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
The election with traverse of Group I, claims 20-29 in the reply filed on 12 February 2026, and of Species A1 and B1 via telephone on 17 March 2026 is acknowledged, thereby leaving claims 30-40 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The traversal is on the grounds that a search and examination of the entire application could be made without serious burden, with MPEP § 803 being cited as evidence (Rem. 1 of the 12 February 2026 response). This is not found persuasive, in part due to MPEP Chapter 800 being limited to a discussion of restriction practice as it relates to applications filed under 35 U.S.C. 111(a), not those entering the National Stage under 35 U.S.C. 371 (MPEP § 801). Further, a serious burden, even if required for the restriction in this instance to be proper, would exist for one or more of the following reasons: the inventions/species have acquired a separate status in the art in view of their different classification or their recognized divergent subject matter; the inventions/species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries); the prior art applicable to one invention/species may not be applicable to another invention/species; and/or the inventions/species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 112.
Although the requirement is still deemed proper and in turn made final at this time, it is noted that the non-elected invention and species will be eligible for rejoinder if amended to include allowable subject matter and to address any 35 U.S.C. 112 or other issues.
Claim Objections
Claim 27 is objected to because of the following informalities:
The term “and” should be added after the comma at line 2 of claim 27.
Absent persuasive argument contesting this issue, appropriate correction by amendment is required.
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.
Claims 20-29 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In particular:
The claim 20 line 4 recitation of “recessed grooves serving as a plurality of riblets after transfer to the resin” is confusing. It is unclear how such grooves themselves could serve as riblets. It is further unclear, since antecedent basis is not clearly conveyed, exactly what is being referenced as transferred to the resin.
The claim 21 line 4-5 recitations of “the one surface side” and “the other surface side” lack antecedent basis, in particular since no such surface sides are recited previously. As a result, it is unclear exactly how these recitations, and in turn the recited gradual decrease, should be construed.
The claim 22 and claim 25 line 4 recitations of “the recessed grooves adjacent to each other” lack antecedent basis, in particular since no such grooves “adjacent to each other” are recited previously.
Since antecedent basis is not clearly conveyed, it is unclear in claim 24 exactly what “the entire region” is a region of, and exactly what the “depth direction” is of.
The claim 27 wherein clause recites a hypothetical condition beginning with the term “when” which leaves it unclear whether the subsequently recited softness to deform is in fact required for conditions in which the recited target surface is not curved. As a result, the claim as a whole could be construed as not further limiting for such an instance, which is both confusing and indefinite.
Absent persuasive argument contesting these issues, appropriate correction by amendment is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 27 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for being inclusive of a scenario which fails to further limit the subject matter of the claim upon which it depends, in particular whereby the recited target surface is not a curved surface.
Absent persuasive argument contesting this issue, appropriate correction by amendment is required.
Claim Rejections - 35 USC § 102/103
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.
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 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.
Rejection 1
Claims 20-22, 25, and 27-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirschel et al. (US 4,907,765).
Claims 23-24 and 26 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hirschel as otherwise applicable to the above-cited claims.
As to claim 20, Hirschel teaches a respective mold described for example at 10:29 and 11:51-53 for forming what may be construed as ridges/riblets R and valleys/grooves G as depicted for example in figs. 1a-e, with at least the fig. 1e embodiment depicting such ridges R and grooves G such that the respective mold would comprise mold projecting portions (for forming grooves G5, or in particular the deeper groves G6) spaced wider than a spacing between intervening mold grooves (for forming the numerous ridges R6 between each fig. 1e groove G). This respective mold could be construed as being constituted of the claimed member (e.g. comprising a body thereof) having one, patterned surface which comprises the above-cited respective mold projecting portions and mold grooves. It is noted that claim 20 contains recitations of an intended use or manner of operating the claimed mold (i.e. imprinting via pattern transfer to a resin) and to an intended manner by which the claimed mold is manufactured (i.e. by the provision of intervals which are predetermined), both of which are disclosed by Hirschel as set forth at least under the above citations, and neither of which would otherwise distinguish structurally over Hirschel for the reasons set forth respectively under MPEP § 2111.02(II) or § 2114 (regarding intended use and an intended manner of operation) and under § 2113 (regarding product-by-process limitations).
As to claim 21, Hirschel’s fig. 1e ridges R6 comprise a triangular (or curved triangular) shape that would correspond to recessed mold grooves having the same claimed corresponding shape. Hirschel further teaches the claim 22 and 25 disposition (note grooves G5-G6 disposed at positions away from each other at positions between multiples of adjacent ridges R6), and is believed to provide a disposition corresponding to that of claims 28-29.
