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 Group I, claims 1-18, 20-23, and 27 in the reply filed on May 1, 2026 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Claim 28 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 12, 14, and 16 are objected to because of the following informalities: the claims include excessive spacing between words and/or items in the lists. Appropriate correction is required.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed elements, the structural elements listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
It is noted that claim 1 mentions a photoresist. However, no photoresist is positively claimed as element of the invention. The “to crosslink a photoresist” clause is directed to the intended, possible use of the depression. There is no requirement for any crosslinking of anything to ever be performed.
A claim is only limited by positively claimed elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”. MPEP 2115 Material or Article Worked Upon by Apparatus. The photoresist is considered as an article or material intended to be, can be worked upon, but is not a structural element of the claimed invention, substrate.
It is noted that the “configured to…” clauses do not provide for any further structural element, but are directed to intended, possible uses.
It is noted that the term “plurality” only requires 2.
It is noted that the phrase “one or more” only requires 1.
As to claims 9 and 20, it is noted that it is inherent that any object that has a color reflects light of certain wavelengths and absorbs light of other wavelengths.
It is noted that the term “or” is directed to alternatives, not requirements. Only one alternative is required. In claim 11, it is only required that one photoacid generator or photo initiator be present. Therefore, claim 12 is only further limiting if a photoacid generator is selection, but is null/void (not further limiting) if a photo initiator is selected. Therefore, claims 14-15 are only further limiting if a photo initiator is selected and are null/void (not further limiting) if a photoacid generator is selected.
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 1-18, 20-23, and 27 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.
As to claim 1, it is unclear what is structural connectivity between the base support and the imprint layer because the phrase “positioned over” does not provide for nor require any structural connectivity. The same is applicable to “covers” in claim 2. An structure can cover another structure without the structures being structurally connected or in structural contact with one another.
Claim 1 recites the limitation "the distance between the second surface and the base support" in the first paragraph. There is insufficient antecedent basis for this limitation in the claim.
As to claim 1, it is unclear what/which depression by “each depression” and “the depression” because the claim previously recites “a plurality of multi-level depressions”. Therefore, it is unclear what is the nexus of the prior clauses to the latter a plurality of multi-level depressions.
The terms “sufficient” and “sufficiently” in claims 1, 5, and 8 is a relative term which renders the claims indefinite. The terms “sufficient” and “sufficiently” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is no indication in the claims as what is definitively structurally required to be considered as “sufficient”. What may be considered as sufficient to one person may not be considered as such to another and vice versa.
Claims 2-18, 20-23, and 27 are rejected via dependency upon a rejected.
The term “about” in claims 4-5, 7-8, and 23 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is no indication in the claims what degrees of freedom, values other that the exact values are considered as being “about” the recited values.
Furthermore, it is unclear how a layer can have a thickness value of 0. If the value is 0, then there is no existence of any thickness.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 5 and 8 recite the broad recitation about 225 nm and about 375 nm and the claim also recites between about 250 nm to about 350 nm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 6 recites the limitation "the percentage transmittal of the light". There is insufficient antecedent basis for this limitation in the claim.
Claim 12 contains the trademark/trade name TEGO. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a photo acid generator and, accordingly, the identification/description is indefinite.
As to claim 21-22 it is unclear what is structurally required of layers to be considered as “alternating” because the claims do not provide for such. It is noted that only 2 layers are required by claim 21.
Claim Rejections - 35 USC § 102
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) 1-10, 16, 20-23, and 27 is/are rejected under 35 U.S.C. 102(a)(1),(a)(2) as being anticipated by Kodira Cariappa; Brinda et al., US 2022/0382147 (Kodira).
Kodira discloses in figures 16F-161 and paragraphs 95-98, 358 and 364-371 a patterned substrate, comprising:
a base support (in view of paragraphs 96, 98, ft is considered implicit that the resist layer 18' in figures 16F-I comprise a base 17 which is not shown); and
an imprint layer ( 18') positioned over the base support, the imprint layer comprising a plurality of multi-level depressions ("each multi-depth depression 20'" in paragraph 358), each depression comprising a deep portion (66) having a first surface. and a shallow portion (68) having a second surface, the deep portion and the shallow portion are defined by a step portion, wherein distance between the first surface and the base support corresponds to a first thickness of the imprint layer, the distance between the second surface and the base support corresponds to a second thickness of the imprint layer, and the second thickness is greater than the first thickness (see figures 16FI);
wherein the first thickness of the imprint layer is configured to allow sufficient passage of light to the deep portion of the depression to crosslink a photoresist, and the second thickness of the imprint layer is configured to sufficiently block passage of light to the shallow portion of the depression to inhibit crosslinking of the photoresist (see paragraphs 97, ·364-367 and figure 16F: only the portion of the photoresist 60' in the deep portion is cross/inked).
