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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7, 9 and 10 of U.S. Patent No. 12,292,682 in view of Chou [US 6,482,742] and Tan et al. [US 2014/0239529].
Chou teaches the substrate being flexible and at least partially conforming to the structural stamp, and wherein a thickness of the substrate is in a range of 1 μm and 2000 μm (see col. 3 lines 34-38).
It would have been obvious to one of ordinary skill in the art to use the substrate as taught by Chou having the claimed properties of the application in the Patent claims to a method and device in order to ensure molding resolution, alignment, and pattern material uniformity.
Tan teaches the structural stamp is fixed on a carrier (mold includes providing or having a mold with a mold surface with nanostructures, see [0040]), a flexibility of the structural stamp (2, 2′) being controlled by a selection of the carrier, the carrier being one or more glass carrier substrates with different thicknesses (quartz, a glass; a mold thickness of between about 0.1 mm to about 25 mm, see [0040]).
It would have been obvious to one of ordinary skill in the art to use the mold carrier as taught by Tan having the claimed properties of the application in the Patent claims to a method and device in order to ensure molding resolution, alignment, and pattern material uniformity.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The “punch receiving device” in claim 15 was not described in the original filed application. See the interpretation of the claim language in light of originally filed specification below.
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 3, 7, 9, and 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3, 7, and 9 recite the limitation “embossing composition”. There is insufficient antecedent basis for this limitation in the claim. A composition is not necessarily a compound. For the purposes of examining, the composition is understood to be the compound.
The term “a punch receiving device” in claim 15 is used by the claim to mean “a stamp receiving device,” while the accepted meaning “a punch receiving device” is unknown. The term is indefinite because the specification does not clearly redefine the term. This appears to be mistranslation.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 2, 4, 5, and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. [US 2014/0239529] in view of Chou [US 6,482,742].
For claim 1, Tan teaches a method for producing micro- and/or nanostructures (see Figs. 3A-3D and [0089]-[0102]), comprising:
fixing a substrate on a substrate receiving device, the substrate having an embossing compound thereon (substrate 320 with 350 thereon held against chuck 230 by pumping through the vacuum grooves);
contacting a structural stamp with the embossing compound after the fixing of the substrate (contact by mold 300, see Fig. 3B);
at least partially removing the fixing of the substrate after the contacting of the structural stamp (pumping back side of the substrate through the vacuum grooves is removed to make the substrate releasable from the chuck, see [0094] and Fig. 3C);
hardening the embossing compound after the at least partially removing of the fixing (a UV exposure through section 110 onto quartz mold 300, see [0097] and [0102]); and
demolding the embossing compound from the structural stamp after the hardening of the embossing compound (the substrate 320 is separated from the mold 300),
wherein the structural stamp includes a hard UV-transparent material (a UV exposure through section 110 onto quartz mold 300, see [0097] and [0102]).
Tan teaches adhering the substrate to the structural stamp after the at least partial cancelling of the fixing (see [0094]) but fails to explicitly teach the substrate is flexible and adaptable to be at least partially conformal with the structural stamp, a thickness of the substrate lies between 1 µm and 2000 µm.
Chou (incorporated by reference, see [0097] of Tan) teaches the substrate is flexible and adaptable to be at least partially conformal with the structural stamp after the at least partial cancelling of the fixing, a thickness of the substrate lies between 1 µm and 2000 µm (see col. 3 lines 34-38).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use substrate as taught by Chou in the pattern forming method as taught by Tan in order to ensure molding resolution, alignment, and pattern material uniformity.
For claim 14, Tan teaches an apparatus (see Figs. 3A-3D and [0089]-[0102]) for producing micro- and/or nanostructures, comprising:
a structural stamp (300) comprising a hard UV-transparent material (a UV exposure through section 110 onto quartz mold 300, see [0097] and [0102]); and
a substrate receiving device on which a substrate having an embossing compound thereon is fixed (substrate 320 with material 350 thereon held against chuck 230 by pumping through the vacuum grooves),
the substrate being at least partially removed from the substrate receiving device after the structural stamp is contacted with the embossing compound while the substrate is fixed on the substrate receiving device, wherein the embossing compound is hardened after the fixed substrate is at least partially removed from the substrate receiving device, wherein the hardened embossing compound is demolded from the structural stamp (see the process in Figs. 3A-3D that the apparatus can functionally carry out).
