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
Claims 15-18 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/4/26.
Applicant’s election without traverse of Group I in the reply filed on 2/4/26 is acknowledged.
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 1 and 5-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moran et al. (US 2011/0100957).
Claims 1 and 5-6: Moran teaches a process for chemically processing a substrate, comprising the steps of: applying a first liquid (325) onto a substrate (Abst.; ¶ 0030) wherein the first liquid forms a coating (Abst.; ¶¶ 0030, 0060) and limiting the depositing (i.e. claimed chemical processing) brought about by the first liquid to a predetermined region by applying a second liquid which displaces the first liquid (Abst; ¶ 0030).
Claim 7: Moran teaches spraying the first (¶ 0065) and second liquids (¶ 0079).
Claims 8-11: Moran teaches that the second liquid overlaps with and fully surrounds the first liquid (see, e.g., Fig. 3B).
Claim 12: Moran teaches that the surface is an optical element (¶ 0032).
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.
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.
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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Moran in light of Tang et al. (US 2005/0225877).
Claim 13: Moran teaches that a suitable substrate is an optical elements, such as a lens (¶¶ 0032, 0057), but fails to discuss a shape or a use. Tang teaches a patterned lens and explains that a suitable shape is spherical (¶ 0073). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected spherical as the shape for the optical element in Moran with the predictable expectation of success.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Moran in light of Kierey et al. (US 2019/0033723).
Claim 14: Moran fails to teach an end use for the optical lens. Kierey teaches the use of an optical lens in a projection exposure apparatus for lithography (Abst.). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have used the lens of Moran in a projection exposure apparatus with the predictable expectation of success.
Allowable Subject Matter
Claims 2-4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Zanetto (US 2011/0049428) teaches a process of applying a first liquid to a pipe and then diluting and/or neutralizing the first liquid with a second liquid to inhibit reactions (¶ 0003). Zanetto, however, fails to teach or suggest that the first liquid is limited to a predetermined region.
Tanaka et al. (US 2002/0008082) teaches a process similar to claim 1 except that, in Tanaka, the second fluid is not a liquid.
None of the prior art on record, taken individually or in combination, fairly teaches or suggests all the limitations of claims 2-4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571) 270-1034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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