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
Claims 1-10 and 16 are objected to because of the following informalities: at line 6 of claim 1, “dispense first resist” should be - - dispense a first resist - -. At line 11 of claim 1, “dispense second resist” should be - - dispense a second resist - -. Claims 2-10 are objected to for the same reasons as claim 1. At line 6 of claim 16, “dispense first resist” should be - - dispense a first resist - -. At line 7 of claim 16, “dispense second resist” should be - - dispense a second resist - -. Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 17 of U.S. Patent No. 11,498,261 in view of Blenkhorn (US 2008/0268203).
Regarding claims 11 and 15, claim 1 of the ‘261 patent claims a system for double-sided imprinting comprising: first rollers for moving a first web that includes a first template; second rollers for moving a second web that includes a second template; a locating system disposed between the first and second rollers, the locating system configured to locate, for alignment, at least one reference mark on the first web and at least one reference mark on the second web; a first dispenser configured to dispense a first resist on the first template; a second dispenser configured to dispense a second resist on the second template; a loading system configured to insert a substrate between the first template and the second template; and a light source configured to cure the first resist and the second resist, such that the cured first resist has a first imprinted feature associated with the first template on a first side of the substrate and the cured second resist has a second imprinted feature associated with the second template on a second side of the substrate, a clamping system configured to clamp the first web and the second web together at a location adjacent to the at least one reference mark on the first web and the at least one reference mark on the second web such that the webs are moved and clamped with the first template aligned with the second template, and unclamp the webs such that the substrate and the cured resists are capable of passing through a gap between the webs; and
wherein, the system is configured such that, in operation, the first web is drawn along the first rollers in a first direction to expose the first template to the first dispenser and the second web is drawn along the second rollers in a second direction to expose the second template to the second dispenser, and then, the first web is drawn along the first rollers in a direction opposite the first direction and the second web is drawn along the second rollers in a direction opposite the second direction, such that the first template with the first resist and the second template with the second resist are aligned with each other.
Further, claim 2 of the ‘261 patent claims an unloading system configured to unload the substrate substantially as claimed, claim 7 of the ‘261 patent claims that first imprinting features are present on the first template and second imprinting features are present on the second template and the structures are brought and moved together in a manner substantially as set forth in the instant claim and pressed as claimed to fill the resist into the imprinting features and claim 8 of the ‘261 patent claims an alignment system configured to align reference marks on the first web and the second web. It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the limitations set forth in the claims of the ‘261 patent in order to operate a fully functional imprinting system in an art recognized suitable manner.
Claim 1 of the ‘261 patent does not claim the first and second resists are configured to be dispensed on the substrate as claimed. However, Blenkhorn teaches an analogous system and method wherein it is disclosed that dispensing of the resist material on either the template or the substrate is known in the art and suggests that these are alternative equivalent manners of applying the resist for subsequent imprinting/texturing (paragraph [0057]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of claim 1 of the ‘261 patent and Blenkhorn and to have applied the resists set forth in the ‘261 patent claim onto the substrate as claimed, as suggested by Blenkhorn, for the purpose, as suggested by Blenkhorn of applying the resists for subsequent imprinting/texturing on the surface of the substrate in an art recognized suitable equivalent or alternative manner.
As to claim 12, claims 3-6 of the ‘261 patent claim a vacuum chuck. Selecting of the shape of the vacuum chuck (e.g. annular) is understood to be a routine expedient and the claims of the ‘261 patent are understood to render the limitation prima facie obvious absent further specificity.
As to claim 13, claim 17 of the ‘261 patent claims first and second squeegee rolls configured as claimed.
As to claim 14, claim 2 of the ‘261 patent claims an unloading system configured to unload the substrate with imprinted features on both sides. The system set forth in the claims of the ‘261 patent is capable of processing substrates as claimed. Further, utilizing a roller as part of the claimed unloading system is understood to be prima facie obvious in view of the teaching of the ‘261 claims (i.e. corresponding to the third roller set forth in the claim).
