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, Species A3 (Claim(s) 1-7 and 9-11) in the reply filed on 01/05/2026 is acknowledged. Because applicant did not provide any statement/reasons indicating traversal of the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01). Claim(s) 8 and 12-13 is/are withdrawn as being drawn to nonelected Groups and Species. Accordingly, claim(s) 1-7 and 9-11 is/are examined herein.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a separating unit configured to” in at least claim 1 with corresponding structure disclosed at least in [0062-0065] and Figs. 5A-C of Applicant’s published application.
“a mechanism configured to adjust an interval between the mold and the substrate …, and configured to perform the imprint processing” in at least claim 1 with corresponding structure disclosed at least in [0031-0034] and Fig. 2 of Applicant’s published application.
“a forming unit configured to” at least claims 4, 6 and 10-11 with corresponding structure disclosed at least in [0046-0051] of Applicant’s published application.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Other Claim interpretation:
Examiner wishes to point out to applicant that claim(s) 1-7 and 9-11 is/are directed towards an apparatus and as such will be examined under the following conditions. The process/manner of using the apparatus and/or the material worked upon by the apparatus is/are viewed as recitation(s) of intended use and is/are given patentable weight only to the extent that structure is added to the claimed apparatus (See MPEP §§ 2114 II and 2115 for further details). For apparatuses, the claim limitations will define structural limitations (See MPEP §§ 2114-2115) or functional limitations properly recited (See MPEP § 2173.05 (g)). The “imprint material”, “substrate”, “removal film”, “organic film”, “foreign substance”, and “removal film and the adjustment film are made of a thermosetting resin” are the materials worked upon by the apparatus failing to add structure to the claimed apparatus.
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 1-7 and 9-11 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 the limitation “a dispenser configured to supply the imprint material on the organic film from which the removal film is separated” which is indefinite because it contradicts the limitations “an imprint material on a substrate on which a removal film for removing an organic film and a foreign substance” and “the substrate to which the imprint material is supplied”. It is unclear to the examiner if the imprint material is supplied on the organic film or on the substrate. It is unclear to the examiner if the removal film removes or separates from the organic film. According to Figs. 4E and 4F of Applicant’s published application, the removal film does not remove the organic film from the substrate and the imprint material is applied on the organic film after the removal film is separated from the organic film. Thus, the limitations are also indefinite because they are inconsistent with Applicant’s disclosure.
Claim(s) 2-7 and 9-11 is/are rejected as being dependent from claim 1 and therefor including all the limitation thereof.
Claim 2 recites the limitation “an inside of the chamber is maintained at a cleanliness higher than a cleanliness of a clean room” which is indefinite. The language states a cleaning result/function obtained by the apparatus without setting forth well-defined boundaries of the invention. Applicant’s specification (e.g. [0028], [0058] and original claim 2-3 of applicant’s published application) fails to disclose the specific structure in the apparatus that allows the apparatus to have the claimed result/capability. Last but not least, the term “a cleanliness higher than a cleanliness of a clean room” is a relative term which renders the claim indefinite. The term “a cleanliness higher than a cleanliness of a clean room” 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. For instance, the determination of “a cleanliness of a clean room” is subjective. Thus, the scope of claim 2 is unclear. See MPEP §§ 2173.03 and 2173.05 (g). Claim 2 cannot be evaluated with respect to prior art at this time as the examiner cannot reasonably apprised of the scope of the claimed invention and cannot make a proper comparison between the claims and the prior art due to the 112 (b) issues explained above.
Claim 3 recites the limitation “an inside of the chamber is maintained at a cleanliness of not less than class 2” which is indefinite. The language states a cleaning result/function obtained by the apparatus without setting forth well-defined boundaries of the invention. Applicant’s specification (e.g. [0028], [0058] and original claim 2-3 of applicant’s published application) fails to disclose the specific structure in the apparatus that allows the apparatus to have the claimed result/capability. Thus, the scope of claim 3 is unclear. See MPEP §§ 2173.03 and 2173.05 (g). Claim 3 cannot be evaluated with respect to prior art at this time as the examiner cannot reasonably apprised of the scope of the claimed invention and cannot make a proper comparison between the claims and the prior art due to the 112 (b) issues explained above.
Claim 5 recites the limitation “an adjustment film is formed between the organic film and the removal film …” which is indefinite. The language states a forming result/function obtained by the apparatus without setting forth well-defined boundaries of the invention. It is unclear the specific structure in the claimed apparatus that allows the apparatus to have the claimed result/function. According to Applicant’s specification (e.g. [0047] of applicant’s published application), the forming unit needs to be configured with the claimed function for the apparatus to achieve the claimed result/function. Thus, the scope of claim 5 is unclear. See MPEP §§ 2173.03 and 2173.05 (g). Claims 5-7 cannot be evaluated with respect to prior art at this time as the examiner cannot reasonably apprised of the scope of the claimed invention and cannot make a proper comparison between the claims and the prior art due to the 112 (b) issues explained above.
Claim(s) 6-7 is/are rejected as being dependent from claim 5 and therefor including all the limitation thereof.
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.
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.
Claim(s) 1 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (US 20100320631) in view of Toru (JP H02206114A with English machine translation - attached).
