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 .
Response to Amendment
Applicant’s amendment to the claims filed August 7, 2026 has been entered. Claims 1, 11, 16, 17 and 19 are currently amended. Claims 1-20 are under examination. Applicant’s amendment has overcome the previous claim objections. As such, the objections have been withdrawn.
Terminal Disclaimer
The terminal disclaimer filed on August 7, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,498,261 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 and 15 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 that is between two adjacent rollers of the first rollers and the second rollers as claimed (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 as claimed. 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.
To ensure the upper and lower imprinting performed to form the convex-concave layers (17) and (18) are positioned properly relative to each other and at a desired location on the glass sheet (11) as suggested by the combination, it is also necessary to ensure molds (33B) and (34B), which correspond with the imprinting surfaces/molds of Mehrabi, are in the proper position. In the combination of the references, the suggestion is to position the alignment system as claimed (e.g. between the rollers (41B) (42B) (43B) and (44B) of Sakamoto) at a position within the imprinting zone of Sakamoto (e.g. between the rollers of Sakamoto) to ensure the molds (33B) and (34B) are aligned at the required and proper location during imprinting. As such, in the combination, each and every limitation set forth in the claim is taught and suggested by the prior art.
As to claim 14, 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).
Claim 12 is 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 and 15 above, and further in view of Hennessey et al. (US 2004/0150135).
As to claim 12, 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
Claim 13 is 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 and 15 above, and further in view of Hasegawa et al. (US 2012/0301569).
As to claim 13, 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.
Allowable Subject Matter
Claims 1-10 and 16-20 are allowed.
Response to Arguments
Applicant’s arguments filed August 7, 2026 have been fully considered.
Applicant’s arguments regarding the rejection of claim 16 in view of the amendment have been fully considered and they are persuasive. There is nothing in the combination that fairly teaches or suggests the corresponding moving system is capable of “retracting the substrate” (i.e. pulling it back out) by reversely drawing the webs as claimed. Starting with the configuration of Figure 14 of Sakamoto, there is nothing that reasonably suggests implementing such a retracting arrangement.
As to the rejection of claim 11, applicant argues Sakamoto teaches their process avoids alignment entirely and that it follows from this that one having ordinary skill in the art would not look to incorporate the alignment system of Mehrabi into the system of Sakamoto. This argument is not persuasive. The examiner submits that the asserted meaning of “no alignment is necessary” in the arguments regarding the statement from paragraph [0175] of Sakamoto goes beyond how one having ordinary skill in the art would have understood it, because it doesn’t fully consider the context within which the statement is made. In the relied upon third embodiment of Sakamoto both the upper and lower surfaces of the glass sheet (11) are simultaneously imprinted (e.g. Figures 18 and 19 show the result). By imprinting the upper and lower surfaces at the same time/simultaneously the alignment that would be required to arrive at this same result using subsequent steps (i.e. as opposed to simultaneously) is avoided. For example, if a layered configuration comprising glass layer (11) and imprinted concavo-convex layer (17) was formed (e.g. as is disclosed in earlier embodiments in Sakamoto) and then, in a subsequent step, another concavo-convex layer (e.g. (18)) were to be applied to the already formed laminate of (11) and (17), this would require a focused alignment effort to ensure that a gross misalignment did not occur. Explaining further, if a previously formed (11) and (17) laminate were to be laminated to a previously formed (11) and (18) laminate by bringing the layers (11) of each structure together to ultimately form a structure similar to what is shown in Figure 18, this would require alignment/proper placement of the laminates upon each other to ensure the locations of (17) and (18) are proper. Alternatively, if the previously formed (11) and (17) laminate were to be turned over and refed through a system to form a layer (18) on the other side, this would require proper alignment to ensure the layer (18) is formed properly on the opposite side of (17). These are additional alignment steps that are not required when the layers are formed at the same time as discussed in paragraph [0175]. As such, the examiner submits there is nothing in the statement in paragraph [0175] that is meant to exclude any and all conceivable alignment during imprinting. In other words, the meaning of the statement is narrower than argued.
Further, to the extent one having ordinary skill in the art may have been conceivably unclear as to the meaning of the statement “no alignment is necessary” or have misunderstood it to mean that alignment is entirely avoided or unnecessary or unhelpful in every sense of the statement, it is submitted that this artisan would have been immediately disavowed of that lack of understanding or misunderstanding when confronted with the teaching of Mehrabi. Upon exposure to the teaching of Mehrabi, one having ordinary skill in the art would have recognized an additional alignment need/option/benefit associated with the third embodiment of Sakamoto (e.g. Figure 14-19). Upon bringing the upper and lower belt molds into position in Sakamoto, the possibility for misalignment also exists and this is demonstrated and taught by Mehrabi. The suggestion to provide an alignment system as claimed comes from Mehrabi.
To ensure the upper and lower imprinting performed to form the convex-concave layers (17) and (18) are positioned properly relative to each other and at a desired location on the glass sheet (11) as suggested by the combination in Sakamoto, it is necessary to ensure molds (33B) and (34B), which correspond with the imprinting surfaces/molds of Mehrabi, are in the proper position. In the combination of references, the suggestion is to position the alignment system as claimed (e.g. between the rollers (41B) (42B) (43B) and (44B) of Sakamoto) at a position within the imprinting zone of Sakamoto (e.g. between the rollers of Sakamoto) to ensure the molds (33B) and (34B) are aligned at the required and proper location during imprinting. As such, in the combination, each and every limitation set forth in the claim is taught and suggested by the prior art.
It is submitted that claim 11 would need to be further amended to overcome the prima facie case of obviousness.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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