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 17 of U.S. Patent No. US 11,498,261 in view of Blenkhorn (US 2008/0268203), as applied to claims 11-15 above, and further in view of Hennessey et al. (US 2004/0150135). Note: this is an alternative rejection of claim 12.
As to claim 12, the combination teaches the system set forth above. More narrowly, the claims of the ‘261 patent do not explicitly claim the pressing includes utilizing press domes as claimed and making a correction for alignment. However, Hennessey et al. teach an analogous method that includes utilizing press domes to press templates for imprinting (paragraph [0071]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art to have combined the teaching of claim 1 of the ‘261 patent and Hennessey et al. and to have pressed with first and second press domes as claimed in the system of claim 1 of the ‘261 patent, as suggested by Hennessey et al., for the purpose, as suggested by Hennessey et al. of pressing in a manner that also removes air.
Claims 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 17 of U.S. Patent No. 11,498,261.
Regarding claims 16 and 17, claim 1 of the ‘261 patent claims a system for double-sided imprinting comprising: first rollers for moving a first web that includes a first template; second rollers for moving a second web that includes a second template; a locating system disposed between the first and second rollers, the locating system configured to locate, for alignment, at least one reference mark on the first web and at least one reference mark on the second web; a first dispenser configured to dispense a first resist on the first template; a second dispenser configured to dispense a second resist on the second template; a loading/moving system configured to insert a substrate between the first template and the second template; and a light source configured to cure the first resist and the second resist, such that the cured first resist has a first imprinted feature associated with the first template on a first side of the substrate and the cured second resist has a second imprinted feature associated with the second template on a second side of the substrate, a clamping system configured to clamp the first web and the second web together at a location adjacent to the at least one reference mark on the first web and the at least one reference mark on the second web such that the webs are moved and clamped with the first template aligned with the second template, and unclamp the webs such that the substrate and the cured resists are capable of passing through a gap between the webs; and wherein, the system is configured such that, in operation, the first web is drawn along the first rollers in a first direction to expose the first template to the first dispenser and the second web is drawn along the second rollers in a second direction to expose the second template to the second dispenser, and then, the first web is drawn along the first rollers in a direction opposite the first direction and the second web is drawn along the second rollers in a direction opposite the second direction, such that the first template with the first resist and the second template with the second resist are aligned with each other.
Further, claim 2 of the ‘261 patent claims an unloading system configured to unload the substrate substantially as claimed, and claim 7 of the ‘261 patent claims that first imprinting features are present on the first template and second imprinting features are present on the second template and the structures are brought and moved together in a manner substantially as set forth in the instant claim and pressed as claimed to fill the resist into the imprinting features. It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the limitations set forth in the claims of the ‘261 patent in order to operate a fully functional imprinting system in an art recognized suitable manner.
As to claims 18 and 20, claims 3-6 of the ‘261 patent claim a vacuum chuck. Selecting of the shape of the vacuum chuck (e.g. annular) is understood to be a routine expedient and the claims of the ‘261 patent are understood to render the limitation prima facie obvious absent further specificity. Further, as to claim 20, the claimed vacuum chuck is understood to be capable of gripping the edge of the substrate. Claim 2 of the ‘261 patent claims an unloading system configured to unload the substrate with imprinted features on both sides. The system set forth in the claims of the ‘261 patent is capable of processing substrates as claimed. Further, utilizing a roller as part of the claimed unloading system is understood to be prima facie obvious in view of the teaching of the ‘261 claims.
As to claim 19, claim 17 of the ‘261 patent claims first and second squeegee rolls configured as claimed.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 17 of U.S. Patent No. US 11,498,261, as applied to claims 16-20 above, and further in view of Hennessey et al. (US 2004/0150135). Note: this is an alternative rejection of claim 18.
