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 without traverse of Group I, claims 1-20 in the reply filed on June 24, 2026 is acknowledged. Claims 21-24 are withdrawn from consideration.
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 8, 9, 12, 14 and 17 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 8 recites the limitation "the whole layer forming composition" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the whole layer forming composition" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the whole layer forming composition" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites that the R groups “independently indicate one of a hydrogen atom, an alkyl group, an alkoxyalkyl group, and an alkylol group”. It is unclear if this intended to be a Markush grouping. If so “selected from the group consisting of” should be added after “one”. For examination purposes it has been interpreted as a Markush grouping.
Claim 17 recites that the molecule has at least one of a hydroxyl group, a carboxyl group, a thiol group, an amino group, an epoxy group, and a (block)isocyanate group. It is unclear if this intended to be a Markush grouping. If so “selected from the group consisting of” should be added after “at least one”. For examination purposes it has been interpreted as a Markush grouping.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 6-8, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2022/113759 (Ando et al.), machine translation attached.
Regarding claim 1, Ando discloses a layer forming composition used to form an adhesion layer comprising a surfactant whose HLB value is 4 (see paragraphs 0056-0059 and 0119 machine translation), which is within the claimed range of 1 to 5. A surfactant would inherently reduce surface tension at a coating-substrate interface, thus a base material and a curable composition would be brought into tight contact with each other as claimed.
Regarding claim 2, Ando discloses that the surfactant may be Surfynol 420 (see paragraph 0119 machine translation). While Ando does not state the boiling point of Surfynol 420, paragraph 0086 of the instant disclosure states that Surfynol 420 has a boiling point of 253 degrees C. Using Surfynol 420 as a surfactant therefore meets the claimed limitation of having a boiling point of not less than 160 degrees C and not more than 300 degrees C.
Regarding claim 3, Ando also discloses that the surfactant contains an acetylene bond in one molecule, and includes at least one hydroxyl group (see paragraph 0062 machine translation).
Regarding claims 6 and 7, Ando also discloses that a surfactant other than a fluorine containing surfactant may be used (see paragraph 0060 machine translation), therefore a surfactant containing not more than 1 atm% or no fluorine atoms is envisaged.
Regarding claim 8, Ando also discloses that the content of the surfactant is from 0.02 to 5% by mass (see paragraph 0058), which is within the claimed range of 0.02-20 mass%.
Regarding claim 11, the layer forming composition disclosed by Ando also contains no photopolymerization initiator in any embodiments.
Regarding claim 12, Ando also discloses that the average particle size is 3 to 50 nm (0.003-0.05 micrometers) (see paragraph 0021), which is significantly less than 0.2 micrometers. The amount of particles whose particle size is larger than 0.2 micrometers would therefore be on the order of less than 3 mass%.
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, 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.
Claims 1-9 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0240816 (Mizutani et al.) in view of WO 2022/113759 (Ando et al.).
Regarding claim 1, Mizutani discloses a layer forming composition used to form an adhesion layer comprising a surfactant which may be Surfynol series (see paragraph 0081). Mizutani does not state the HLB value or the specific type of Surfynol used; however, in the analogous field of coatings, Ando teaches that surfactants having an HLB between 4-12 helps to secure wettability of the object to be coated while suppressing foaming during the production of the coating composition (see paragraph 0059 machine translation). Ando further provides an example utilizing Surfynol 420 which has an HLB value of 4 (see paragraph 0119 machine translation), which is within the claimed range of 1 to 5. It would have been obvious to one having ordinary skill in the art to use a Surfynol surfactant with an HLB value between 4-12, particularly Surfynol 420, for the Mizutani coating, in order to secure wettability of the object to be coated while suppressing foaming during the production of the coating composition as taught by Ando.
Regarding claim 2, Mizutani in view of Ando does not state the boiling point of the surfactant; however, it is stated in paragraph 0086 of the instant disclosure states that Surfynol 420 has a boiling point of 253 degrees C. Therefore, upon using Surfynol 420 as a surfactant as taught by Ando the claimed limitation of having a boiling point of not less than 160 degrees C and not more than 300 degrees C is met.
Regarding claim 3, Mizutani also discloses that the surfactant contains an acetylene bond in one molecule, and includes at least one hydroxyl group (see paragraphs 0081-0083).
Regarding claim 4, Mizutani also discloses that the surfactant may be polyoxyethylene octylphenyl ether or polyoxyethylene nonylphenyl ether (see paragraph 0081), which include at least a benzene ring and an ether bond in one molecule. It is also stated that a combination of surfactants may be used (see paragraph 0085); thus, Surfynol 420 in combination with one of the other listed surfactants is within the scope of Mizutani.