Tan teaches adhering the substrate to the structural stamp after the at least partial cancelling of the fixing (see [0094]) but fails to explicitly teach the substrate being flexible and at least partially conforming to the structural stamp after the substrate is at least partially removed from the substrate receiving device, and wherein a thickness of the substrate is in a range of 1 μm and 2000 μm.
Chou (incorporated by reference, see [0097] of Tan) teaches the substrate being flexible and at least partially conforming to the structural stamp, and wherein a thickness of the substrate is in a range of 1 μm and 2000 μm (see col. 3 lines 34-38).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the substrate thickness as taught by Chou in the pattern forming method as taught by Tan in order to ensure molding resolution, alignment, and pattern material uniformity.
For claim 2, Tan teaches after the at least partially removing of the fixing, the substrate is at least partially detached from the substrate receiving device by a relative movement of the substrate receiving device and the substrate (chuck 230 may be moved away from contacting the back side of the substrate, see Fig. 3C) a relative movement of the substrate receiving device and a stamp receiving device, capillary forces, or any combination thereof.
For claim 4, Tan teaches the fixing of the substrate is performed by at least one controllable fixing element arranged in the substrate receiving device through vacuum and/or negative pressure (substrate 300 for imprinting is held on chuck 230 by vacuum pumping through the vacuum grooves, see [0084]); the at least partially removing of the fixing is performed by the at least one controllable fixing element by switching off the negative pressure (pumping back side of the substrate through the vacuum grooves is removed to make the substrate releasable from the chuck, see [0094]) and/or by generating an overpressure; or a combination thereof.
For claim 5, Tan teaches the fixing of the substrate and the at least partially removing of the fixing is controlled by controlling the at least one controllable fixing element so that structuring of the embossing compound and/or release or detachment of the substrate takes place at a specific point in time after the contacting of the structural stamp with the embossing compound (fixing controlled to occur during contact with the mold and fixing is released after contact, see Figs. 3B and 3C and [0094], controller 520 controls operation, see [0080]).
For claim 10, Tan teaches the structural stamp has an embossing structure and/or is coated with an embossing structure (a central patterned region 310 of mold 300, see Fig. 1).
For claim 11, Tan teaches the structural stamp is fixed on a carrier (mold includes providing or having a mold with a mold surface with nanostructures, see [0040]).
For claim 12, Tan teaches a flexibility of the structural stamp (2, 2′) being controlled by a selection of the carrier, the carrier being one or more glass carrier substrates with different thicknesses (quartz, a glass; a mold thickness of between about 0.1 mm to about 25 mm, see [0040]).
For claim 13, Tan teaches the structural stamp is made of glass, quartz, or silicon dioxide (quartz, a glass, see [0040]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Tan in view of Chou and Choi et al. [US 2005/0061773].
For claim 15, Tan teaches a device (see Figs. 3A-3D and [0089]-[0102]) for producing micro- and/or nanostructures, comprising:
a structural stamp (300) comprising a hard UV-transparent material (a UV exposure through section 110 onto quartz mold 300, see [0097] and [0102]);
a substrate receiving device on which a substrate having an embossing compound thereon is fixed (substrate 320 with material 350 thereon held against chuck 230 by pumping through the vacuum grooves), the substrate being at least partially removed from the substrate receiving device after the structural stamp is contacted with the embossing compound while the substrate is fixed on the substrate receiving device, the substrate receiving device comprising at least one controllable fixing device (vacuum, see [0089] and [0094]) arranged therein (see Figs. 3A-3D),
one or more sensors (gap measurement devices, see [0057]-[0059], [0087]-[0090]) configured to measure pressure, distances, temperatures, or any combination thereof;
one or more actuators configured to adjust a punch receiving device, the substrate receiving device, or a combination thereof (stage assembly 210 can include a Z motion control in order to accomplish desired process of the apparatus, see [0084]); and
a control unit (520, see Fig. 1) configured to control, as a function of a value measured by the at least one sensor, the at least one controllable fixing element, the at least one actuator, or a combination thereof (contact control used to determine contact, see [0089]-[0093]).
