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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in the EU on 07/21/2021. It is noted, however, that applicant has not filed a certified copy of the EPO 21186871.6 application as required by 37 CFR 1.55.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, from claims 2 and 3, the set of position sensors found in the chuck (500), and, from claim 4, the set of position sensors found in the second carrier must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 3, 13 and 15 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 3 recites the limitation "first actuator” in line 3. There is insufficient antecedent basis for this limitation in the claim. Furthermore, it cannot be ascertained which actuator is meant to be referenced by the claim. Therefore, prior art cannot be applied.
Claim 13 recites the limitation "each chuck actuator " in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the set of landing device actuators" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Appropriate correction and/or clarification is required.
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.
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) 1, 2, 4, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watts et al. (WO 2004/013693) in view of Dona et al. (US 2006/0173049). Regarding claim 1, Watts et al. disclose “an imprinting apparatus comprising: a first carrier (item 3100) for carrying a flexible stamp (paragraph 252) having an imprinting pattern (paragraph 76, Figure 3); and a second carrier (item 3650) movable relative to the first carrier and arranged for receiving a chuck (item 3652) configured to carry a substrate, the substrate having a resist layer (paragraph 91), and wherein the second carrier comprises: a stamp landing device (item 3658) arranged such that when the second carrier comprises the chuck the stamp landing device is arranged along at least part of the chuck and at an outside of the chuck (Figure 38), wherein the stamp landing device is for facing the first carrier outside the area of the imprinting pattern (paragraphs 147-149, Figure 38); and a set of landing device actuators (items 3662) for translating a portion of the stamp landing device in a direction perpendicular to the plane of the second carrier (paragraphs 148-149, Figure 38).” Watts et al. fail to disclose “the first carrier comprising an array of actuators for use in pulling the flexible stamp towards the first carrier and for use in pushing the flexible stamp away from the first carrier.” However, Dona et al. disclose such a system (Figures 1-3) comprising an array of actuators (items 50, Figure 1) for transferring a pattern from a stamping surface to a receiving surface (abstract) which prevents trapping of air bubbles (paragraph 49) and allows for the two surfaces to more easily be separated from each other (paragraph 50), allowing for a more complete pattern transfer (paragraph 4). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use the transfer system of Dona et al. in the apparatus of Watts et al. in order to achieve a more complete pattern transfer. Regarding claim 2, Watts et al. further disclose “wherein the chuck comprises a set of position sensors for measuring a distance from a surface of the chuck to the first carrier (paragraph 149).” Regarding claim 4, Watts et al. further disclose “wherein the second carrier comprises a set of position sensors for measuring a distance from the stamp landing device to the first carrier (paragraph 149).” Regarding claim 15, Watts et al. disclose “a stamp landing system for an imprinting apparatus, comprising: a stamp landing device (item 3658) for arranging around the outside of a chuck of the imprinting apparatus and for facing a first carrier for carrying a flexible stamp outside the area of the imprinting pattern if and when carried by the first carrier (Figure 38, paragraphs 147-149); and the set of landing device actuators (items 3662) for translating a portion of the stamp landing device in a direction perpendicular to the plane of a second carrier for carrying the chuck (Figure 38, paragraphs 148-149).”
Claim(s) 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watts et al. and Dona et al., in view of Lanee et al. (US 2009/0067954). Regarding claim 9, Watts et al., as modified, disclose all that is claimed, as in claim 1 above, except “further comprising a stamp landing device adapter for positioning over the stamp landing device to adapt the stamp landing device in dependence on a thickness or size of the substrate.” However, Lanee et al. disclose using adapter rings in a fabrication process in order to be able to process different size substrates (abstract, Figures 3). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use adapter rings in the modified apparatus of Watts et al. in order to be able to imprint different size substrates. Regarding claim 10, Watts et al. further disclose “wherein the stamp landing device is for fitting around a substrate of a first size (Figure 39, paragraph 150)” and Lanee et al. further disclose “the stamp landing device adapter is for extending the size of the stamp landing device to fit around a substrate of a second, smaller size (paragraphs 25 and 26).” Regarding claim 11, Watts et al. further disclose “wherein the stamp landing device is for fitting around a flexible stamp of a first size (Figure 39, paragraph 150),” and Lanee et al. further disclose “and the stamp landing device adapter is for extending the size of the stamp landing device to fit around a flexible stamp of a second, smaller size (paragraphs 25 and 26).” Examiner notes that when the stamp landing device is fitted around the substrate, it will also be around the flexible stamp. Regarding claim 12, Watts et al., as modified, disclose all that is claimed, as in claim 9 above, including “wherein the chuck is for supporting a substrate of a first size (paragraphs 147-149),” but fail to disclose “and the apparatus further comprises a second stamp landing device for fitting over the chuck around a substrate of a second, smaller size.” However, since it is known to process more than one size of substrate, including a smaller substrate (see, e.g., the discussion above with respect to claim 9), Examiner asserts that one having ordinary skill in the art would logically conclude that it would make sense to also have a stamp landing device which is configured to work with the smaller substrate.