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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-11 in the reply filed on 12/19/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 06/06/2024 has been considered by the examiner.
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:
“transport unit configured to transport” in claim 1. No corresponding structure for transport is provided.
“first holding unit configured to hold” in claim 1. The corresponding structure for the first holding unit is recited as a template holding unit (see [0065], [0085]) or a substrate holding unit (see [0097], [0114]).
“second holding unit configured to hold” in claim 1. The corresponding structure for the second holding unit is recited as a template holding unit (see [0099], [0117]) or a substrate holding unit (see [0067], [0087]).
“measuring unit configured to measure” in claim 1. The corresponding structure for the measuring unit is recited as a camera that can measure alignment marks on the substrate (see [0044]), and a displacement sensor that can detect the distance to the substrate (see [0045]).
Because this/these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, no corresponding structure for the claimed transport unit is provided in the specification of 06/06/2024.
Claims 2-11 are rejected by virtue of their dependence upon and because the fail to cure the deficiencies of claim 1.
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 1-11 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, The claim limitation “transport unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. No corresponding structure for the claimed transport unit is provided in the specification of 06/06/2024. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-11 are rejected by virtue of their dependence upon and because the fail to cure the deficiencies of claim 1.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-5, 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hirano (US 2019/0255760 A1), in view of Kawasaki (US 2020/0089108 A1 – of record as JP 2020043315).
Regarding claim 1, Hirano discloses a planarized layer forming apparatus. The recitation “apparatus configured to perform a planarization process of forming a planar layer on a substrate by bringing a planar surface of a template into contact with a curable composition on the substrate and then curing the curable composition” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead the process steps or structural limitations are able to stand alone. See MPEP 2111.02
The apparatus to include having a mold 18 – (corresponds to a template) loaded into the apparatus by a mold conveying system – (construed as a transport unit configured to transport the template) and held by a mold chuck 17 – (construed as a first holding unit configured to hold the template transported by the transport unit), see [0057]. The mold/template is moved downward to contact a substrate 1 that is held on a substrate stage 7 – (construed as a second holding unit), see [0058] , [0064]. It being considered, the contact between the mold/template and the substrate held on the substrate stage is representative of “a second holding unit configured to receive the mold/template held by the mold chuck/first holding unit from the mold chuck/first holding unit”.
While Hirano discloses the use of an off-axis position measurement apparatus; it does not explicitly disclose the measuring unit is configured to measure a position of the substrate or the template held by the second holding unit in a plane direction, wherein the measuring unit obtains an amount of positional shift of the position from a reference position.
Kawasaki discloses a planarization apparatus. The apparatus being configured to use an alignment scope 23 for observing a reference mark provided on a substrate stage 3 and an alignment mark provided on a mold 11. And for measuring the positional deviation therebetween, see [0027] – (construed as the measuring unit is configured to measure a position of the substrate or the template held by the second holding unit in a plane direction, wherein the measuring unit obtains an amount of positional shift of the position from a reference position).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the off-axis position measurement apparatus of Hirano to measure the position of the substrate and mold/template to include positional changes therebetween, as taught by Kawasaki to ensure alignment between the mold/template and substrate as suggested by Kawasaki [0027].
Regarding claims 2-3, as previously discussed, modified Hirano discloses a mold/template 18 is held by a mold chuck 17 – (construed as a first holding unit), see [0057] – (corresponds to the first holding unit includes a template holding unit that holds the template in the planarization process), and a substrate 1 is held by a substrate stage 7 – (construed as a second holding unit), see [0058] – (corresponds to the second holding unit includes a substrate holding unit that holds the substrate in the planarization process).
While the discussion of claim 1, presented the first holding unit as the mold/template and second holding unit as the substrate stage; one of ordinary skill would readily envision the reverse. That is, the first holding unit is the substrate stage 7 that holds the substrate 1 in the planarization process, and the second holding unit is the mold chuck 17/template that holds the template in the planarization process.
Regarding claims 4-5, 8, modified Hirano discloses is performed for the first time after loading the substrate 1 into the imprint apparatus, the substrate 1 is moved under the off-axis scope 24, and the off-axis scope 24 measures the position of the substrate 1. This pre-alignment is performed with accuracy such that the alignment mark formed in each shot region of the substrate 1 falls within the measurement range of the alignment measurement device 12 in the mark measurement processing performed before the mold 18 is brought into contact with the imprint material on the substrate 1 – (construed as an adjustment of a position of the substrate holding unit, and the substrate held by the substrate holding unit in the plane direction is performed in the planarization process on the basis of the amount of positional shift; and where the adjustment is performed so that the template and the substrate are aligned in the plane direction before the planar surface of the template is brought into contact with the surface of the substrate to which the curable composition is applied; and where the reference position is a position of the substrate held by the substrate holding unit in the plane direction which is measured using the measuring unit after the substrate is transported to the substrate holding unit in the planarization process).
Regarding claim 7, as modified Hirano discloses the off-axis scope is supported by the alignment scope shelf. The off-axis scope is used for a global alignment process for detecting alignment marks provided in a plurality of shot regions of the substrate to determine the position of each shot region, see Kawasaki [0026]. And where the pre-alignment of the substrate and substrate stage is performed before contact with the template. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide modified Hirano’s planarization apparatus with the claimed functionality since: modified Hirano clearly contemplates such functionality. This being suitable for performing a global alignment scheme.
Allowable Subject Matter
Claims 6, 9-11 are 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:
Claims 6, 9-11 present structure and/or functionality not taught or reasonably suggested by the closest prior art Hirano in view of Kawasaki as set forth in the rejection of claims 1-4 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEDRICK S WILLIAMS whose telephone number is (571)272-9776. The examiner can normally be reached on Monday -Thursday 8:00am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Whatley can be reached on 5712705545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEDRICK S WILLIAMS/Primary Examiner, Art Unit 1749