (Kikuchi).
Regarding claim 1, Kikuchi discloses, A pattern forming method ([0003]), comprising:
placing an imprint material (imprint material (32); FIG. 13; [0066]) on an object (object (31); FIG. 13; [0066]);
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pressing a first surface (annotated FIG. 13, above) of a template (template (1); FIG. 13; [0068]) against the imprint material (32) on the object (31) to mold the imprint material (32) (FIG. 14);
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curing (FIG. 15; [0072]) the molded imprint material (32) on the object (31);
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removing the template (1) from cured imprint material (32) (FIG. 16; [0074]), wherein
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the template has:
a first region on the first surface,
a first recessed portion in the first region,
a second region adjacent to first region on the first surface, and
a second recessed portion in the second region, and
the following relationship is satisfied for the template:
D1> 2(H1 + H2)/π
where D1 is a shortest distance between the first recessed portion and the second recessed portion, H1 is a depth of the first recessed portion from the first surface, and H2 is a depth of the second recessed portion from the first surface.1
Regarding claim 8, Kikuchi discloses, The pattern forming method ([0003]) according to claim 1, further comprising:
etching (FIG. 17; [0076]) the object (31) using the cured imprint resist (32) as a mask after removing the template (1).
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Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
US 2021/0149297 A1 (Hayashi)—Discloses that it was well known to one of ordinary skill in the art before the effective filing date of the claimed invention that a pattern forming method (FIGs. 6A-6E) includes placing an imprint material (3z) on an object (1z and/or 2z) (FIG. 6A; [0055]); pressing a first surface of a template (4z) against the imprint material (3z) on the object (1z and/or 2z) to mold the imprint material (3z) (FIGs. 6B and 6C); [0056]); curing ([0056]) the molded imprint material (3z) on the object (1z and/or 2z); and removing the template (4z) from cured imprint material (3z) (FIG. 6D; [0057]). Also discloses that it was well known to one of ordinary skill in the art before the effective filing date of the claimed invention that a pattern forming method (FIGs. 6A-6E) includes etching ([0058]) the object (1z and/or 2z ) using the cured imprint resist (3z) as a mask ([0058]) after removing the template (4z). Additionally discloses that it was well known to one of ordinary skill in the art before the effective filing date of the claimed invention that object (1z) may be a silicon wafer ([0055]).
US 2019/0080899 A1 (Mitsugi)—Discloses that it was well known to one of ordinary skill in the art before the effective filing date of the claimed invention that a pattern forming method ([0002]; FIG. 12) may include placing an imprint material (150) ([0053]) on an object (100) ([0051]); pressing a first surface of a template (200) ([0048]) against the imprint material (150) on the object (100) to mold the imprint material (150) (S14; FIG. 12; [0113]); curing (S17; FIG. 12; [0116]) the molded imprint material (150) on the object (100); and removing (S18; FIG. 12; [0117]) the template (200) from cured imprint material (150). Also discloses that it was well known to one of ordinary skill in the art before the effective filing date of the claimed invention that object (100) may be a wafer ([0051]).
US 2018/0310413 A1 (Kasai)—Discloses that it was well known to one of ordinary skill in the art before the effective filing date of the claimed invention that a pattern forming method (FIGs. 4A-4D and 5A) may include placing an imprint material (131) (FIG. 4A; [0178]) on an object (121) ([FIG. 4A; [0178]); pressing a first surface of a template (111) (FIGs. 4B and 4C; [0168]) against the imprint material (131) on the object (121) to mold the imprint material (132) (FIG. 4C; [0179]); curing (FIG. 4D; [0180]) the molded imprint material (132) on the object (100); and removing (FIG. 5A; [0181]) the template (111) from cured imprint material (132). Also discloses that it was well known to one of ordinary skill in the art before the effective filing date of the claimed invention that a pattern (142) (FIG. 6; [0173]) having a predetermined geometry may be predicably formed by the pattern forming method (FIGs. 4A-4D and 5A).
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Erik A. Anderson whose telephone number is (703) 756-1217. The Examiner can normally be reached Monday-Friday 8:30 a.m.-4:30 p.m. (Pacific Time Zone).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, William B. Partridge, can be reached at (571) 270-1402. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/ERIK A. ANDERSON/Examiner, Art Unit 2812
/William B Partridge/Supervisory Patent Examiner, Art Unit 2812
1 Please see the rejection of claim 1 under 35 U.S.C. 112(b), above, regarding how claim 1 is being interpreted for purpose of examination.