Regarding claims 1 and 9, Suzuki discloses an imprint apparatus that performs, by using a mold, imprint processing of forming a pattern on an imprint material on a substrate (P0005, Fig. 1) on which a removal film for removing an organic film and a foreign substance is formed (the taught substrate is capable of receiving a removal film for removing an organic film and a foreign substance: See MPEP §§ 2112.01 I, 2114 I-II, and 2115), the apparatus comprising:
a substrate stage (11A) configured to hold the substrate (P0021, Fig. 1);
…
a pre-imprint inspection part (101) configured to detect foreign substances on the substrate (P0023-0024, Fig. 1);
a processing unit including a dispenser (15) configured to supply the imprint material on the … substrate and a mechanism (103) configured to adjust an interval between the mold and the substrate to which the imprint material is supplied, and configured to perform the imprint processing (P0022, Fig. 1); and
a chamber (10) configured to accommodate the substrate stage, the pre-imprint inspection part, and the processing unit, wherein the pre-imprint inspection part and the processing unit respectively perform the detection and the imprint processing in the chamber (P0022, Fig. 1).
Suzuki fails to disclose a separating unit configured to perform separation processing of separating the removal film from the substrate held on the substrate stage.
In analogous art, cleaning of substrates without damaging the substrates by removing a removal film easily and safely, Toru discloses the technique of including a separating unit configured to perform separation processing of separating a removal film (1) from a substrate (2), wherein the separating unit includes a template (4) having adhesiveness (3) and performs the separation processing by bringing the template into contact with the removal film and separating the template in contact with the removal film for the benefit(s) of removing the removal film easily and safely (Abstract, pg. 1, Fig. 1).
Since Suzuki teaches to detect foreign substances on the substrate held on a substrate stage (P0023-0024, Fig. 1) and to allow cleaning of foreign substances from the mold in the same chamber (Abstract, P0004-0005), it would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the apparatus of Suzuki in view of Toru by incorporating the separating unit of Toru in the chamber of Suzuki and configuring the separation unit of Toru to perform separation processing of separating a removal film from the substrate held on the substrate stage for yielding the predictable benefit(s) of allowing the removal of foreign substance from the substrate after their detection without damaging the substrates by removing the removal film easily and safely as suggested by Toru.
Claim(s) 4 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki in view of Toru as applied to claim 1 above, and further in view of Murayama (US 20150004790) and Takamasa (JP H0774137A – of record).
Regarding claim 4, Toru further implicitly discloses incorporating a forming unit configured to perform processing of forming the organic film (1) on the substrate (Abstract). However, Toru teaches to use the organic film as the removal film.
In the same field of endeavor, imprinting apparatuses, Murayama discloses the technique of using an organic film formation in order to improve adhesion between the substrate to the imprint material (P0137).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to further have modified the apparatus of the combination in view of Murayama by including to the chamber a forming unit configured to perform processing of forming the organic film on the substrate and using the organic film as an adhesion layer instead of the removal layer for yielding the predictable benefit(s) of improving adhesion between the substrate to the imprint material as suggested by Murayama.
In analogous art, cleaning of substrates without damaging the substrates by removing a removal film easily and safely, Takamasa discloses the technique of the technique of including a forming unit (Abstract, Fig. 1) configured for forming a removal film (3) on a substrate (1) and a means (Fig. 2) for separating the removal film from the substrate (1), wherein the removal film (3) is made of a thermosetting resin (polyurethane solution 2) for the benefit(s) of removing particles (4) from the substrate efficiently and eliminating contamination (Abstract, Figs. 1-2 and accompanying text).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to further have modified the apparatus of the combination in view of Murayama by configuring the forming unit to perform processing of the thermosetting removal film on the organic film for yielding the predictable benefit(s) of removing foreign particles from the organic film efficiently and eliminating contamination as suggested by Takamasa.
Regarding claim 10, Suzuki, as modified in claim 4 above, further discloses/suggests wherein the substrate stage includes a first stage (11B) and a second stage (11A), the forming unit performs the processing while the substrate is held on the first stage, and the separating unit and the processing unit respectively perform the separation processing and the imprint processing while the substrate is held on the second stage for the benefit(s) of performing applying separating material (removal film), cleaning of the substrate (separation of the removal film), and imprinting in parallel and in the same processing chamber (abstract, P0004-0005).
Regarding claim 11, Suzuki, as modified in claim 11 above, further discloses/suggests wherein
the chamber (10) accommodates the forming unit, and the forming unit, the separating unit, and the processing unit respectively perform the processing (formation of the films), the separation processing (cleaning), and the imprint processing (imprinting) in the same chamber (abstract, P0004-0005).
Conclusion
Additional prior art made of record and not relied upon that is considered to be pertinent to
Applicant’s disclosure:
Shudo (US 20170368726) discloses the technique of using an environment at ISO cleanliness no less than class 2 during an operation of an imprint apparatus (P0064).
Namikawa (US 20050042958) discloses the use of thermoset resin a suitable material for cleaning sheets configured to clean foreign particles away from substrates and the incorporation of another adhesive layer to optimize/control adhesiveness (Abstract, P0004, claim 3).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERZI H MORENO HERNANDEZ whose telephone number is (571)272-0625. The examiner can normally be reached 1:00-10:00 PM PT.
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, Galen Hauth can be reached at 571-270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JERZI H. MORENO HERNANDEZ
Primary Examiner
Art Unit 1743
/JERZI H MORENO HERNANDEZ/Primary Examiner, Art Unit 1743