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
Applicant’s amendments filed 7/6/2026 have resolved the previous objections to the claims and specification as well as the 112(b) rejections for claims 6 and 8. Claim 18 still remains unclear, see below.
Applicant's arguments filed 7/6/2026 have been fully considered but they are not persuasive.
Applicant argues regarding claim 1 that Ter Meulen does not describe two separate spots and instead describes only one double sized spot. Examiner disagrees. The claims do not limit the apparatus to having only one carrier, describe that the singular character is only one piece, or say that the two spots are on the same carrier. Ter Meulen [0082] describes Figure 2A clearly showing two separate stamp areas. Examiner also notes that claims 12-13 describe a material being filled in between the spots which suggests the spots are not totally separate seeing as they are connected by at least some type of material. Additionally, although not cited in the rejection, duplication of parts has no patentable significance unless a new and unexpected result is produced, see MPEP §2144.04(VI)(B).
With respect to the secondary references, Applicant argues that the secondary references are not directed to roll-to-roll imprinting and therefore would require “severe modifications” to make the modifications as described in the office action. Examiner disagrees. Each of Ogasawara, Jung, and Thothadri are directed to imprinting. Each of these references also describes a mold with a pattern on it as well as some type of mold substrate/holder with a pattern layer on it. Ogasawara describes mold holding unit 12 and mold/pattern portion 11/11a, Jung describes a substrate 120 and a pattern layer 110, and Thothadri describes masters 202 on a backing plate 206. Each reference describes a mold for imprinting which is similar to both the claimed stamp and the primary reference. Additionally, while Applicant alleges that “severe modifications” are needed these modifications are not explained or further detailed.
With respect to Thothadri, Applicant additionally argues that Thothadri does not describe filing the area between the spots because Thothadri discloses filled a seam between two masters, not two spots on a carrier. Examiner disagrees and notes that aside from the terminology, these components are relatively similar. Both the claim and Ter Meulen describe patterned spots on a carrier and Thothadri describes two patterned masters on a backing plate. Thothadri teaches filling the area between two separate patterned areas to fill the seam. This is not particularly different than filling the area between two different spots as claimed.
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.
Claim 18 is 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.
Regarding claim 18, the claim recites “wherein the layer of polymeric material comprises a layer of polycarbonate, or polyethylene terephthalate.” Claim 10 previously requires a layer of glass, metal, or polymeric material. Claim 18 further specifies that the polymeric material is polycarbonate or polyethylene terephthalate. It is not clear if claim 18 is specifying that the layer material is the polymeric material and should be either polycarbonate or polyethylene terephthalate or alternatively just further specifying that the layer could be any of glass, metal, polycarbonate, or polyethylene terephthalate.
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 1-4, 8-11, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ter Meulen (US 2019/0329575.)
Regarding claim 1, Ter Meulen meets the claimed, A flexible stamp for an imprinting process comprising: a carrier, the carrier comprising a first surface; (Ter Meulen [0075] describes flexible stamp/textured foil 104 with a surface) and at least two spots of a flexible material; (Ter Meulen [0075] describes an imprint texture 104A spot, Ter Meulen [0082] describes double texture areas 104A) wherein the spots:- are separate from each other and adhered to the first surface of the carrier, (Term Meulen [0075] and [0082] describe separate texture areas 104A that are adhered to the flexible mold 104) and - have a surface which: is above the first surface of the carrier, is parallel to the first surface of the carrier and is textured by an imprinting pattern wherein the imprinting pattern has a size which is smaller than a size of the spot (Ter Meulen [0075] describes the imprint texture 104A having an imprint pattern, Figure 1 shows a surface on 104A, the pattern is clearly smaller than the spot since the pattern does not extend beyond the spot see Figure 1.)
Regarding claim 2, Ter Meulen meets the claimed, The flexible stamp according to claim 1, wherein the flexible material is a polymeric material (Ter Meulen [0075] describes various polymeric materials.)
Regarding claim 3, Ter Meulen meets the claimed, The flexible according to claim 1, wherein the surface of the spots is higher above the first surface of the carrier than a depth of a deepest depression of the imprinting pattern (Ter Meulen [0075] describes the textured imprint pattern area 104A and a top surface portion of the pattern on the pattern area 104A would be above the deepest area.)
Regarding claim 4, Ter Meulen meets the claimed, The flexible stamp according to claim 1, wherein all spots have a same texture (Ter Meulen [0082] describes using two of the same imprint texture area 104A.)
Regarding claim 8, Ter Meulen meets the claimed, The flexible stamp according to claim 2, wherein the polymeric material is selected from a group consisting of epoxides, thiols, polyvinyl resins, acrylates, methacrylates, polyethers, fluorinated acrylates, fluorinated methacrylates, fluorinated polyethers, siloxanes, siloxane-acrylates, or blends thereof (Ter Meulen [0075] describes the flexible stamp 104 and imprint texture 104A can be made of the same material and lists a variety of material including epoxy, PDMS, etc.)
Regarding claim 9, Ter Meulen meets the claimed, The flexible stamp according to claim 1, wherein at least one spot comprises a plurality of layers (Ter Meulen [0075] describes the flexible stamp 104 and imprint texture 104A can be made of the same material and describes a plurality of layers.)