As to claim 2, see figure 161, functionalized layers 24 and 26. (paragraph 114).
As to claim 3, the first and second functionalized layers (molecules) cover first and second surfaces and include a functionalized hydrogel or polymer comprising a plurality of functional groups.( paragraphs 29, 30, 114, 123, 125, 127, 129).
As to claims 4-7, the layers can be “about 500 nm and thinner portions of about 150 nm will respectively and effectively absorb and transmit UV light” which could inherently allow for 85 percentage transmittal of light. (paragraphs 95, 97, 88). Also applicable to claim 20.
As to claim 8-9, the device layers can manufactured to block light of wavelengths within the recited ranges via adsorption. (paragraphs 88, 95, 97, 166, 172, 188, 200, 221, 304, 316, 360).
As to claim 10, the imprint layer can comprise a polyhedral oligomeric silsesquioxane. (paragraph 97).
As to claim 16, the imprint layer can comprise additives of zinc oxide, titanium oxide sol-gel, etc. (paragraph 316).
As to claim 20, the layer inherently reflects some specific light as indicated above by only adsorbing only some light.
As to claim 21-22, the layers can have different thickness values and be made of different materials. (27, 83, 95, 97-98, 105, 161, 166-167; and Figures).
As to claim 23, the materials of the layers can comprise some polyamides, silica or silicon oxide (e.g., SiO2), fused silica, silica-based materials, silicon nitride (Si3N4), inorganic glasses, resins, or the like. (paragraph 95) and the thickness of the layers can be that as claimed. (paragraph 166-167).
As to claim 27, the substrate can be transparent, glass and other materials. (paragraphs 12, 59, 84, 88, 95, 161-162, 166, 168-169).
Claim Rejections - 35 USC § 103
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.
Claim(s) 11-15 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kodira, US 2022/0382147 as applied above, and further in view of Merkel et al., US 2020/0025670.
Kodira does not disclose the substrate comprises one or more photoacid generators as provided for in claim 12 or one more photo initiators provided for in claim 14; and at least one leveling agent as provided for in claim 18.
Merkel discloses an imprint substrate that can allow for crosslinking that includes one or more photo acid generators as provided for in claim 12 (paragraphs 12, 19, 26, 29, 63, 121); one or more photo initiators provided for in claim 14 (Abstract; paragraphs 11, 22, 28, 31, 45, 93); and at least one leveling agent of claim 18 (paragraphs 15, 109, 114, 119, 125, 127, 208).
The Applicant is advised that the Supreme Court recently clarified that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR Int’l v. Teleflex Inc., 127 Sup. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007) (see MPEP § 2143).
Common sense, predictability, knowledge, and skill of one of ordinary skill in the art may suffice to establish obviousness.
It would have been obvious to and within the common sense, knowledge, and skill of one ordinary skill in the art before the effective filing date of the invention to modify the substrate of Kodira to include photoacid generators or photo initiators at least 1% by weight and leveling agent for processing/analyzing molecules as taught by Merkel as such are known alternatives in the art and would yield predictable results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fisher; Jeffrey S. et al.; Ghonge; Tanmay et al.; Fisher; Jeffrey S. et al.; Laermer; Franz et al.; XI; Weixian et al.; Fisher; Jeffrey S. et al.; Tavakkoli Kermani Ghariehali; Amir et al.; Delamarche; Emmanuel et al.; Jeong; Goo Min; Ogawa, Taro et al.; Shih, Wu-Sheng et al.; Hasegawa, Mitsuru et al.; and Szlosek; Paul M. disclose substrate devices including depressions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN R GORDON whose telephone number is (571)272-1258. The examiner can normally be reached M-F, 8-5:30pm; off every other Friday..
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, Charles Capozzi can be reached at 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN R GORDON/Primary Examiner, Art Unit 1798
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