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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/09/2025 has been entered.
The status of the claims is as follows: claims 17 and 25 are amended; claims 1-16, 18-20 and 26-26 are cancelled; claim 43 is new; resulting in claims 17, 21-25 and 37-43 pending for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17, 21-25 and 37-43 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 17, the newly added limitation reciting that the monolayer of material comprises “a non-exposed region wherein the monolayer material has a reactive functional group, and an exposed region wherein the reactive functional group of the monolayer is removed by lithographic exposure” is new matter that is not supported by the instant specification. The Applicant points to paragraphs [0051] and [0058] as supporting this limitation, however, these portions of the specification do not describe the current amendments. Paragraph [0051] continues to describe a method of making the claimed device, wherein the patterned barrier layer 111 can be used to form a patterned layer of material, further describing utilizing an etching process to remove the absorption layer. This is not the embodiment described by claim 17, as the absorption layer is not required or claimed to be removed resulting in a patterned absorption layer. Paragraph [0058] discloses removal of capping functional group 116 from a subset of organic molecules in a selected region, but does not disclose a non-exposed region or an exposed region as presently claimed.
Claims 21-25 and 37-43 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph for the reasons expressed above with respect to claim 17.
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 17, 21-25 and 37-43 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.
Regarding claim 17, the newly added limitation reciting that the monolayer of material comprises “a non-exposed region wherein the monolayer material has a reactive functional group, and an exposed region wherein the reactive functional group of the monolayer is removed by lithographic exposure” is indefinite. It is unclear what “non-exposed” and “exposed” are referring to and what structure is required. It is not clear if “non-exposed” and “exposed” are in reference to a particular method or procedure being performed on the monolayer of material, or whether “non-exposed” or “exposed” is in reference to the environment. It is not clear what structure is required to be considered “non-exposed” or “exposed” within the metes and bounds of the instant claims.
Furthermore, the Applicant points to paragraph [0058] of the originally filed specification for support for this amendment, however, in that portion of the specification, a capping functional group is disclosed, wherein the capping functional group is removed in the selected region 102, exposing the underlying terminal group 118 to which the barrier layer 111 then attaches to. From this portion of the specification, it appears that the capping functional group is a critical component to the structure of the claimed device, however, this feature is not required until dependent claim 25.
Regarding claim 23, the limitation “the monolayer of material comprises a plurality of organic molecules each having an anchoring functional group, the anchoring functional group being a functional group effective to attach the organic molecules to the absorption layer” is indefinite as it is unclear what the structure of the monolayer is in the final device. It appear that this limitation is directed to an intermediate product that would not be present in the final device, however, it is not entirely clear. Furthermore, it is not clear what is required for a function group to be “effective to attach the organic molecules to the absorption layer” and what would designate a functional group as “effective” versus “ineffective”. Thus, the structure of the claimed device of claim 23 is indefinite.
Regarding claim 24, the limitation reciting “wherein the anchoring functional group comprises a thiol group” is indefinite for the same reasons presented above with respect to claim 23. It is not clear if these groups are present in the final device as they appear to be directed to an intermediate product that is reacted to form the final device. Thus, the structure of the claimed device of claim 24 is indefinite.
Regarding claim 25, the limitation reciting “the exposed region of the monolayer of material comprises a plurality of organic molecules each having a removed capping functional group; and wherein the capping functional group is removed from at least a subset of the organic molecules in the exposed region” is indefinite as it is unclear what features are present in the final device structure. It appears that these limitations are directed to an intermediate product and a process of making, however, it is not entirely clear what the final structure of the claimed device is based on the limitations recited by claim 25.
Regarding claim 37, the limitation “wherein the monolayer of material comprises an amine or carboxylate” is indefinite as it is unclear what features are present in the final device structure. It appears that these limitations are directed to an intermediate product and a process of making, however, it is not entirely clear what the final structure of the claimed device is based on the limitations recited by claim 37.
Regarding claim 41, the limitation reciting “wherein the monolayer comprises a plurality of organic molecules having one or more of the following terminal functional groups: carboxylates, phosphates, sulfonate, pyridine, or piperidine” is indefinite as it is unclear what features are present in the final device structure. It appears that these limitations are directed to an intermediate product and a process of making, however, it is not entirely clear what the final structure of the claimed device is based on the limitations recited by claim 41.
Regarding claim 43, the limitation “wherein a pattern of the patterned layer is defined by: a selected region of a pre-absorption layer and a pre-monolayer of material that have been irradiated with extreme ultraviolet radiation, a removed unexposed portion of the pre-absorption layer to obtain the absorption layer and a removed unexposed portion of the monolayer of material to obtain the exposed region of the monolayer of material” is indefinite. It appears that these limitations are directed to an intermediate product and a process of making, however, it is not entirely clear what the final structure of the claimed device is based on the limitations recited by claim 43.
Independent claim 17 is directed to a device comprising a patterned layer of material that includes an absorption layer disposed on the substrate surface, a monolayer of material disposed on the surface of the absorption layer, wherein the monolayer comprises a non-exposed region with a reactive functional group and an exposed region with no reactive functional group and a barrier layer formed on the exposed region. The pattern layer is defined by the aforementioned limitations.
It is therefore unclear what further structure claim 43 is reciting for the claimed device as it is defining the pattern in a different way from the language of claim 17. It appears that claim 43 is reciting an intermediate of the final product recited by claim 17 and it is not clear that the final product of claim 17 would retain the features of the intermediate product recited by claim 43.
Claims 21, 22, 38-40 and 42 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph for the reasons expressed above with respect to claim 17.
Response to Arguments
Response-Claim Rejections - 35 USC § 112
In light of the Applicants amendments to the claim, new rejections under 35 USC § 112(a) and (b) are made in the office action above.
Response-Claim Rejections - 35 USC § 103
In light of the Applicants amendments to the claims in the response filed 10/09/2025, the previous rejections over Han et al. are withdrawn, however, the amendments also raised new issues under 35 USC § 112(a) and (b) as described above. The rejections over Han et al. could be reinstated based upon how the Applicant addresses and resolve the issues under 35 USC § 112(a) and (b) in their response.
The Applicant argues on pages 6 and 7 that Han et al. does not teach the newly added amendment of an exposed region wherein the reactive functional group of the monolayer is removed by lithographic exposure and a barrier layer being formed on the exposed region of the monolayer of material. This argument is persuasive.
Han et al. teaches that the self-assembled monolayer (131; monolayer of material) is pattern-wise chemically altered, such as by ultraviolet light exposure, to induce a chemical transformation of the exposed SAM regions which decreases the chemical affinity of the exposed SAM regions for the biopolymer compared to the non-exposed SAM regions ([0101-0107]). Han et al. teaches that the top surfaces (135) of the exposed regions (133) of the SAM layer have substantially less affinity for a given biopolymer compared to the top surface (134) of the non-exposed SAM regions (132), such that the biopolymer binds to the top surface (134) of the non-exposed SAM regions (132) as shown in Figures 1D and 1E ([0101-0110]). Han et al. does not expressly teach a lithographic exposure that removes a capping functional group as described by paragraph [0158] of the originally filed application as cited by the Applicant on page 6 of the response. Han et al. does not teach a capping functional group that is removed such that the barrier layer binds to the exposed terminal group in the selected region (Figure 15-17, [0058]).
As it stands, the previous rejections of the claims over Han et al. and any secondary references are withdrawn in light of the amendments, however, the claims remain rejected under 35 USC § 112(a) and (b). Han et al. could be reinstated based upon the Applicants amendments to resolve the issues under 35 USC § 112(a) and (b) in a future office action.
Conclusion
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LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785