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 reply filed on 12/1/2025 is acknowledged.
Specification
The abstract of the disclosure is objected to because it has more than one paragraph. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
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.
Claim(s) 1-5 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-2020-38311 (herein after JP-311; provided with IDS of dated 5/31/2024) as supported with JPH083334939 A (herein after JP-939).
Note: All the citations below would be found in the English translation of the JP-311 and JP-939.
Regarding claim 1, JP-311 discloses a process of making a water-repellent antireflection structure, in which a plurality of column protrusions (32) are provided on a multilayered film structure 2, the height of the columnar protrusions 32 is 90 nm, and the columnar protrusions 32 are formed using Si3N4, which is an inorganic transparent material with a high degree of hardness" (paragraph [0036]: Si3N4 or Al203; paragraphs [0057]-[0068], [0128], and an average value of 90 nm for the height H of the columnar protrusions; fig. 7), which reads on the limitation of the average height of the protruding portion is “1 micrometer or less”; and aforesaid column protrusions (32) reads on the claimed “fine uneven structure having a stair shape having one or more stairs in a vertical cross -sectional shape of the functional membrane”.
JP-311 discloses etching the hard inorganic layer using a mask pattern (6) to form the columnar protruding structure (32) [0085], [0089],[0090] and the patterned mask 6 is composed of metal [0086].
JP-311 may not explicitly disclose that the Mohs hardness of the inorganic material satisfy the Formula 1: 10 ≥ X x Y, when the Mohs hardness is denoted as X and the number of the stairs of the protruding portions is denoted by Y.
However, JP-311 discloses above that the inorganic material may comprises silicon nitride (Si3N4) and JP-939 disclose that the Mosh hardness of silicon nitride is 9-10; and for Al2O3 is 9 [0035]; and assuming the number of stairs is 1 and Mohs hardness of silicon nitride (inorganic material) is about 10 and therefore, such satisfy the claimed Formula 1.
Regarding claims 2-3, JP-311 discloses a water-repellent layer 4 provided so as to cover the fine concave-convex structure 3 [0023]; and the water-repellent layer 4 is provided so as to cover the fine concave-convex structure 3 [0024] and Figure 7.3
Regarding claim 4, the water-repellent antireflection structure, in which a plurality of column protrusions (32) are provided on a multilayered film structure 2 is a mesh shape (see at least Figures 6 and 7).
Regarding claim 5, JP-311 discloses that a water-repellent layer 4 s formed of a water-repellent material having a contact angle of 90 ° or more with respect to a water droplet when applied to a smooth surface [0053], which contact angle overlaps the claimed range of 110 degrees or more.
Regarding claim 9, JP-311 discloses a step of forming a plurality of conical or pyramidal projections 31 or a plurality of columnar projections 32 by an ion etching method using a reactive ion gas to obtain the fine uneven structure 3 [0084]; therefore, isotropic and anisotropic etching being combined during the formation of the columnar projections 32.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-2020-38311 (herein after JP-311; provided with IDS of dated 5/31/2024) as supported with JPH083334939 A (herein after JP-939 as applied to claim 1 above, and further in view of Singh (US 2022/0390836).
Regarding 10, JP-311 may not disclose the number of the stairs of the protruding portions is 2 but it would have been optimized into two steps or stairs because it would have been a simple design choice.
However, Singh discloses a process of making a method of making a plurality of discrete structures 520 on a substrate 102 by using a masking martial (522, 526 in Fig 5) in order to form a protruding structure having two steps or stairs (520b) in step 512, wherein the mask material is metal [0055]-[0060].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Singh's teaching of forming a plurality of discrete structures into the teaching of JP-311 for efficiently forming the structure having at least two steps or stairs as suggested by Singh.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine 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 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 Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of co-pending Application No. 18/274,626 (US pub 2024/0308902) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the dry etching step in the application ‘626 encompasses the generic etching step to form the plurality of the fine uneven structure in the instant invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 6-8 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to teach or renders obvious to a process step, wherein “before forming the mask, a compound that reacts with the metal is disposed on a layer that will be adjacent to the mask, and the mask is formed such that the mask has contact with the compound that reacts with the metal” as the context of claim 6.
Claims 7-8 are directly depends on claim 6 and are also objected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713