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 .
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 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.
Election/Restrictions
Applicant’s election without traverse of claims 1-8 in the reply filed on June 2, 2026 is acknowledged. Claims 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
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 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US20080217819).
Regarding claim 1, Lee discloses a method for performing nanotransfer on a substrate (abstract), the method comprising: (a) forming a polymer mold having a mold protrusion, the mold protrusion being formed on a lower surface of the polymer mold and having a predetermined pattern (paragraph 0019-0020, Fig. 1); (b) depositing a metal on the lower surface of the polymer mold, to form a metal layer on the mold protrusion (metal layer 108, paragraph 0022 and Fig. 3); (c) positioning the polymer mold on an upper surface of a substrate body at a predetermined temperature and pressurizing the substrate body by a predetermined time with a predetermined pressure, so that the metal layer is transferred on the upper surface of the substrate body according to a predetermined pattern (paragraphs 0026-0028; and Figs. 6-8); and (d) detaching the polymer mold from the substrate body, so that the polymer mold is separated from the metal layer transferred on the upper surface of the substrate body (paragraph 0031 and Fig. 9).
Regarding claim 8, Lee discloses wherein in the step (c), the upper surface of the substrate body is not chemically treated (paragraphs 0024-0025).
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (WO2004061994).
Regarding claim 1, Kim discloses a method for performing nanotransfer on a substrate (abstract and Fig. 1), the method comprising: (a) forming a polymer mold having a mold protrusion, the mold protrusion being formed on a lower surface of the polymer mold and having a predetermined pattern (a PDMS stamp reads on a polymer mold having a mold protrusion, paragraph 0037-0038, Fig. 1a); (b) depositing a metal on the lower surface of the polymer mold, to form a metal layer on the mold protrusion (metal layer 2, paragraph 0047 and Fig. 1a); (c) positioning the polymer mold on an upper surface of a substrate body at a predetermined temperature and pressurizing the substrate body by a predetermined time with a predetermined pressure, so that the metal layer is transferred on the upper surface of the substrate body according to a predetermined pattern (paragraphs 0030 and 0047; and Fig. 1); and (d) detaching the polymer mold from the substrate body, so that the polymer mold is separated from the metal layer transferred on the upper surface of the substrate body (paragraph 0047 and Fig. 1b).
Regarding claim 4, Kim discloses wherein the substrate body comprises silicon (paragraph 0045), and the metal comprises gold (Au, claim 12).
Claim Rejections - 35 USC § 103
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 of this title, 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.
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.
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being obvious over Lee et al. (US20080217819) as applied to claim 1 above.
Regarding claim 2, Lee is silent about the ranges for predetermined temperature, the predetermined pressure, and the predetermined time. However, Lee teaches that the temperature is in a range to ensure an adhesion effect can be produced between the metal layer 108 and the surface 202 of the substrate 200 (paragraph 0028), the pressure is to make the mold 100 contact with the substrate 200 closely (paragraph 0026), and the time is needed to produce an adhesion effect between the metal layer 108 and the surface 202 (paragraph 0028). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to optimize the temperature, pressure and time (known result-effective variables as taught by Lee) to achieve desirable adhesion effect and generate close contact between the metal layer 108 and the surface 202 of the substrate 200. Additionally, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable range by routine experimentation and there is no evidence of the criticality of the claimed range. See MPEP 2144.05 II.
Regarding claim 5, Lee discloses wherein in the step (d), the polymer mold is cooled down, and then the polymer mold is separated from the substrate body (paragraph 0031 and Fig. 9). Lee is silent about the ranges for cool down time and temperature. However, a cool down process commonly involves cooling an object to room temperature, which is within or overlaps with the range recited in the instant claim. Time for cool down can easily be determined by one of ordinary skill in the art.
Claim 3 is rejected under 35 U.S.C. 103 as being obvious over Kim et al. (WO2004061994) as applied to claim 1 above.
Regarding claim 3, Kim discloses wherein the metal layer has a thickness between about 30 nm and about 100 nm (paragraph 0069), which overlaps with the range recited in the instant claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Claims 6-7 are rejected under 35 U.S.C. 103 as being obvious over Lee et al. (US20080217819) as applied to claim 1 above, in view of Hu et al. (US20170312747).
Regarding claim 6, Lee is silent about coating an etching solution on the upper surface of the substrate body, so that an area in which the metal layer remains is removed and nanostructures are generated, after the step (d). However, Lee discloses that the method can be used to transfer a patterned material, such as metal, onto a substrate, such as silicon, for the purpose of fabricating a patterned structure on a substrate (paragraphs 0018 and 0028; claim 10; and Fig. 10). In addition, Hu teaches that a patterned metal layer can be used to fabricate a patterned structure on a silicon substrate using a metal-assisted chemical etching process (paragraph 0001 and claim 1). In particular, Hu teaches coating an etching solution on the upper surface of the substrate body, so that an area in which the metal layer remains is removed and nanostructures are generated, after the formation of the metal pattern on the upper surface of the substrate (paragraphs 0046-0047; Figs. 6 and 8). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to coat an etching solution on the upper surface of the substrate body as taught by Hu, so that an area in which the metal layer remains is removed and nanostructures are generated, after the step (d) in the method of Lee, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Regarding claim 7, Hu discloses wherein the etching solution comprises acids having hydrofluoric acid, oxidizing agents having hydrogen peroxide and isopropyl alcohol (paragraph 0046). Hu is silent about the etching solution comprising deionized water. However, deionized water is a well-known solvent in an etching solution for a metal-assisted chemical etching process.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Huang et al. (“Metal-Assisted Chemical Etching of Silicon: A Review”, Advanced Materials, Vol. 23, year 2011, pages 285-308) presents an overview of the essential aspects in the fabrication of silicon and some silicon/germanium nanostructures by metal-assisted chemical etching.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (571)270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
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