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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/21/2026 has been entered.
Response to Amendment
Applicant amendment filed 01/21/2026 has been entered and is currently under consideration. Claims 3-4, and 8-11 remain pending in the application.
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.
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Claims 3-4 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-4 of U.S. Patent No. 12076910. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 3 is anticipated by claim 6 of the ‘910 patent.
Claim 4 is anticipated by claims 6-7 of the ‘910 patent.
Claim 11 is anticipated by claim 6 of the ‘910 patent.
Allowable Subject Matter
Claims 9-10 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:
Regarding claim 3, Yoshida teaches:
A forming apparatus for forming a formable material on a substrate using a mold including a contact region to be brought into contact with the formable material on the substrate ([0005]), the apparatus comprising:
a mold holder configured to hold the mold (Fig 1: mold chuck 4b);
a substrate holder configured to hold the substrate onto which the formable material has been supplied (Fig 1: substrate chuck 6a);
a deforming device configured to deform the mold into a convex shape toward the substrate by applying a pressure to a space on an opposite side of the contact region of the mold ([0005, 0028-0029, 0035]); and
a controller configured to perform processing of bringing the contact region and the formable material on the substrate into contact with each other (control unit 9; [0050]), wherein the controller controls:
the processing, while controlling deformation of the mold with the deforming device, so as to bring the mold holder and the substrate holder closer to each other at a first relative speed and then bring the mold holder and the substrate holder even closer to each other at a second relative speed lower than the first relative speed ([0005, 0028-0029, 0035, 0050-0051]); and
switching from the first relative speed to the second relative speed, so as to compensate a manufacturing error of the mold ([0048]).
Yoshida does not teach switching from the first relative speed to the second relative speed, so as to compensate a manufacturing error of the mold, based on a parameter indicating a deformation amount of the mold under a pressure applied by the deforming device.
The remaining prior art of record fails to teach or suggest the above limitation.
Since the prior art of record fails to teach or suggest each and every limitation of the claim, the claim is indicated for allowable subject matter.
However, claim 3 is subject to the above double patenting rejection.
Claims 8-9 are indicated for allowable subject matter due to dependency on claim 3.
Response to Arguments
Applicant's arguments filed 0 have been fully considered but they are not persuasive.
Applicant argues that the instant claims recite correcting deformation using a parameter indicating a deformation amount of the mold rather than a difference between a first measured obtained deformation amount of the mold and a second measured obtained deformation amount of a reference mold as recited in claim 6 of ‘910 patent. However, a difference between a first measured obtained deformation amount of the mold and a second measured obtained deformation amount of a reference mold falls under the scope of a parameter indicating a deformation amount of the mold and therefore the parameter indicating a deformation amount of the mold of the instant claim is generic to the deformation amount of the ‘910 patent.
For at least the above reasons, the application is not in condition for allowance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER A WANG whose telephone number is (571)272-5361. The examiner can normally be reached M-Th 8 am-4 pm EST.
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/ALEXANDER A WANG/ Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741