Regarding claim 10, Ter Meulen meets the claimed, The flexible stamp according to claim 9, wherein at least one layer is a glass sheet, a metal sheet, or a layer of polymeric material (Ter Meulen [0075] describes polymeric materials and thin metal sheets.)
Regarding claim 11, Ter Meulen meets the claimed, The flexible stamp according to 1, wherein the flexible stamp comprises channels or other areas of empty space between the spots on the carrier (Ter Meulen Figure 1 shows empty space next to the imprint texture 104A.)
Regarding claim 18, Ter Meulen meets the claimed, The flexible stamp according to claim 10, wherein the layer of polymeric material comprises a layer of polycarbonate, or polyethylene terephthalate (Ter Meulen [0075] describes PC, polycarbonate and PET, polyethylene terephthalate.)
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ter Meulen modified by Ogasawara (US 2020/0171716).
Regarding claim 5, Ter Meulen meets the claimed, The flexible according to claim 1, wherein the spots are adhered to the carrier (Ter Meulen [0075] describes the pattern area 104A is adhered to the stamp 104).
Ter Meulen does not specify that the spots are reversibly adhered. Analogous in the field of imprinting, Ogasawara meets the claimed, the spots are reversibly adhered (Ogasawara [0028] describes a mold 11 that is removable from the mold holding unit 12 in order to clean it.)
As per MPEP §2144.04(V)(C), making components separable is obvious if there was a reason to obtain access. It would have been obvious to a person of ordinary skill in the art before the filing date to make the pattern area of Ter Meulen removable from the holder or carrier as taught by Ogasawara in order to clean the mold, see Ogasawara [0028].
Claims 6 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Ter Meulen modified by Jung (KR20210047651, see English translation provided.)
Regarding claim 6, Ter Meulen does not describe the surface free energy of the stamp and does not meet the claimed, The flexible stamp according to claim 2, wherein the polymeric material of the spots has a surface free energy of 50 mN/m or lower.
Analogous in the field of imprint molds, Jung meets the claimed, The flexible stamp according to claim 2, wherein the polymeric material of the spots has a surface free energy of 50 mN/m or lower (Jung [0044]-[0045] describe the pattern layer of an imprinting mold has a surface energy of 21 mN/meter or less.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the mold of Ter Meulen with the mold having a low energy surface layer as described in Jung because low surface energy contributes to easier peeling and more precise pattern replication, see Jung [0045].
Regarding claim 16, Ter Meulen does not describe the surface free energy of the stamp and does not meet the claimed, The flexible stamp according to claim 1, wherein the polymeric material of the spots has a surface free energy of 35 mN/m or lower.
Analogous in the field of imprint molds, Jung meets the claimed, The flexible stamp according to claim 1, wherein the polymeric material of the spots has a surface free energy of 35 mN/m or lower. (Jung [0044]-[0045] describe the pattern layer of an imprinting mold has a surface energy of 21 mN/meter or less.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the mold of Ter Meulen with the mold having a low energy surface layer as described in Jung because low surface energy contributes to easier peeling and more precise pattern replication, see Jung [0045].
Regarding claim 17, Ter Meulen does not meet the claimed, The flexible stamp according to claim 1, wherein the polymeric material of the spots has a surface free energy of 30 mN/m or lower.
Analogous in the field of imprint molds, Jung meets the claimed, The flexible stamp according to claim 1, wherein the polymeric material of the spots has a surface free energy of 30 mN/m or lower (Jung [0044]-[0045] describe the pattern layer of an imprinting mold has a surface energy of 21 mN/meter or less.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the mold of Ter Meulen with the mold having a low energy surface layer as described in Jung because low surface energy contributes to easier peeling and more precise pattern replication, see Jung [0045].
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ter Meulen modified by Thothadri (US 2022/0121114).
Regarding claim 12, Ter Meulen does not describe additional material between the spots and does not meet the claimed, The flexible according to claim 1, wherein the areas between the spots are filled with additional material.
Analogous in the field of imprinting molds, Thothadri also describes two master molds adhered to a base layer and meets the claimed, The flexible according to claim 1, wherein the areas between the spots are filled with additional material (Thothadri [0057] describes the empty space between two masters is filled with filler material and anti-stick material.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the molds of Ter Meulen with the filler and anti-stick material of Thothadri in order to fill the seam between the masters in order to remove any seams, see Thothadri [0055].
Regarding claim 13, Thothadri further meets the claimed, The flexible stamp according to claim 12, wherein the additional material is an anti-stick material or a hard-coat resin. (Thothadri [0057] describes an anti-stick coating is placed between the masters.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the molds of Ter Meulen with the filler and anti-stick material of Thothadri in order to be able to remove any excess filler material so as to make the filler material flush even, see Thothadri [0057].
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA BARTLETT whose telephone number is (571)272-4953. The examiner can normally be reached Monday - Friday 9:00 am-5:00 pm EST.
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, Sam Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/V.B./Examiner, Art Unit 1744
/EMMANUEL S LUK/Primary Examiner, Art Unit 1744
Prosecution Insights