DETAILED ACTION
Response to Amendment
The amendment filed on 29 June 2026 is acknowledged.
Election/Restrictions
The election without traverse of Group I in the reply filed on 29 June 2026 is acknowledged, thereby leaving claims 10-11 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
It is noted that the present application has numerous foreign filings with claims corresponding at least in part to those elected for prosecution herein. Applicant is reminded of the duty under 37 CFR 1.56(a) to disclose information material to patentability, such as (a) Office Actions and prior art related to the claimed invention which have been cited during prosecution of related filings, (b) prior foreign or domestic filings by Applicant(s) which are related to the claimed or disclosed invention and which constitute prior art, (c) related brochures, dissertations, or other research publications, including that which has been authored by one or more inventors listed under this application or by other individuals under which or along which one or more inventors may have been working, and (d) any other relevant prior art Applicant may be aware of, including since the filing of any previous information disclosure statement (IDS).
Drawings/Specification
The drawings are objected to under 37 CFR 1.83(a), in particular since they must show every feature of the invention specified in the claims, whereby in this instance, the claim 1-9 and 12-17 stamp is either not shown or is not clearly identified under corresponding description of any of the current drawings. Appropriate correction is required, either to the drawings or the specification as relevant, without adding new matter.
It is noted that if any corrected drawing sheets, if submitted, must be in compliance with 37 CFR 1.121(d). Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If changes are not accepted, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 12-17 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter not described in the specification so as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. In particular:
The specification as filed contains recitations that “the convexity is formed so as to control adhesion with a micro-component” (spec. at 30:23-31:1) and that “adhesion with the micro-component can be controlled by pressure between the convexities of the stamp and the micro-component” (35:4-6). However, the new claim 12-17 adhering differs in scope from the above passages and is in turn considered new matter as follows:
The disclosed convexity formed “to control adhesion” does not equate to the convexity (or pattern) adhering or adapted/configured to adhere to the micro-component (as in new claims 12-17).
The disclosed “adhesion with the micro-component” is not stated or implied as the stamp’s pattern or convexities, specifically, adhering to the micro-component (as in claims 12-17).
The disclosed convexity formation to control adhesion does not necessarily speak to adhesion of the pattern as a whole (as in claims 12-14).
The disclosure does not clarify how to distinguish claim recitations of “adapted to adhere” vs. “configured to adhere” (as in claims 12, 13, 15, and 16).
The disclosure does not specify or imply adhering at a specific period of time “when picking up the micro-component” (as in claims 12, 13, 15, and 16).
Absent persuasive argument contesting these issues, appropriate correction by amendment is required.
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 1-9 and 12-17 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:
Since antecedent basis is not clearly conveyed, it is unclear whether the claim 1 recitation of “formed on a substrate” refers back to the previously recited resin-made molding component, or to the previously recited stamp as a whole.
Further at line 1 of claim 1, it is unclear whether “formed on a substrate” describes how the referenced component is manufactured (i.e. via forming on a substrate), or whether this describes a condition of said component (i.e. formed/located on the substrate). In either instance, it is additionally unclear whether the substrate in fact constitutes an actual structural component of the statutory stamp being claimed or may be construed more broadly as non-limiting component by/on which the stamp is formed (for the former above scenario) and/or with which the stamp is merely configured for use (for the latter above scenario). If the former scenario is intended, then the claim should be corrected for example as: “A stamp comprising: a resin-made molding component; and a substrate on which the resin-made molding component is formed…”. Absent such correction (if intended), either of the above interpretations will be applicable.
The difference in number between the claim 5-7 convexity/concavity (singular) and the claim 4 convexities/concavities (plural) is confusing. It is unclear whether claims 5-7 in fact describe only a single respective convexity/concavity of those recited in claim 4 (and if so, then exactly which convexity/concavity), or whether these are intended instead to refer back to the plural convexities/concavities. In either instance, a clarifying amendment should be made (e.g. referring back to “a respective one of the convexities” and “a respective one of the concavities” for the former scenario, or referring to “the convexities” and “the concavities” for the latter scenario).
The claim 5-6 recitation of “a minimum dimension of a width of the” convexity/concavity is confusing, in particular since it is unclear whether the recited “minimum dimension” describes the entirety of the width, describes only a portion of the width (i.e. whereby the width as a whole may be greater than the claimed range), or is intended to describe the former of these scenarios but may be construed more broadly as describing the latter due to how this recitation is presently made.
It is unclear how to construe the wherein clause of claim 9, as the current language is confusing. In particular, it is unclear how to construe “a maximum value of a height of the side face relative to the surface provided with the pattern”, let alone its claimed relationship with “a minimum value thereof”. It is further unclear, if the recited value(s) pertain to a ratio of heights of the side face to the surface, why such value would have a unit of 1 “µm” as opposed to being unitless. It is additionally unclear exactly what constitutes a “maximum” and “minimum” of such value(s).
The claim 12, 13, 15, and 16 reference to a period of time “when picking up the micro-component” lacks antecedent basis, in particular since no such period of time is recited previously.
Absent persuasive argument contesting these issues, appropriate correction by amendment is required.
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.
Rejection 1
Claims 1-9 and 12-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Menard et al. (US 9,412,727).