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watts et al. and Dona et al., in view of Choi et al. (US 2006/0005657). Regarding claim 13, Watts et al., as modified, disclose all that is claimed, as in claim 1 above, except ” wherein each chuck actuator comprises an actuator output and a lever arrangement between the actuator output and a chuck drive member.” However, Choi et al. disclose a chuck alignment system (Figure 10) wherein actuators (items 150, 152, 154, and 156) are coupled to levers (items 140, 142, 144, and 148, respectively) in order to facilitate proper orientation of a body with respect to a surface spaced apart from said body (paragraph 7). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to provide the alignment system of Choi et al. in the modified apparatus of Watts et al. in order to provide proper orientation the body on the chuck to the surface spaced apart from the chuck.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watts et al. and Dona et al., in view of Horiuchi (US 2017/0186641). Regarding claim 14, Watts et al., as modified, disclose all that is claimed, as in claim 1 above, except “wherein the chuck comprises a hollow cylindrical body having a top face and a bottom face, a lattice arrangement between the top and bottom faces and an internal water channel arrangement for providing a flow path between a set of water inlets and a water outlet.” However, Horiuchi discloses such a chuck (Figure 3) with channels for water to flow through in order to control the temperature (paragraphs 21 and 31). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to further modify Watts et al. such that the chuck has a lattice arrangement of internal channels with flowing water in order to control the temperature of the chuck.
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 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12468223. Regarding claim 15, the Patent discloses “a stamp landing system for an imprinting apparatus, comprising: a stamp landing device for arranging around the outside of a chuck of the imprinting apparatus and for facing a first carrier for carrying a flexible stamp outside the area of the imprinting pattern if and when carried by the first carrier (claim 11); and the set of landing device actuators for translating a portion of the stamp landing device in a direction perpendicular to the plane of a second carrier for carrying the chuck (claim 13).”
Although the claims at issue are not identical, they are not patentably distinct from each other because the apparatus of claim 13 (which is dependent on claim 11 and therefore includes all of the limitations of claim 11) of the Patent clearly discloses the stamp landing system of instant claim 15 as a part of a broader imprinting apparatus.
Claims 1-8 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 8-14 of U.S. Patent No. 12468223 in view of Dona et al. (US 2006/0173049). Although the claims at issue are not identical, they are not patentably distinct from each other because: The Patent discloses “an imprinting apparatus (claim 1) comprising: a first carrier for carrying a flexible stamp having an imprinting pattern (claim 1); and a second carrier movable relative to the first carrier and arranged for receiving a chuck configured to carry a substrate, the substrate having a resist layer (claim 1), and wherein the second carrier comprises: a stamp landing device arranged such that when the second carrier comprises the chuck the stamp landing device is arranged along at least part of the chuck and at an outside of the chuck, wherein the stamp landing device is for facing the first carrier outside the area of the imprinting pattern (claim 11); and a set of landing device actuators for translating a portion of the stamp landing device in a direction perpendicular to the plane of the second carrier (claim 13).” The patent fails to disclose “the first carrier comprising an array of actuators for use in pulling the flexible stamp towards the first carrier and for use in pushing the flexible stamp away from the first carrier.” However, Dona et al. disclose such a system (Figures 1-3) comprising an array of actuators (items 50, Figure 1) for transferring a pattern from a stamping surface to a receiving surface (abstract) which prevents trapping of air bubbles (paragraph 49) and allows for the two surfaces to more easily be separated from each other (paragraph 50), allowing for a more complete pattern transfer (paragraph 4). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use the transfer system of Dona et al. in the apparatus of the Patent in order to achieve a more complete pattern transfer. The remaining features of claims 2-8 and 13-15 can be found in claims 8-14 of the patent.
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 18578753 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the apparatus of claim 15 (which is dependent on claim 14 and therefore includes all of the limitations of claim 14) of the Reference Application clearly discloses the stamp landing system of instant claim 15 as a part of a broader imprinting apparatus.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18578763 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the apparatus of claim 10 (which is dependent on claim 8 and therefore includes all of the limitations of claim 8) of the Reference Application clearly discloses the stamp landing system of instant claim 15 as a part of a broader imprinting apparatus.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 18577405 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the apparatus of claim 14 (which is dependent on claim 13 and therefore includes all of the limitations of claim 13) of the Reference Application clearly discloses the stamp landing system of instant claim 15 as a part of a broader imprinting apparatus.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853