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 without traverse of claims 13-17 in the reply filed on 03/12/2026 is acknowledged.
Claims 1-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/12/2026.
Claim Rejections - 35 USC § 102
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.
Claims 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsunoda (JP-2018041826-A - of record).
Regarding claim 13, Tsunoda teaches a template, comprising a template substrate (120); a replication portion provided on the template substrate and having a first pattern (130); and a sacrificial layer provided on the replication portion (112), the sacrificial layer having a second pattern corresponding to the first pattern of the replication portion and having a higher etching rate than that of the replication portion (the etching rate of the sacrificial layer 112 be higher than the etching rate of the resin layer 130) (¶0032-0057).
Regarding claim 14, as applied to claim 13, the limitation “the template is usable in an imprint process by removing the sacrificial layer” is a recitation of intended use of the claimed template. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. MPEP 2114(II). Here, Tsunoda teaches an apparatus which includes all the structural limitations of the claim, specifically the template comprising the sacrificial layer(¶0032-0057). Tsunoda further teaches an imprint mask manufacturing method wherein the sacrificial layer 112 can be removed by a wet etching method or a dry etching method (¶0032-0057).
Regarding claim 15, as applied to claim 14, the limitation “the sacrificial layer is removable by wet etching or dry etching” is a recitation of intended use of the claimed sacrificial layer. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. MPEP 2114(II). Here, Tsunoda teaches an apparatus which includes all the structural limitations of the claim, specifically the template comprising the sacrificial layer (¶0032-0057). Tsunoda further teaches an imprint mask manufacturing method wherein the sacrificial layer 112 can be removed by a wet etching method or a dry etching method (¶0032-0057).
Regarding claim 16, as applied to claim 15, Tsunoda teaches a template wherein a material of the sacrificial layer is a cured resin (the sacrificial layer is made of a resin) (¶0032-0057). Examiner notes that “cured resin” is a recitation of a product-by-process claim limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. MPEP 2113.
Claim Rejections - 35 USC § 103
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.
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.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Tsunoda (JP-2018041826-A - of record).
Regarding claim 17, as applied to claim 13, Tsunoda teaches a template further comprising a substrate (100) provided on the sacrificial layer (¶0032-0057).
The limitation “the substrate is removable from the sacrificial layer before the template is used in an imprint process.” A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. MPEP 2114(II). Here, Tsunoda teaches an apparatus which includes all the structural limitations of the claim, specifically the template comprising the sacrificial layer and the substrate.
Nevertheless, in the alternative, one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify template disclosed in Tsunoda such that the substrate is removable from the sacrificial layer before the template is used in an imprint process as instantly claimed with a reasonable expectation of success, since it has been held that making known elements separable is within the skill of a person of ordinary skill in the art. MPEP 2144.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JaMel M Nelson whose telephone number is (571)272-8174. The examiner can normally be reached 9:00 a.m. to 5:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached on (571) 270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMEL M NELSON/Primary Examiner, Art Unit 1743
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