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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 4-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,179,231. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 of ‘231 teach all of the claimed limitations including a planarization method comprising all the steps of arranging a liquid curable composition onto a solid substrate having unevenness by dropping droplets and allowing the composition to spread; followed by contacting with a mold, curing the composition, and releasing, wherein the composition contains at least a polymerizable compound (see, for example, claim 1).
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.
Claim(s) 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chiba et al US 2017/0285466 in view of Panga et al US 2010/0012622.
Per claims 4 and 8, Chiba teaches a nanoimprint method of producing a circuit board or electronic component [0001], comprising arranging a liquid film made of a first liquid curable composition containing at least a polymerizable compound and dropping droplets of the first liquid curable composition discretely (abstract), allowing the droplets to spread (combine with other droplets) to cover the solid surface (completely, e.g., more than 99%, see Fig. 2C and 2D, [0008], [0012]). Chiba further teaches bringing a mold which has a smooth surface into contact with the liquid curable composition (abstract, [0004], [0137]), curing (abstract, [0139]), and releasing the mold [0139]. Chiba is silent regarding a planarization method. Panga teaches a planarization method which can be performed using a nanoimprint lithography method [0003], [0006], [0040]. Planarization methods include arranging liquid onto a substrate having unevenness and allowing the liquid to become smooth before forming the layer [0007]-[0008]. As such, it would have been obvious to one of ordinary skill in the art to have performed the nanoimprint method of Chiba with a planarization method such as disclosed by Panga with a reasonable expectation for success and predictable results because Shiba teaches that planarization of substrates can be performed with nanoimprint methods.
Per claims 5, Chiba teaches a pattern height of 4nm to 200nm [0138], and the film thickness is between 0.1 nm to 10,000 nm [0132], which overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to one of ordinary skill in the art to have selected a value within the disclosed workable range of the prior art to arrive at the desired result with a reasonable expectation for success. Chiba is silent regarding the claimed volume of the droplets. However, the volume of the droplet would affect both the spread area and the height of the layer (also based on surface tension [0014]) and as such, it would have been obvious to one of ordinary skill in the art to have controlled and optimized the droplet size and volume with a reasonable expectation for success and predictable results to arrive at the claimed range via routine experimentation (see MPEP 2144.05).
Per claim 6, Chiba is silent regarding the differential in height during the flowing. However, Chiba teaches a film thickness of 0.1nm [0132], which would necessitate that the height difference is les than 4nm. Furthermore, as time passes, the height differential during the waiting and flowing would become zero in order to form a flat and even surface. As such, as described above, Chiba teaches forming a smooth and even surface, and therefore it would have been obvious to one of ordinary skill in the art to have allowed for time to pass to form a more even and smooth surface.
Per claim 7, Chiba teaches controlling the ambient temperature [0148]-[0149].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN T. LEONG whose telephone number is (571)270-5352. The examiner can normally be reached M-F 10:00-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHAN T LEONG/Primary Examiner, Art Unit 1718