DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Election/Restrictions
Applicant's election without traverse of electing Group I (claims 1-15) in the reply filed on April 10, 2026 is acknowledged.
Claims 16-20 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a canceled invention. Election was made without traverse in the reply filed on January 23, 2020.
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 1-15 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 pre-AIA the applicant regards as the invention.
Regarding Claim 1, the term “predefined” has been held to be indefinite, since applicant’s specification fails to disclose criteria for determining the predetermined parameter. See Seagram and Sons Inc. v. Mazall 84 USPQ 180 (CACD 1950).
Regarding claims 4-6, the term "or" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the term "substantially” is relative term which render the claims indefinite. The term "substantially" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Deshmukh et al. (NPL titled: Nanofabrication using a stencil mask) in view of Boogaart et al. (NPL titled: Silicon-Supported membranes for Improved Large-Area and High-Density Micro/Nanostencil Lithography).
Regarding claim 1, Deshmukh teaches a stencil mask for manufacturing at least one nanoscale device on a substrate (abstract, pages 1631 and 1632, Fig. 2), the stencil mask comprising, a membrane having a top surface and a bottom surface and a thickness as shown in Fig. 2 (pages 1631 and 1632, Fig. 2), a predefined pattern of apertures extending through the membrane, each aperture having a width and a length in the top surface of the membrane, wherein at least the width and/or the length of one of said apertures is 15 - 20 nm for example, each aperture defined by inner sidewalls extending between the top surface and the bottom surface of the membrane as shown in Fig. 2 (pages 1631 and 1632, Fig. 2), and a set of separating nanostructures (silica sphere) on the top surface of the membrane for separating the top surface of the membrane from a top surface of the substrate as shown in Fig. 2 (pages 1631 and 1632, Fig. 2). Deshmukh does not explicitly teach the thickness of the membrane is therebetween of at least 500 nm. However, an analogous art, Boogaart teaches a stencil mask for manufacturing at least one nanoscale device on a substrate, comprising stencil mask with a membrane thickness of 500nm and up for example (Abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the membrane thickness to the membrane in Deshmukh, because Boogaart disclosed the use of membrane with thickness to increase stability and reduce stress-induced membrane deformation (Abstract).
Regarding claim 2, Deshmukh teaches wherein the material composition of the mask is SiN for example (Abstract, page 1631).
Regarding claim 3, Deshmukh in view of Boogaart teach the thickness of the membrane is 500nm for example and the width of the apertures is 15 - 20 nm for example as disclosed above (Boogaart (Abstract), Deshmukh (pages 1631 and 1632, Fig. 2). Therefore, the wherein an aspect ratio between the thickness of the membrane and the width of at least one of the apertures is at least 5.
Regarding claim 4, Deshmukh teaches a membrane as disclosed above. Deshmukh does not explicitly teach the thickness of the membrane is therebetween of at least 500 nm. However, an analogous art, Boogaart teaches a stencil mask for manufacturing at least one nanoscale device on a substrate, comprising stencil mask with a membrane thickness of 500nm and up for example (Abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the membrane thickness to the membrane in Deshmukh, because Boogaart disclosed the use of membrane with thickness to increase stability and reduce stress-induced membrane deformation (Abstract).
Regarding claim 5, Deshmukh teaches wherein the width of the apertures is at least 15 - 20 nm for example (pages 1631 and 1632).
Regarding claim 6, Deshmukh teaches wherein the length of the apertures is at least 40 nm for example (pages 1631 and 1632).
Regarding claim 7, Deshmukh teaches wherein the apertures in the membrane are defined by using a CHF3/O2 plasma (reads on the Clear-Oxidize-Remove-Etch nanofabrication process) (pages 1631). "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
Regarding claim 8, Deshmukh teaches wherein at least one of the inner sidewalls of at least one of the apertures define an angle of between 10 and 170 degrees with the top surface of the membrane as shown in Fig. 2 (Fig. 2).
Regarding claim 9, Deshmukh teaches a membrane as disclosed above. Deshmukh does not explicitly teach wherein at least two of the inner sidewalls of at least one of the apertures are parallel to each other. However, an analogous art, Boogaart teaches a stencil mask for manufacturing at least one nanoscale device on a substrate, comprising wherein at least two of the inner sidewalls of at least one of the apertures are parallel to each other as shown in Figs. 4 and 6 (Figs. 4 and 6, page 1663, 1664). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the aperture geometry to the aperture geometry in Deshmukh, because Boogaart disclosed the use of aperture geometry to result in pattern distortion and blurring (i.e., reduced edge sharpness and limited spatial resolution) of the deposited surface structures (page 1664).
Regarding claim 10, Deshmukh teaches a membrane as disclosed above. Deshmukh does not explicitly teach wherein the inner sidewalls of at least one of the apertures are substantially smooth and scallop free. However, an analogous art, Boogaart teaches a stencil mask for manufacturing at least one nanoscale device on a substrate, comprising wherein the inner sidewalls of at least one of the apertures are substantially smooth and scallop free with polishing as shown in Fig. 4 (Fig. 4, page 1663, 1664). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the aperture geometry to the aperture geometry in Deshmukh, because Boogaart disclosed the use of aperture geometry to result in pattern distortion and blurring (i.e., reduced edge sharpness and limited spatial resolution) of the deposited surface structures (page 1664).
Regarding claim 11, Deshmukh teaches a membrane as disclosed above. Deshmukh does not explicitly teach wherein a surface roughness of at least one of the inner sidewalls of the apertures is below 5 nm . However, an analogous art, Boogaart teaches a stencil mask for manufacturing at least one nanoscale device on a substrate, comprising wherein a surface roughness of at least one of the inner sidewalls of the apertures wherein a surface roughness of at least one of the inner sidewalls of the apertures is below 5 nm or smooth with polishing as shown in Fig. 4 (Fig. 4, page 1663, 1664). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the aperture geometry to the aperture geometry in Deshmukh, because Boogaart disclosed the use of aperture geometry to result in pattern distortion and blurring (i.e., reduced edge sharpness and limited spatial resolution) of the deposited surface structures (page 1664).
Regarding claim 12, Deshmukh teaches wherein the set of separating nanostructures are configured to separate the surface of the membrane a fixed distance from the surface of the substrate as shown in Fig. 2 (Fig. 2).
Regarding claim 13, Deshmukh teaches separating nanostructures as disclosed above. Deshmukh does not explicitly teach wherein the set of separating nanostructures comprise a set of nano-pillars. However, an analogous art, Boogaart teaches a stencil mask for manufacturing at least one nanoscale device on a substrate, comprising wherein the set of separating nanostructures comprise a set of nano-pillars as shown in Fig. 4 (Fig. 4, page 1663, 1664). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the nano-pillars in Deshmukh, because Boogaart disclosed the use of the spacing the membrane deformation and pattern blurring are reduced (page 1664).
Regarding claim 14, Deshmukh teaches wherein the set of separating nanostructures are separated at least 1 µm from any aperture of the membrane as shown in Fig, 2 (Fig. 2, pages 1631 and 1632).
Regarding claim 15, Deshmukh teaches wherein the material composition of the separating nanostructures is silica for example as shown in Fig. 2 (Fig. 2, page 1631).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 5712721295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAI Y ZHANG/ Primary Examiner, Art Unit 1717
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