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 .
Response to Arguments
In response to the amendments filed 2/25/2026, the rejections under 112(b) are withdrawn.
Applicant's arguments filed 2/25/2026 and 3/11/2026 have been fully considered but they are not entirely persuasive.
Applicant argues that Ito discloses anisotropic etching via a C-F gas rather than a liquid and does not meet claim 1 which requires the solvent be liquid at 25°C. The supplemental remarks note a different wet-etching process disclosed in Ito which is not the one used in the anisotropic etching process. Examiner agrees that Ito is describing using a gas rather than a liquid but notes that Ito is no longer relied upon to teach this limitation. This argument is considered moot.
Applicant argues that Demura does not describe dissolving at least a portion of a liquid repellent layer from a side surface to remove residual of the liquid repellent component. This is not persuasive because the claim does not specify what the residual is. The claim says removing the residual includes removing a portion of the liquid-repellent layer but does not specify what portion of the liquid repellant layer must be removed. In Demura, the liquid-repellant material is a multi-component material which includes both liquid-repellant and non-liquid repellant components, see [0030]. Demura [0046] describes removing the non-liquid repellant component which is “at least a portion of a liquid-repellent layer” as claimed.
With respect to claim 3, Applicant argues that even if the height of the mesa were 3 nm or greater, Ito discloses etching with gas and not the liquid. Examiner notes that the rejection is not relying on the height of the mesa to indicate that the layer is 3nm or more bur rather indicating that it would be obvious to a person of skill in the art that the thickness of the layer can be modified or optimized to a thickness such that it covers the sides of the mesa. Additionally, Demura describes the removal step using a liquid.
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Demura (US 2018/0117795) as evidenced by 3M Novec (“3M Novec 7100 Engineered Fluid”, 2009, see copy provided.)
Regarding claim 1, Demura meets the claimed, A removing method of removing a residual attached to a mold which includes a base having a main surface and a convex portion provided on the main surface (Demura Figure 5 shows a template W having a base 51, main surface 51a, and convex portion 52) and in which a concavo-convex pattern formed on an upper surface of the convex portion is pressed against a curable composition, (Demura [0027] describe the concavo-convex pattern 52a) the removing method comprising: removing the residual, wherein the removing of the residual includes removing the residual by contacting the mold with a predetermined solvent (Demura [0046] describes removing a component from the liquid-repellent layer using a fluorine-based solvent, see Figure 7 showing the layer is on the side surface of the convex-portion 52 ) that is liquid at 25°C (Demura [0046] describes Novec which is liquid at 25°C, see 3M Novec page 2) to dissolve at least a portion of a liquid-repellent layer formed on at least a side surface of the convex portion (Demura [0046] describes the non-liquid repellant portion of the liquid-repellant material, see also [0030] explaining that the liquid-repellant material has several components including the non-liquid repellent component.)
Regarding claim 4, Demura meets the claimed, The removing method according to claim 1, wherein the predetermined solvent is a volatile solvent that dissolves a polymer having a fluorocarbon chain (Demura [0046] describes gases that can dissolve a fluorocarbon chain including hydrofluoroethers and perfluoropolyethers.)
Regarding claim 5, Demura meets the claimed, The removing method according to claim 1, wherein the predetermined solvent includes at least one of a hydrofluoroether, a perfluorocarbon, or a hydrofluorocarbon (Demura [0046] describes Novec which is a hydrofluoroether, see 3M Novec page 1 describing Novec as containing Methoxy-nonafluorobutane, a hydrofluoroether.)
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.
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Demura (US 2018/0117795) modified by Sato (US 2017/0040161, equivalent of US 10,359,697 made of record on the IDS dated 4/18/2024.)
Regarding claim 2, Demura does not disclose a fluorocarbon repellent material and does not meet the claimed, The removing method according to claim 1, wherein the liquid-repellent layer includes a polymer having a fluorocarbon chain.
Sato also describes forming a template with a repellent layer on it and meets the claimed, The removing method according to claim 1, wherein the liquid-repellent layer includes a polymer having a fluorocarbon chain (Sato [0032]-[0033] describes the resist repellent layer 4 is made of a fluorocarbons.)
