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 .
Status of Claims
Claims 1-2, 5-9, and 12 are examined.
Claims 4 and 10-11 are withdrawn.
Claim 12 is new.
Claim 3 is cancelled.
Response to Amendment
The amendments to claim 1, where now cancelled claim 3 is incorporated into claim 1, overcome the previous 35 U.S.C. 103 rejections of the claims; therefore, the rejections are withdrawn.
The amendments to the claims overcome the previous claim objections; therefore, the objections are withdrawn.
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:
“observation unit” and “control unit” in claim 1.
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.
For examination purposes, “observation unit” will be interpreted as “a through-the-mold (TTM) scope 13” and “TTM scope 13 functions as an observation unit” in ¶ [0040-0042] of the instant specification.
For examination purposes, “control unit” will be interpreted as “the control device 10 is a control unit” and “the control device 10 is configured with a computer or a sequencer …, and includes a central processing unit (CPU), a memory (storage unit), and the like” in ¶ [0061] of the instant specification.
Further Claim Interpretation
For examination purposes, the limitation “recipe information” in claim 7 will be interpreted as “recipe information includes the design information, and the design information includes design position coordinates as positional information of the alignment mark and mark pattern information formed in the mark”.
Claim Objections
Claim 12 is objected to because of the following informalities:
claim 12, line 3 – “a mold”, “a pattern”, and “an imprint material” should read “the mold”, “the pattern”, and “the imprint material” for reciting to “mold”, “pattern”, and “imprint material” in claim 1, line 2
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
STEP 1: TWO CRITERIA FOR SUBJECT MATTER ELIGIBILITY
First, the claimed invention must be to one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter.
The claims fall into the category of a machine comprising a computer system.
Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called "judicially recognized exceptions" or simply "exceptions") are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature).
STEP 2A: TWO PRONGS
PRONG 1: RECITES ABSTRACT IDEA, LAW OF NATURE, NATURAL PHENOMENON
Claim 1-2, 5-9, and 12 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s):
“select the mold-side marks to be used in the imprint process”
“observe the selected mold-side marks”
“determine whether or not the imprint process is executable, based on an observation result”
“determine an order of the mold-side marks to be observed by the observation such that a drive time of the observation unit is equal to or less than a threshold”.
The limitations as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “a control unit configured to,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “a control unit configured to” language,:
“select the mold-side marks to be used in the imprint process” in the context of the claim encompasses the user evaluating which mold-side marks to use
“observe the selected mold-side marks” in the context of the claim encompasses the user analyzing the mold-side marks
“determine whether or not the imprint process is executable, based on an observation result” in the context of the claim encompasses the user evaluating based on the analysis if the imprinting will be successful.
“determine an order of the mold-side marks to be observed by the observation such that a drive time of the observation unit is equal to or less than a threshold” encompasses the user evaluating an order/sequence of analyzing the mold-side marks so drive time is equal to or less than a threshold.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
PRONG 2: DOES NOT INTEGRATE INTO PRACTICAL APPLICATION
This judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element – using a control unit configured to perform the “select”, “observe”, and “determine” steps. The controller in both steps is recited at a high-level of generality (i.e., as a generic controller performing a generic computer function of “select”, “observe”, and “determine”) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
STEP 2B: DOES NOT AMOUNT TO SIGNIFICANTLY MORE
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract ideas into a practical application, the additional element of using a control unit configured to perform “select”, “observe”, and “determine” steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible. See MPEP § 2106.05.
As claims 2, 5-9, and 12 ultimately depend on claim 1, claims 2-3 and 5-9 are rejected for being directed to an abstract idea without significantly more.
claim 2 further introduces the abstract idea of “acquire” and using the “acquired information” for the “select” step, but “acquire” in the context of the claim encompasses the user observing substrate-sides marks and does not integrate the abstract ideas into a practical application nor do the additional limitations provide significantly more
claim 5 further introduces the abstract idea of “detect” using the “select” step, but “detect” in the context of the claim encompasses the user observing mold-side marks and does not integrate the abstract ideas into a practical application nor do the additional limitations provide significantly more
claim 6 further defines the at least one processor or circuit to function as a plurality of observation units and the abstract idea of “observe”, but the additional limitations do not integrate the abstract ideas into a practical application nor do they provide significantly more
claim 7 further introduces the abstract idea of “acquire” and using the acquired recipe information for the “observe” step, but “acquire” in the context of the claim encompasses the user observing by looking-up recipe information and does not integrate the abstract ideas into a practical application nor do the additional limitations provide significantly more
claim 8 further introduces a step of “issue a notification of a mark abnormality” if it is determined the imprint process is not executable, but merely recites applying the abstract idea (see MPEP § 2106.05(f))
claim 9 further defines the “observe” step, but does not integrate the abstract idea into a practical application nor do the additional limitations provide significantly more
claim 12 further recites basic steps of “form” and “process” in the imprinting process, but does not integrate the abstract idea into a practical application nor do the additional limitations provide significantly more
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 5-9, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Komaki (US 2016/0299444 A1).