As to claim 1, Menard teaches a stamp (e.g. fig. 5) comprising a resin-made molding component 100/105 formed on a substrate (print tool head 501), the resin-made molding component comprising a surface provided with a pattern (of microtips/relief features 111), a side face (i.e. sides of posts 105) extending from the pattern surface to the substrate 501, and a circumferential portion (connected to tool head/substrate 501 in fig. 5) extending from the side face toward an external edge of the substrate 501. Note that in addition/alternative to Menard’s fig. 5 embodiment construed as such, the fig. 3E embodiment also anticipates claim 1 in that a sample holder (i.e. substrate) mounts post 105 provided with a backing layer as depicted in figs. 1G-1H, whereby this backing layer may additionally/alternatively be construed as the claimed circumferential portion. Note also that as set forth under 35 U.S.C. 112(b) indefiniteness issues (a-b) above, claim 1 does not presently specify the recited substrate as an actual component of the statutory stamp being claimed, which substrate may in turn be fairly construed as a non-limiting component with which the stamp must merely be capable of interacting in the manner claimed; nonetheless, the recited substrate is disclosed in each of Menard’s fig. 5 and 3E embodiments as set forth above.
While the substrate is again not presently recited in a manner which further limits the statutory stamp being claimed, the claim 2 configuration is disclosed for each of Menard’s above-cited fig. 5 and 3E embodiments (note that in fig. 5, component 100 only contacts a lowermost surface as opposed to left- and right-facing external edge(s) of substrate/component 501, with similar contact believed to be provided also for the fig. 3E substrate/holder as well).
Menard further teaches the claim 3 curing (11:22-24, fig. 1H, etc.), the claim 4 convexities (as microtips/relief features 111) and concavities (as surface regions between microtips 111, a plurality of which may be construed as existing on the surface of each independent post 105 (e.g. for each pair of microtips 111) and/or across multiple of the posts 105 (e.g. whereby each post comprises a respective concavity), a minimum width dimension falling into the claim 5 range (note the Table S2 tip radius, and see also 19:62 as relevant), a minimum width dimension falling into the claim 6 range (note that the presently claimed “minimum” dimension may be construed broadly as met by any partial distance that exists between microtips 111 regardless of what total distance actually exists therebetween, and/or that with a cumulative exemplary stamp width of 100 µm (18:44-45) a concavity dimension would necessarily fall into the claimed range), a depth falling into the claim 7 range (see at least 19:62), and a height falling into the claim 8 range (note that Menard’s 19:62 concavity depth (corresponding to tip height) necessitates a side face height falling into the claimed range), and is believed to disclose the claim 9 difference as this is best understood in view of 35 U.S.C. 112(b) indefiniteness issue (e) set forth above. Further, the claim 12-17 adhering pertains to an intended use which neither distinguishes structurally over Menard, nor over how Menard’s stamp is configured for use (see Menard’s printing/transferring set forth in at least the abstract thereof, in addition for example to figs. 1A-F, 2A-C, 2G, etc.).
Rejections 2-10
It is noted that while not outlined herein for the sake of brevity, a rejection is also applicable over a number of additional references of record or hereby added to the record which likewise anticipate one or more of the pending claims. For example:
JP 2019212862 is believed to anticipate at least claim 1 due to the structure formed by the fig. 1-2 imprinting which may be construed as the claimed stamp, in particular with a pattern formed in a surface of imprint material 8 by imprinting pattern portion 3 of mold 1, with a side face extending downward along edge part 12 of mold portion 2 toward substrate 4, and with a circumferential portion disposed between a lowermost area of mold portion 2 and substrate 4 in fig. 2.
US 2003/0047822 is believed to anticipate at least claim 1 due to the fig. 14 mold 29 with pattern surface 31, side face 32, and circumferential portion 33/34. A substrate is not presently required by claim 1 as set forth above, but may be construed as bottom 35 of the fig. 14 mold.
WO 2017/130888 is believed to anticipate at least claim 1 due to the fig. 1(a-b) resin layer/stamp 24 having a pattern surface 26 over section 21h, a side face extending between sections 21h/21l, and a circumferential portion 21l, with a substrate not necessarily required as claimed but disclosed for example as underlying layer 22 and/or base 23.
US 8,771,933 is believed to anticipate at least claim 1 due to the fig. 1 depiction of a 2-level PDMS stamp having a pattern surface raised above a circumferential portion with a side face extending therebetween.
US 8,506,867 is believed to anticipate at least claim 1 due to the fig. 4 configuration resembling that of Menard as set forth above. See stamp 400 with a pattern surface raised upward from a circumferential portion attached to tool head 500.
US 7,927,976 is believed to anticipate at least claim 1 due to the fig. 2A stamp resembling that of Menard and US 8,506,867 above, but with a substrate 300 extending further laterally outward than circumferential portion/flange 121.
KR 20090098268 (fig. 3f raised pattern surface 540 with respect to circumferential portion 510 over substrate 500), US 7,434,512 (fig. 5A stamp 38 with raised pattern surface from circumferential portions), and US 5,817,242 (fig. 7E composition stamp including pattern surface bounded by portions of layer 714 defining a side face and circumferential portion) likewise anticipate at least claim 1.
These references should be addressed in reply to this Office action via amendment and/or remarks.
Interview Request
Applicant’s Representative is invited to contact the Examiner upon review of the instant Office action so as to discuss the claimed invention, the above prior art rejection and other applicable prior art, and how it is believed that the crux of the claimed and disclosed invention distinguishes over the prior art as a whole, particularly if it is believed that such a discussion will help to advance prosecution.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
Prosecution Insights