Regarding claim 5, Surfynol series surfactant as disclosed by Mizutani meets the limitation of a higher alcohol with not less than 7 carbon atoms (see paragraph 0083).
Regarding claims 6 and 7, Mizutani also discloses that surfactants other than fluorine-based surfactants may be used (see paragraph 0081), therefore a surfactant containing not more than 1 atm% or no fluorine atoms is envisaged.
Regarding claim 8, Mizutani also discloses that the content of the surfactant is from 0.05 to 8% by mass (see paragraph 0084), which is within the claimed range of 0.02-20 mass%.
Regarding claim 9, Mizutani discloses that the layer forming composition contains a solvent, and in a case where a whole layer forming composition is defined as 100 mass%, content of the solvent is preferably not less than 80 mass% and not more than 99 mass% (see paragraph 0510 where it is discussed that the solid content is 1-20 mass%, the solvent content would therefore yield 80-99 mass%), which is within the claimed range of 70-99.5 mass%.
Regarding claim 11, the layer forming composition disclosed by Mizutani also contains no photopolymerization initiator in any embodiments. Only embodiments utilizing an optional azo or peroxide initiator are discussed (see paragraph 0413).
Regarding claim 12, Mizutani also does not require that the composition includes particles. Therefore the content of particles whose size is larger than 0.2 micrometers is zero which is less than 3 mass%.
Regarding claim 13, Mizutani also discloses that the layer forming composition contains at least a compound having at least one functional group to be bonded to the base material and at least one polymerizable functional group, a cross linker and a solvent (see paragraphs 0407 and 0428).
Regarding claim 14, Mizutani also discloses that the crosslinker may be a compound as represented by the claimed formula (see page 56 lower left), wherein the L groups independently indicate one of a hydrogen atom, an alkyl group, or an alkoxyalkyl group (see paragraph 0447). Mizutani also discloses that the cross-linking agent may be Cymel 303 (see paragraph 0444), which is a hexamethoxymethylmelamine, thus at least 5 of the L groups are alkyoxyalkyl groups.
Regarding claim 15, Mizutani also discloses that the crosslinker may be a hexamethoxymethyl melamine or hexaethoxymethyl melamine(see paragraph 0445).
Regarding claim 16, Mizutani also discloses that the crosslinker has in one molecule at least a total of five groups of at least one of an alkoxyalkyl group and an alkylol group (see paragraphs 0439-0447).
Regarding claim 17, Mizutani also discloses that the compound has, one molecule of a hydroxyl group, a carboxyl group, or an amino group (see paragraph 0318).
Regarding claim 18, Mizutani also discloses weight fractions of the resin compound of 14.75 (see Table 1, Examples 1-21) and the cross-linker in an amount of 2-10 parts (see paragraph 0428) with respect to a total weight of the layer forming composition yielding a weight fraction of 1.475 to 7.375 (14.75/10=1.475 to 14.75/2=7.375), which is within the claimed range of 0.11 to 9.
Regarding claim 19, Mizutani also discloses weight fractions of the resin compound of 2/100 to 15/100 (see paragraph 0510) and the cross-linker in an amount of 2-10 parts (see paragraph 0428) with respect to a total weight of the layer forming composition yielding a sum ranging 4 to 25 (2 +2= 4 to 15 + 10=25), which overlaps the claimed range of 0.01 to 10. 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).
Regarding claim 20, Mizutani also discloses that the layer forming composition is used for photo-nanoimprint (see paragraph 0010 where photosensitive patterning of a semiconductor is discussed).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0240816 (Mizutani et al.) in view of WO 2022/113759 (Ando et al.), as evidenced by US 2021/0189065 (Kondo) and US 2011/0309293 (Moriuchi et al.).
Regarding claim 10, Mizutani also discloses that the layer forming composition contains a solvent (see paragraphs 0457-0466), and the solvent may contain at least two types of solvents (see paragraph 0468). The solvents listed include a range of boiling points. For example, methyl propyl ketone has a boiling point of 102 (see Kondo paragraph 0070), which is within the range of 80 to 200 degrees C, and N-Methylacetamide has a boiling point of 206 degrees C (see Moriuchi paragraph 0034), which is within the claimed range of 200 to 300 degrees C. It would have been obvious to one having ordinary skill in the art before the effective filing date that any of the listed solvents could be used as the “two or more kinds of solvents”, including those with different boiling points. Mizutani does not state the content amount of the second solvent; however, it would have been obvious to one having ordinary skill in the art that the solvents could be used in any ratio depending on the desired drying behavior and application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENDY L BOSS whose telephone number is (571)272-7466. The examiner can normally be reached 8:30-6:30.
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/WENDY L BOSS/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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