As to claim 18, the combination teaches the system set forth above. More narrowly, the claims of the ‘261 patent do not explicitly claim the pressing includes press domes as claimed and making a correction for alignment. However, Hennessey et al. teach an analogous method that includes utilizing press domes to press templates for imprinting (paragraph [0071]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art to have combined the teaching of claim 1 of the ‘261 patent and Hennessey et al. and to have pressed with first and second press domes as claimed in the system of claim 1 of the ‘261 patent, as suggested by Hennessey et al., for the purpose, as suggested by Hennessey et al. of pressing in a manner that also removes air.
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.
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 11, 14-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (US 2015/0115495) in view of Mehrabi et al. (US 2004/0130057).
Regarding claim 11, Sakamoto et al. teach a double-sided imprinting system comprising drawing a first web along first rollers and drawing a second web along second rollers with a moving system until a first template of the first web and a second template of the second web are brought together into an imprinting zone (Figure 14 (33B) (34B) (41B) (42B) (61B) (62B) (43B) (44B) (63B) (64B); Figure 16; paragraphs [0143]-[0167]); dispensing a first resist on a first side of a substrate and a second resist on a second side of the substrate (Figure 14 (31) (32); Figure 15 (11) (15) (16)); feeding the substrate into the imprinting zone between the first template and the second template with a loading system (Figures 14 and 16); pressing the first template and the second template onto the substrate, such that the first resist fills into a first imprinting feature of the first template on the first side of the substrate and the second resist fills into a second imprinting feature of the second template on the second side of the substrate (Figures 14, 16 and 17); curing the first resist and the second resist with a light source, such that the cured first resist has a first imprinted feature corresponding to the first imprinting feature on the first side of the substrate and the cured second resist has a second imprinted feature corresponding to the second imprinting feature on the second side of the substrate (Figure 14 (35), Figures 16 and 17; paragraphs [0045], [0046] and [0053]); and unloading the substrate with the first imprinted feature on the first side and the imprinted feature on the second side (Figures 14 and 18).
Sakamoto et al. do not explicitly teach an alignment system configured to align reference marks for the first template and the second template. However, Mehrabi et al. disclose an analogous system wherein it is taught and suggested to align reference marks for the first template and the second template (Figures 15-17 and 24; paragraphs [0189] and [0190]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Sakamoto et al. and Mehrabi et al. and to have utilized and alignment system to align reference marks for the first and second template of Sakamoto et al., as suggested by Mehrabi et al., for the purpose, as suggested by Mehrabi et al., of achieving desired registration of the imprinting features on both surfaces of the substrate.
As to claims 14 and 20, Sakamoto et al. disclose a flexible substrate (Figures 14 and 16; paragraphs [0042]-[0045]), that is capable of being drawn from a roll of blank substrates as well as additional feed rollers (paragraphs [0075]), protection sheet rolls (paragraphs [0061], [0063]), and wind-up rollers (paragraph [0066] and [0103]) which provide rollers having the same structure and capability as claimed and wherein the system is also capable of holding an edge of the substrate (paragraphs [0044], [0067], [0101]; e.g. during cutting; also Figure 16).
As to claim 15, the unloading system of Sakamoto et al. is configured to pull the webs from the rollers as claimed to separate the templates from the substrate ( Figure 14 (33B) (34B) (41B) (42B) (61B) (62B) (43B) (44B) (63B) (64B); Figure 16; paragraphs [0143]-[0167]; endless bands).
Regarding claim 16, Sakamoto et al. teach a double-sided imprinting system comprising drawing a first web along a first roller and a second roller, the first web comprising a first template having a first imprinting feature and drawing a second web along a third roller and a fourth roller, the second web comprising a second template having a second imprinting feature, the first roller and the third roller being positioned opposite to each other and defining a nip (Figure 14 (33B) (34B) (41B) (42B) (61B) (62B) (43B) (44B) (63B) (64B); Figure 16; paragraphs [0143]-[0167])); dispensing a first resist on one of a first side of a substrate and the first template and dispensing a second resist on one of a second side of the substrate and the second template (Figure 14 (31) (32); Figure 15 (11) (15) (16)); simultaneously drawing the first template and the second template into the nip and feeding the substrate into the nip with the first imprinting feature facing the first side of the substrate and the second imprinting feature facing the second side of the substrate with a moving system, such that the first resist is pressed by the first roller into the first imprinting feature on the first side of the substrate and the second resist is pressed by the third roller into the second imprinting feature on the second side of the substrate (Figures 14, 16 and 17); curing the first resist and the second resist, such that the cured first resist has a first imprinted feature corresponding to the first imprinting feature on the first side of the substrate and the cured second resist has a second imprinted feature corresponding to the second imprinting feature on the second side of the substrate (Figure 14 (35), Figures 16 and 17); and unloading the substrate with the first imprinted feature on the first side and the second imprinted feature on the second side (Figures 14 and 18).
