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 .
Claim Objections
Claim 6 is objected to because of the following informalities: “oxide , antimony” in line 3 should be “oxide, antimony”. Appropriate correction is required.
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.
Claims 3 and 6 are 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.
Claim 3 recites the limitation "said textured area" in line 3. However, claim 1 sets forth that there are “at least one textured area.” It is not clear if Applicant intends for the recited functional area to be required to cover and/or enclose all of the at least one textured areas, or just one of the at least one textured areas.
Claim 6 recites the limitation "at least one conductive material" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "at least one electrical contact" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Appropriate correction and/or clarification is required.
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.
Claim(s) 1, 2, 4, 6, 14-16, 18, 19, 22, 24-26, 28, and 30 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Hart et al. (US 11396196).
Regarding claim 1, Hart et al. disclose “a flexible stamp (Figures, column 4, lines 45-46) configured for nanoimprinting, comprising: at least one substantially flexible substrate (item 110, column 4, lines 45-46), said substrate comprising at least one textured area (see the area of the pillars in Figures 6 and 7); at least one functional element (item 120); and at least two conductive tracks which are connected or connectable to at least one functional element (Figure 7, multiple connections to each pillar; column 5, lines 2-6); wherein at least one functional element fully covers and/or overlaps with at least one textured area and/or wherein at least one functional element is positioned outside the textured area (Figures 7a-c).” Regarding claim 2, Hart et al. further disclose “wherein at least one functional element is a conductive element, in particular an electrically conductive element and/or a thermally conductive element (column 5, lines 6-8).” Regarding claim 4, Hart et al. further disclose “wherein at least part of at least one functional element is made of an electrically conductive material, wherein the at least one conductive material comprises at least one metal, at least one non-metallic inorganic compound and/or at least one electrically conductive polymer (column 5, lines 6-8).” Regarding claim 6, no structure is recited which defines over Hart et al. Specifically, the claim merely puts limitations on the term “at least one conductive material” which is not required by claim 1. Thus, no structure of the stamp is recited which defines over Hart et al. Regarding claim 14, Hart et al. further disclose “wherein at least one functional element is chosen from the group of: an electrical component, a heating element, a load cell array, a gripper array, a sensor, a strain sensor, a temperature sensor, a recognition tag, RFID tag and/or a piezo element (column 5, lines 47-50).” Regarding claim 15, Hart et al. further disclose “wherein at least one functional element comprises at least one electric circuit (Figure 7a, column 5, lines 46-53).” Regarding claim 16, Hart et al. further disclose “wherein at least one functional element is provided upon a surface the substrate and/or wherein at least part of at least one functional element is embedded in the substrate (Figure 7a, Figure 1).” Regarding claim 18, Hart et al. further disclose “wherein at least one substrate comprises a front surface and a rear surface, wherein at least one further functional element is at the rear surface of the substrate and the textured area is at the front surface (Figures 7a-c: see the single line connecting to the voltage source).” Regarding claim 19, Hart et al. further disclose “comprising multiple functional elements, wherein at least one functional element fully covers and/or overlaps with at least one textured area and wherein at least one functional element is positioned outside the textured area (Figures 7a-c).” Regarding claim 22, Hart et al. further disclose “wherein at least part of at least one conductive track is provided upon a surface the substrate and/or wherein at least part of at least one conductive track is embedded in the substrate and/or wherein at least one conductive track is positioned at a distance from the textured area (Figure 7a).” Regarding claim 24, Hart et al. further disclose “comprising at least two electrical contacts, wherein each electrical contact is connected to or connectable with at least one conductive track (Figure 7a).” Regarding claim 25, Hart et al. further disclose “wherein at least one electrical contact is at least partially galvanic, capacitive and/or inductive (Figures 7a-c).” Regarding claim 26, no structure is recited which defines over the structure of Hart et al., as at least one electrical contact is not required by the claim. Regarding claim 28, Hart et al. disclose the stamp of claim 1 (see the rejection of claim 1 above). Since no specific steps other than “providing” each element of the stamp are recited in claim 28, Hart et al. are deemed to meet all of the claim limitations.
Regarding claim 30, Hart et al. further disclose “a system for nanoimprinting, configured for retaining at least one stamp according to claim 1 (see the rejection of claim 1 above) and said system comprising at least one steering structure for electrical steering of the stamp (see the arrow Figure 7c: Examiner interprets whatever structure is used to cause the relative motion to be the recited ‘steering structure’).”
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.
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(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart et al.
Regarding claim 29, Hart et al. further disclose “wherein the textured area is” provided “upon the substrate after the substrate is provided with at least one functional element (column 8, lines 21-230), but fail to disclose that the providing is done by imprinting. However, Hart et al. do disclose using lithography (column 8, line 30). Examiner takes Official Notice that, at the time of the invention, that imprint lithography was a known method of lithography to provide a patterned layer. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use imprint lithography to provide the patterned layer of Hart et al. because it was known in the art to be suitable for the intended purpose.
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart et al. in view of Blanchet et al. (US 20080248205). Regarding claims 7-9, Hart et al. disclose all that is claimed, as in claim 1 above, including that the substrate can be polymeric substrates (column 4, line 39), but do not disclose what material or the thickness of the substrate layer. Blanchet et al. disclose that in similar stamps, the substrate material can be made from PET (paragraph 32) and have thickness of 2 mils (51 microns) (paragraph 34) in order to have a support that is sufficiently flexible to be able to conforming the relief structure of the stamp to the substrate to be printed (paragraph 32). It has been held that the selection of a known material based upon its suitability for its intended use is prima facie obvious. See MPEP §2144.07. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use PET having a thickness of 51 microns as the substrate of et al. because it has been shown in the art to be suitable for the intended purpose. PET is also known to be transparent and/or translucent.
Response to Arguments
Applicant’s arguments filed 11/21/2025 have been considered but are moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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/JOSHUA D ZIMMERMAN/ Primary Examiner, Art Unit 2853