Tan teaches adhering the substrate to the structural stamp after the at least partial cancelling of the fixing (see [0094]) but fails to explicitly teach the substrate is flexible and adaptable to be at least partially conformal with the structural stamp.
Chou (incorporated by reference, see [0097] of Tan) teaches the substrate is flexible and adaptable to be at least partially conformal with the structural stamp (see col. 3 lines 34-38).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the substrate as taught by Chou in the pattern forming method as taught by Tan in order to ensure molding resolution, alignment, and pattern material uniformity.
Tan teaches for the case of using very low viscosity moldable material, the press caused by the contact may be sufficient to imprint patterns of the mold into the moldable material (see [0096]).
Tan fails to explicitly teach a removal or reduction of a distance between the structural stamp and the substrate is carried out in such a way that the structural stamp is contacted with the embossing compound without pressure.
Choi teaches a removal or reduction of a distance between the structural stamp and the substrate is carried out in such a way that the structural stamp is contacted with the embossing compound without pressure (mold 28 brought into contact with low viscosity imprinting material 36 on the substrate 31 such that a compressive force is nullified and capillary force patterning occurs, see [0022]-[0029] and [0038]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the patterning movement as taught Choi in the apparatus control as taught by Tan in order to reduce squeeze out and maintain pattern integrity.
Claims 3, 6, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Tan in view of Chou as applied to claim 1 above, and further in view of Choi.
For claims 3, 6, 7, and 9, Tan teaches the structural stamp is designed such that, after the at least partially removing of the fixing, the embossing compound and/or the substrate are conformally adapted to the structural stamp without external pressure, or the substrate is held by the embossing composition after the contacting of the structural stamp and/or the at least partially removing of the fixing (the intermediate moldable material provides adhesion necessary to retain the contact between the mold 300 and the substrate 320, see [0094]), and for the case of using very low viscosity moldable material, the press caused by the contact may be sufficient to imprint patterns of the mold into the moldable material (see [0096]).
Tan fails to explicitly teach the embossing composition is structured by capillary forces without pressure and/or pressing, the structural stamp is designed such that the embossing compound and/or the substrate are conformally adapted to the structural stamp without external pressure by capillary forces, and the substrate is held by capillary forces, wherein a viscosity of the embossing composition is less than 100,000 cP.
Choi teaches the embossing composition is structured by capillary forces without pressure and/or pressing, the structural stamp is designed such that the embossing compound and/or the substrate are conformally adapted to the structural stamp without external pressure by capillary forces, and the substrate is held by capillary forces (pulling form negative imprint force, see [0026]) wherein a viscosity of the embossing composition is less than 100,000 cP (mold 28 brought into contact with low viscosity imprinting material 36 on the substrate 31 such that a compressive force is nullified and capillary force patterning occurs, see [0022]-[0029] and [0038]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the patterning movement as taught Choi in the method of patterning and lifting the substrate during patterning with a low viscosity patterning material as taught by Tan in order to reduce squeeze out and maintain pattern integrity.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tan in view of Chou as applied to claim 1 above, and further in view of in view of Okushima [US 2010/0270705].
For claim 8, Tan fails to teach micro- and/or nanostructures are produced in several layers on top of each other and/or next to each other in a step-and-repeat process.
Okushima teaches micro- and/or nanostructures are produced in several layers on top of each other and/or next to each other in a step-and-repeat process (see [0099]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use step and repeat method as taught by Okushima with the imprinting method as taught by Tan in order to pattern a plurality of dies on a semiconductor substrate and manufacture a semiconductor device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Treiblmayr [US 2015/0224705] teaches a flexible substrate in [0019], and Seki et al. [KR 2016-0056278] teaches a imprint method that lift the substrate.
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/Steven H Whitesell/Primary Examiner, Art Unit 1759
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