Regarding claim 1, Komaki discloses an imprint apparatus (¶ [0025] – imprint apparatus 100) that executes an imprint process of forming a pattern to an imprint material (¶ [0025] – to form a pattern on multiple shot area) on a substrate using a mold (¶ [0025] – on a substrate, a mold is pressed against resin, forming a pattern on one shot area of the substrate; ¶ [0034] – mold M, substrate W), the imprint apparatus comprising:
at least one processor or circuit (¶ [0034] – alignment unit 200) configured to function as:
an observation unit (¶ [0030, 0034] – detection part 170 includes alignment scopes 172) configured to observe a plurality of mold-side marks formed on the mold (¶ [0034, 0044] – detects a mark pair including a mold-side mark 18 on M); and
a control unit (¶ [0034] – controller CNT) configured to
select the mold-side marks to be used in the imprint process (¶ [0044-0045] – alignment processing, 172 detect at least two mark pairs; CNT measures the positions of the two marks of each mark pair from the obtained alignment signal),
cause the observation unit to observe the selected mold-side marks before the imprint process is executed (¶ [0044-0045] – calculates the amount of positional deviation between the marks of each mark pair; alignment processing may be started before pattern and resin come into contact), and
determine whether or not the imprint process is executable, based on an observation result (¶ [0044, 0047] – determines whether or not the result of mark detection is normal; the positional deviation is corrected to make the alignment accuracy between the pattern and shot area fall within the allowable range).
to determine an order of the mold-side marks to be observed by the observation unit (¶ [0054] – the at least two marks pairs may be sequentially observed with different fields of view) such that a drive time of the observation unit is equal to or less than a threshold (¶ [0054] – by driving the alignment stage mechanisms 174 or the stage driving mechanisms; ¶ [0080] – if the charging time has exceeded the upper limit, the alignment processing is terminated and the process proceeds to step S204 (curing); ¶ [0088] – by making alignment processing time less than or equal to the threshold, it is possible to set an appropriate charging time, and form a residual layer having an appropriate thickness).
Regarding claim 2, Komaki discloses the imprint apparatus according to claim 1. Komaki further discloses wherein the control unit is configured to acquire positional information of a plurality of substrate-side marks (¶ [0044] – 172 detect substrate-side mark 19, CNT calculates the amount of positional deviation between the marks of each mark pair) formed on the substrate (¶ [0034] – substrate-side mark on the substrate W) as a target of the imprint process and select the mold-side marks to be used in the imprint process using the acquired positional information (¶ [0044] – 172 detect at least two mark pairs, each including 18 and 19; calculates the amount of position deviation between the marks of each mark pair).
Regarding claim 5, Komaki discloses the imprint apparatus according to claim 1. Komaki further discloses wherein the control unit is configured to select the mold-side marks to be used to detect a relative positional deviation amount (¶ [0044-0045] – 172 detect at least two mark pairs; CNT measures the positions of the two marks of each mark pair from the obtained alignment signal) between the mold and the substrate in the imprint process (¶ [0044-0045] – a substrate-side mark 19 corresponding to the mold-side mark 18).
Regarding claim 6, Komaki discloses the imprint apparatus according to claim 1. Komaki further discloses wherein the at least one processor or circuit is further configured to function as: a plurality of observation units (¶ [0030, 0034] – detection part 170 includes alignment scopes 172), the observation units are configured to observe the same mold-side marks as the mold-side marks observed before the execution of the imprint process (¶ [0044-0045] – calculates the amount of positional deviation between the marks of each mark pair; alignment processing may be started before pattern and resin come into contact) even during the execution of the imprint process (¶ [0044-0045] – alignment processing is started with after step S203 (charge on resin) is started or before the pattern Ma and the resin R come in contact).
Regarding claim 7, Komaki discloses the imprint apparatus according to claim 1. Komaki further discloses the imprint apparatus according to claim 1, wherein the control unit is configured to acquire recipe information (¶ [0025] – forming a pattern on one shot area of the substrate) including pattern information of the mold-side mark (¶ [0057] – mold-side mark includes a grating pattern), and the observation result includes information about whether or not a mark pattern matching the recipe information is observed from the mold-side mark (¶ [0056-0058] – grating-pattern marks enable the amount of positional deviation to be detected; measure the positional deviation between the substrate-side mark and the mold-side mark) in an imaging area of the observation unit (¶ [0044] – alignment processing for a shot area).
