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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12297367. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims teach and/or suggest all of the limitations of the instant, independent claims.
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) 1-5, 10-18, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godet USPA_20190318957_A1 in view of Hwang USPA_20070223867_A1.
1. Regarding Claims 1, 2, 10, 11, 17, 20, Godet discloses a method (corresponds to claimed method of instant Claim 10) for forming an optical device (corresponds to claimed device of instant Claims 1 and 16) comprising forming a pattern in a target layer on a first substrate, wherein the pattern comprises a plurality of islands (corresponds to claimed pillars) separated by a plurality of trenches (corresponds to claimed trenches and gaps); forming a fill layer (corresponds to claimed first adhesion-promoting material corresponding to instant Claims 2, 11) on top of the said patterned target layer and then repeating this step in the form of a stack (Claim 1). The second fill layer formed will therefore correspond to the claimed first encapsulation layer and claimed “cap portions”.
2. However, Godet does not disclose the limitation of having differing refractive indexes for the claimed gap-fill portions and cap portions.
3. Hwang discloses an optical device (Title) and further described that in order to avoid decreasing light deficiency, the surface area of the space between two waveguides is filled with a material while the corresponding top portion of the waveguides are filled with a material having a refraction index different from that of the waveguide (paragraph 0116).
4. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the refractive indexes of the corresponding cap and gap portions, of Godet, with differing refractive indexes, as disclosed by Hwang. One of ordinary skill in the art would have been motivated in doing so in order to decrease light deficiency.
5. Regarding Claims 4, 13, Godet does not disclose the claimed aspect ratio, it does disclose that the lower the refractive index of the material used for filling/encapsulation, the lower the aspect ratio of the constituent nanostructures (features patterned) for each optical element. In an embodiment, lower aspect ratios produce thinner optical element layers, as well as faster and cleaner etching. The systems and methods herein result in more efficient fabrication processes in terms of time, cost, and complexities. In another example, where a fill material has a high refractive index, the height of the optical elements, and thus of the optical element layer, increases (paragraph 0039). Thus, the Examiner respectfully submits that it would have been obvious to one of ordinary skill in the art to select an aspect ratio based on end-user product specifications and this can be considered a result-effective variable based on the guidance given above by Godet.
6. Regarding Claims 3, 5, 12, 18, Godet discloses fluorinated polymers (paragraph 0031) for said layer that corresponds to claimed first encapsulation layer and claimed “cap portions”.
7. Regarding Claim 16, Godet in view of Hwang suggests forming a similar arrangement as described above but will be a second arrangement (Godet: Claim 8).
8. Regarding Claims 14 and 15, Godet in view of Hwang suggests using spin-coating to form its fill layer stack (Godet paragraph 0030) followed by a thermal operation (corresponds to claimed baking limitation) (Godet paragraphs 0040-0042).
Claim(s) 6-9 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godet USPA_20190318957_A1 in view of Hwang USPA_20070223867_A1, as applied to claims 1-5, 10-18, 20, and further in view of Balic USPA_20170290958_A1.
9. Regarding Claims 5, 7, 8, Godet in view of Hwang suggests using amorphous fluoropolymers as indicated above, but does not specifically disclose the claimed materials. The remainder of the limitations of instant Claim 16 have been addressed above.
10. Balic discloses forming an inert multilayer that has good optical transparency and is resistant to corrosive substances (paragraph 0006) that can be used in devices (paragraph 0051). Balic specifically discloses depositing a fluorosilane (corresponding to claimed adhesion-promoting material) followed by a fluoroethylene layer (corresponds to claimed amorphous material of first encapsulation layer) (Abstract and Claim 1).
11. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the materials of said two layers, of Godet in view of Hwang, with the materials disclosed by Balic. One of ordinary skill in the art would have been motivated in doing so in order to have an inert material that prevents corrosion.
12. Although the exact silanes and fluoropolymers of instant Claims 6, 9, and 19 are not disclosed, it would be expected for one of ordinary skill in the art to know how to choose any specific silane and fluoropolymer based on end-user specs as is routinely done in the art. Applicants have not indicated what unobvious and novel properties result from the specific use of these fluorosilanes and fluoropolymers.
Claim(s) 4 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godet USPA_20190318957_A1 in view of Hwang USPA_20070223867_A1, as applied to Claims 1-3, 5, 10-12, 14-18, 20 and Ando EP_1416303_A2.
13. Regarding Claims 4 and 13, Godet in view of Hwang does not teach the claimed aspect ratio.
14. Ando discloses a method for manufacturing a functional segment (100) equipped with a group of columnar micro-pillars (104; 204) of organic polymer arranged on a matrix (102; 202) of organic polymer provided on a supporting member (401) in a predetermined pattern, wherein the micro-pillars (104) have an equivalent diameter (B) of 10 nm to 500 pm, a height (H) of 50 nm to 5000 µm and an aspect ratio (H/D) of 4 or more (Abstract, Claim 1, Figures 1 and 15). Ando further discloses that this is because the aspect ratio of over a certain magnitude allows desired designing of a functioning substrate or functional element, leading to a wider variety of applications (paragraph 0012). Also, Ando discloses that its invention is characterized by easy control of the micro pillar group dimensions and aspect ratio. The present invention also provides a group of columnar micro pillars according to the handy and less expensive method of manufacturing a functioning substrate or functional element (paragraph 0008).
15. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the aspect ratio, of Godet in view of Hwang, by using the aforementioned aspect ratio, of Ando. One of ordinary skill in the art would have been motivated in doing so in order for easy control of the aspect ratio and the ability of desired designing of a functioning substrate or functional element, leading to a wider variety of applications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAHSEEN KHAN whose telephone number is (571)270-1140. The examiner can normally be reached Mondays-Saturdays 08:00AM-10:00PM.
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/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 August 20, 2026
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