Sakamoto et al. do not explicitly teach a locating system to locate and align reference marks for the first template and the second template of the webs. However, Mehrabi et al. disclose an analogous system wherein it is taught and suggested to locate and align reference marks for the first template and the second template (Figures 15-17 and 24; paragraphs [0189] and [0190]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Sakamoto et al. and Mehrabi et al. and to have utilized a locating system to locate and align reference marks for the first and second template of Sakamoto et al., as suggested by Mehrabi et al., for the purpose, as suggested by Mehrabi et al., of achieving desired registration of the imprinting features on both surfaces of the substrate.
As to claim 17, Sakamoto et al. teach that one of the first rollers and one of the second rollers are opposite each other to form a nip (Figure 14 (41B) and (43B); (42B) and (44B)). The moving system of Sakamoto et al. is configured to feed and pull the webs as claimed to separate the templates from the substrate ( Figure 14 (33B) (34B) (41B) (42B) (61B) (62B) (43B) (44B) (63B) (64B); Figure 16; paragraphs [0143]-[0167]; endless bands – moving in reverse when they circle back around) and is configured to feed the substrate (11) into and out of the nip as claimed (Figure 14).
Claims 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (US 2015/0115495) in view of Mehrabi et al. (US 2004/0130057), as applied to claims 11, 14-17 and 20 above, and further in view of Hennessey et al. (US 2004/0150135).
As to claims 12 and 18, the combination teaches the system set forth above. Sakamoto et al. do not teach the pressing includes utilizing first and second press domes as claimed and making a correction for alignment. However, Hennessey et al. teach an analogous system that includes utilizing press domes to press templates for imprinting (paragraph [0071]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art to have combined the teaching of Sakamoto et al. and Hennessey et al. and to have pressed with first and second press domes as claimed in the system of Sakamoto et al., as suggested by Hennessey et al., for the purpose, as suggested by Hennessey et al. of pressing in a manner that removes air. In the combination first and second press domes are utilized as claimed to produce the double-sided imprint of Sakamoto et al. Further, in combination, one having ordinary skill in the art would have made any needed adjustment to the alignment of the templates in the method of Sakamoto et al., as suggested by Mehrabi et al., for the purpose, as suggested by Mehrabi et al. of achieving desired registration of the imprinting features on both surfaces of the substrate
Claims 13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. (US 2015/0115495) in view of Mehrabi et al. (US 2004/0130057), as applied to claims 11, 14-17, and 20 above, and further in view of Hasegawa et al. (US 2012/0301569).
As to claims 13 and 19, the combination teaches the system set forth above. Sakamoto et al. do not teach first and second squeegee rollers are utilized as claimed to press the templates. However, Hasegawa et al. teach an analogous system wherein first and second squeegee rollers are utilized as claimed to press the templates (Figure 7 (5A) (5B)).
Therefore it would have been prima facie obvious to one having ordinary skill in the art to have combined the teaching of Sakamoto et al. and Hasegawa et al. and to have pressed with first and second squeegee rollers as claimed in the system of Sakamoto et al., as suggested by Hasegawa et al., for the purpose, as suggested by Hasegawa et al. of pressing in a manner that produces an imprinting feature in the resist that corresponds well with the imprinting feature of the template.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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, Christina Johnson can be reached at 571-272-1176. 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.
/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
Prosecution Insights