Regarding claim 8, Komaki discloses the imprint apparatus according to claim 1. Komaki further discloses the control unit is configured to issue a notification (¶ [0047] – CNT reads out the amounts of positional deviation; (¶ [0052] – positional deviation calculated displayed on a console screen) of a mark abnormality if a result of determining whether or not the imprint process is executable is that the imprint process is determined not to be executable (¶ [0047] – determines whether or not the result of the mark detection is normal).
Regarding claim 9, Komaki discloses the imprint apparatus according to claim 1. Komaki further discloses wherein the control unit is configured to cause the observation unit to observe the selected mold-side mark (¶ [0034, 0044] – 172 detects a mark pair including a mold-side mark 18 on M; ¶ [0044-0045] – alignment processing, 172 detect at least two mark pairs) after a positional deviation amount of the mold held by a mold holding unit is measured (¶ [0044] – alignment processing is repeated; ¶ [0048-0050] – when the result of the mark detection is determined to be abnormal, a correction value is calculated, and the alignment accuracy between the pattern Ma and the shot area 5 has fallen within the allowable range is determined).
Regarding claim 12, Komaki discloses the imprint apparatus according to claim 1. Komaki further discloses wherein the control unit (¶ [0047] – controller) is configured to:
form, with a mold, a pattern to an imprint material on the substrate ¶ [0025] – to form a pattern on a substrate, a mold is pressed against resin, forming a pattern on one shot area of the substrate; ¶ [0037] – imprinting processing for transferring a pattern formed on the mold to the resin on the substrate); and
process the substrate with the formed pattern (¶ [0041] – cure the resin on substrate).
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered but they are not persuasive.
Applicant argues Suzuki does not meet the limitation “determine an order of the mold-side marks to be observed by the observation unit such that a drive time of the observation unit is equal to or less than a threshold”.
The arguments do not address the cited paragraphs ¶ [0080, 0088] in the rejection of now cancelled claim 3. As previously presented in the previous rejection of now canceled claim 3, Suzuki discloses the control unit is configured: to determine an order of the mold-side marks to be observed by the observation unit (¶ [0054] – the at least two marks pairs may be sequentially observed with different fields of view) such that a drive time of the observation unit is equal to or less than a threshold (¶ [0054] – by driving the alignment stage mechanisms 174 or the stage driving mechanisms; ¶ [0080] – if the charging time has exceeded the upper limit, the alignment processing is terminated and the process proceeds to step S204 (curing); ¶ [0088] – by making alignment processing time less than or equal to the threshold, it is possible to set an appropriate charging time, and form a residual layer having an appropriate thickness). Suzuki discloses sequentially observing the marks by driving the alignment. The charging time and its relation to alignment processing time is considered “a drive time”, where the process proceeds based on a upper limit of the charging time, and it is desired that the alignment processing time is less than or equal to a threshold to form a residual layer having an appropriate thickness.
Therefore, Suzuki teaches having a sequential observation of mark pairs so that an alignment processing time and charging time is less than a threshold, and meets the “determination” of “an order of the mold-side marks to be observed” based on “drive time … is equal to or less than a threshold”.
Therefore, the argument is not persuasive.
Applicant argues the claims are directed to a practical application do not recite an abstract idea. Applicant further argues newly added claim 12 overcomes the 35 U.S.C. 101 rejection.
Although the specification and the claims recite imprinting technology, the recited steps of “select the mold-side marks”, “observe the selected mold-side marks”, “determine whether or not the imprint process is executable”, and “determine an order of the mold-side marks” are not integrated into the imprint process of the imprint apparatus. The controller in the steps are recited at a high-level of generality (i.e., as a generic controller performing a generic computer function of “select”, “observe” and “determine”) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Claim 12 adds that the control unit “form, with a mold, a pattern to an imprint material”, and “process the substrate with the formed pattern”, reciting that the control unit performs an “imprint process”. However, the steps recite a general performance of the imprint process and do not integrate or recite how the abstract ideas of “select”, “observe”, “determine whether or not the imprint process is executable”, and “determine an order of the mold-side marks” are used in the imprint process of the imprint apparatus to achieve an improvement in the art as argued by applicant.
Therefore, the argument is not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20130134616 A1 discloses an imprint apparatus comprising a detector to detect marks in each of a plurality of shot regions on the substrate
US 20150251348 A1 discloses an imprint apparatus using a scope configured to detect a mark provided on the mold
US 20190354009 A1 discloses an imprint device capable of reducing pattern defects
US 20220382146 A1 discloses a mold including a pattern to be transferred to an imprint material on a substrate, the mold is arranged with a mark used to measure a relative position with respect to a substrate mark
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN B WOO whose telephone number is (571)272-5191. The examiner can normally be reached M-F 8:30 am - 5:00 pm ET.
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/JONATHAN B WOO/Examiner, Art Unit 1754
/SEYED MASOUD MALEKZADEH/Primary Examiner, Art Unit 1754