It is believed that the projecting mold portions for forming Hirschel’s fig. 1e grooves G could be broadly construed as comprising the claims 23 and 26 columnar shape. In the alternative that it is ultimately determined that the depicted shape is more rounded (for grooves G5) or triangular (for grooves G6) than columnar, or otherwise that these may not be fairly construed in this manner, then it is noted that Hirschel provides various other groove configurations G1-G4 (and in turn, other mold projection shapes) as represented by figs. 1a-d, one or more of which might more clearly correspond to a columnar shape (e.g. for fig. 1b grooves G2), and all of which collectively would provide sufficient motivation for one skilled in the art to reach the claimed shape through routine optimization of properties such as drag, weight, and/or patternability (see the entirety of Hirschel’s disclosure as relevant, in addition to MPEP § 2144.05(II) regarding routine optimization in this regard). It would have been obvious for one of ordinary skill in the art to combine one or more of Hirschel’s above-cited fig. 1a-e embodiments together (in particular fig. 1b with fig. 1e), either to arrive at the claimed columnar shape by replacing mold projections for forming the fig. 1e grooves G5 or G6 with mold projections for forming fig. 1b grooves G2, in particular as providing an art-recognized suitable or alternative groove shape, or as otherwise providing motivation to reach this groove shape via routine optimization. See also MPEP § 2144.04(IV)(A) regarding changes in shape (as pertaining to mold projections for forming grooves G5 or G6) being generally obvious absent unexpected results. The claimed columnar shape is in turn considered obvious over Hirschel if not anticipated thereby.
The claim 24 shape and cross-section are believed to be met or obvious over Hirschel as outlined for the same or similar reasons for the claim 23 columnar shape under the rejection of this claim above, but for Hirschel’s respective mold grooves.
Hirschel is not believed to disclose the claim 27 curved surface, and is in turn not believed to be limited by the claimed softness and deformability.
Rejection 2
Claims 20-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cabrera et al. (US 8,833,256).
As to claim 20, Cabrera teaches a pad 34 (see in particular fig. 24, in addition to other applicable configurations in figs. 11, 16-18, 20-22, etc.) which corresponds to the claimed mold structurally in that the pad is constituted of a member having a patterned surface on which recessed grooves (between protrusions 134) and projecting portions (as larger protrusions 130 and/or 124) are disposed, the projecting portions provided with an interval therebetween which is wider than an interval between the grooves. Notably, despite potential differences with respect to how the claimed mold is intended for use/operation (e.g. for imprinting via transfer to a resin), these differences do not distinguish structurally over Cabrera’s pad, which in turn anticipates what is presently claimed (see MPEP § 2111.02(II) or § 2114 regarding intended use and an intended manner of operation not differentiating from the prior art). It is noted also that while the claimed intervals being predetermined pertains more to an intended manner by which the claimed mold is manufactured as opposed to a structural difference (see MPEP § 2113 regarding product-by-process limitations, as relevant), the above-cited intervals of Cabrera may be fairly construed as predetermined in the manner claimed.
The claim 21, 23-24, and 26 shapes and cross-sections are either depicted for Cabrera’s above-cited pad, or the pad is believed to be capable of providing these shapes and configurations under further deformation such as that depicted for example in figs. 6, 24, etc. The claim 22, 25, and 28-29 disposition(s) are additionally disclosed (see at least the above citations), and the claim 27 softness is believed to exist and/or to otherwise not distinguish structurally over Cabrera’s deformable pad (see again the above deforming).
Rejection 3
Claims 20 and 24-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ter Muelen et al. (US 2018/0031966).
As to claim 20, Ter Muelen teaches a fig. 8 mold/stamp 100 constituted of a member having a patterned surface on which recessed grooves (between textured pattern 802) are formed and from which projections 801 are disposed with the claimed wider interval than the grooves.
Ter Muelen’s above-cited stamp further comprises the claim 24-26 and 28-29 shape, cross-section, and disposition as represented by at least the fig. 8 embodiment, in addition to the claim 27 softness as represented for example by figs. 1-5a, etc.
Related Prior Art
See at least the abstract and figures of the additional prior art hereby made of record, which additional prior art is considered pertinent to Applicant’s disclosure and may be relied upon in subsequent rejections against claimed subject matter. Note, for example:
US 11,000,877, which is considered relevant for at least the figs. 7-10 use of a riblet-forming mold;
US 7,854,604, which is considered relevant for at least the fig. 1 mold 1 with grooves within pattern region 13 spaced closer than projections defined by 11, 12, and surrounding portions of region 13;
US 7,690,910, which is considered relevant for at least the fig. 3 mold 11 with grooves of pattern 13 spaced closer than projections 14;
US 6,916,584, which is considered relevant for at least the fig. 20B mold comprising pattern grooves spaced closer than projecting portions defined by pattern areas 401 as a whole;
US 8,361,371, which is considered relevant for at least the fig. 17A depiction of various mold projections spaced wider than intervening grooves; and
US 11,534,943, which is considered relevant for at least the fig. 14 mold 26 with grooves 24 spaced closer than projections 23B.
The manner in which such prior art might apply to the claimed and/or disclosed invention should be considered prior to a formal response being filed to this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Atul P. Khare whose telephone number is (571)270-7608. The examiner can normally be reached Monday-Friday 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A. 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.
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/Atul P. Khare/Primary Examiner, Art Unit 1742
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