The courts have held that substituting one known prior art element for another according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the material of the repellent layer in Demura with the fluorocarbon repellent layer in Sato because it is a known liquid repellent material for use in imprint templates, see Sato [0032]-[0033].
Claims 3 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Demura (US 2018/0117795) modified by Ito (US 2020/0341370).
Regarding claim 3, Demura describes forming a uniform thickness layer of the repellent liquid but does not describe the thickness after the removal step. Analogous in the field of repellent layer application, Ito does not explicitly describe the thickness of the repellent film 3 remaining after removal and does not explicitly meet the claimed, The removing method according to claim 1, wherein the liquid-repellent layer is dissolved so that a film thickness of the liquid-repellent layer is 3 nm or more, however, Ito [0061] discloses that the thickness of repellent film 3 remaining after etching should be enough to cover the sides of the mesa portion, see Figure 4-6. It would have been obvious to a person of ordinary skill in the art before the filing date to modify the thickness of the film remaining such that the film can be level with the mesa surface, see Figure 4-6 and [0061].
Regarding claim 6, Demura describes avoiding applying repellent material to the pattern portion but does not describe a protective layer.
Analogous in the field of repellent layer application, Ito also describes a method of forming a repellent layer on an imprint template and meets the claimed, The removing method according to claim 1, further comprising forming a protective layer that prevents the liquid-repellent layer from being formed on at least an outer peripheral portion of the concavo-convex pattern in the mold (Ito [0049]-[0050] describes a chrome film 2 layer which is placed on the mold on the mesa portion where the pattern is eventually formed and prevents the repellent film 3 from being formed there, see Figure 2.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the method of Demura with the step of adding a chrome protectant layer on the mesa portion as described in Ito in order to limit the repellent film formation to only the sides of the mold, see Ito [0052]-[0053].
Regarding claim 7, Demura does not describe the protective layer. Ito meets the claimed, The removing method according to claim 6, further comprising: forming the liquid-repellent layer on at least the side surface of the convex portion of the mold, wherein the liquid-repellent layer is formed after the protective layer is formed (Ito [0050]-[0051] describe forming the repellent film 3 after the chrome layer 2 is placed, see Figure 2.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the method of Demura with the step of adding a chrome protectant layer on the mesa portion prior to forming the repellent layer as described in Ito in order to limit the repellent film formation to only the sides of the mold, see Ito [0052]-[0053].
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Demura as modified by Ito and in further view of Sato (US 2017/0040161, equivalent of US 10,359,697 made of record on the IDS dated 4/18/2024).
Regarding claim 8, Demura does not describe a protective layer. Ito describes removing the chrome layer and the liquid repellent layer as separate steps and does not meet the claimed, The removing method according to claim 7, further comprising: removing the protective layer and the liquid-repellent layer formed on a portion of the protective layer, wherein the protective layer and liquid-repellent layer formed on a portion of the protective layer are removed after the liquid-repellent layer is formed.
Sato also describes forming a template with a repellent layer on it and meets the claimed, The removing method according to claim 7, further comprising: removing the protective layer and the liquid-repellent layer formed on a portion of the protective layer, wherein the protective layer and liquid-repellent layer formed on a portion of the protective layer are removed after the liquid-repellent layer is formed (Sato [0046]-[0048] describes a first member 11 acting as a protective layer covers the uneven pattern 1b on the mold while the repellent layer 4 is applied. Sato [0050] describes removing the first member 11 and a portion of the repellent layer 4 which had been adhered to it.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the method step of removing the protective chrome film as described in Ito with the step of removing the protective first member and the repellent layer simultaneously as described in Sato in order to allow for the remaining repellent layer to stay on the surface so that the template can be reused, see Sato [0050].
Regarding claim 9, Demura does not describe a protective layer. Ito does not describe the repellent film removal step after the protective layer and does not explicitly meet the claimed, The removing method according to claim 8, wherein the residual is removed after the protective layer and liquid-repellent layer formed on a portion of the protective layer are removed, however, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected result, see MPEP §2144.05(IV)(C). Since the step of removing the residual and the step of removing the protection film are both known in the art, it would have been obvious to a person of ordinary skill in the art to reverse the order such that the chrome film is removed first prior to the removal of the repellent film via etching in Ito.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/V.B./Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744
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