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 .
Status of the Claims
By amendment filed July 09, 2026, claims 1, 8, 11 and 12 have been amended and claims 5 and 10 have been cancelled. Claims 1 through 4, 6 through 9, 11 and 12 are currently pending.
Response to Arguments
Applicant’s arguments, filed July 09, 2026, with respect to the rejections of the claims have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the previously cited prior art and new prior art necessitated by the amendments to the claims. As will be discussed further within this Office Action, Yamaki (U.S. Patent Publication No. 2011/0098411) teaches a light curable composition comprising polymerizable acrylates wherein cured product had a weight loss of less than 5% wherein heated to above 330 ℃. Therefore, the new limitation that the photo-cured layer had a weight loss after heating at 250 ℃ for 60 of not greater than 5.5% would have been obvious in view of the prior art.
Furthermore, applicant arguments concerning the previously cited prior at references are not persuasive for the following reasons:
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, applicant argues that Shih and Fong are not combinable because Shih was directed to a planarizing process and Fong is directed toward 3D printing. This argument is not persuasive because both Shih and Fong were directed to forming layers using photocurable materials during the formation of an optical element/device having transparency. Furthermore, applicant has not cited any section of either reference which teaches that the combination of teachings would be undesirable.
Applicant’s argument that Fong does not provide sufficient teaching or suggestion for obtaining a photo-cured layer having a carbon content of at least 75% is not persuasive because applicant has not cited any section of Fong which teaches away from this limitation. As was discussed in the previous Office Action, Fong teaches that the amount of carbon content in the cured product affected the transparency and strength of the product and therefore it would have been obvious to have determined optimal carbon content amounts through routine experimentation. Applicant alleges that Example 3 of Fong would have provided a carbon content of 68% but does not disclose how this number was obtained. Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP section 2123.II.
In response to applicant's argument that Young is directed to a polymer solution, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Furthermore, the polymer solution of Young comprised a polymer dissolved in a polymerizable monomer which was cross-linked through exposure to light.
In response to applicant's argument that none of the references teach having added divinylbenzene to increase the glass transition temperature of the cured material, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant’s arguments concerning claims 8 and 11 are not persuasive because applicant has not provided any evidence that a modified bisphenol A di(meth)acrylate of Kodama is an oligomer and not a monomer as listed by Kodama. Paragraph 0065 of Kodama clearly discloses modified bisphenol A di(meth)acrylate as a monomer.
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.
Claims 1-4, 6-9, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shih eat al (U.S. Patent # 6,716,767) in view of Fong (U.S. Patent # 8,377,623) and Kodama (U.S. Patent Publication No. 2012/0076950) and Young et al (U.S. Patent Publication No. 2004/0110856) and Goto et al (U.S. Patent Publication No. 2018/0037688) and Yamaki et al (U.S. Patent Publication No. 2011/0098411).
In the case of claims 1, Shih teaches a method for planarizing a surface of a substrate using a planarization material that was a photo-irradiation or heat curable material comprised of monomers and a cross-linker (Abstract). The method of Shih comprised applying a layer of the planarization material onto the substrate (Column 4 Line 49 through Column 5 Line 27) followed by bringing into contact the material with a superstrate in the form of a flat object (Column 5 Line 65 through Column 6 Line 6). While in contact with the superstrate/flat object the planarization material was irradiated with light to photo-cure the layer followed by removing the superstrate/flat object (Column 6 Lines 19-38). Shih further teaches that the planarization material comprised a photo-initiator (Column 11 Line 65 through Column 12 Line 3).
Furthermore, Shih further teaches that 15 to 100% by weight of the planarization material comprised polymerizable material which comprised monomers including acrylates (Column 5 Lines 4-12), which overlapped with the require range of at least 90 wt of the photocurable/planarization material comprising polymerizable material. 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). See section 2144.05.I of the MPEP.
Shih does not specifically teach that the total carbon content of the photo-cured layer was at least 75%. However, section 2144.05.II.A of the MPEP states, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”
Shih does teach that the taught process was directed to forming optical elements/devices (Abstract and Column 1 Lines 23-30).
Furthermore, Fong teaches a photocurable composition used to form three-dimensional articles which were clear and colorless (Abstract). Fong further teaches that the amount of carbon in the cured product affected the transparency and strength of the cured article (Column 17 Lines 26-49).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal total carbon content present in the photo-cured layer of Shih through routine experimentation because the amount of carbon affected the transparency and strength of the cured composition.
Though Shih taught that the polymerizable material comprised acrylate monomer Shih did not teach that the acrylate monomers included an aromatic group and that the polymerizable material comprised at least 3 wt% of divinylbenzene.
Shih does teach that the disclosed planarization method was used in the formation of optical devices and microelectromechanical systems (MEMS) (Abstract).
Kodama teaches a photocurable composition comprised of a polymerizable material/monomer in the form of polymerizable monomer (A) and a photoinitiator which were used in the formation of optical devices and MEMS (Abstract, Page 1 Paragraph 0001 and Page 19 Paragraph 0195). Kodama further teaches that the composition comprised between 90 to 99% by mass of the polymerizable material/monomer (Page 18 Paragraph 0184). Furthermore, Kodama teaches that 80% or more of the polymerizable monomer/material was an (meth)acrylate monomer having an aromatic group/structure (Page 11 Paragraph 0129), which overlapped with the claimed ranges of at least 90 wt% and at least 99 wt%. 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). See section 2144.05.I of the MPEP.
Kodama further teaches that the composition comprised two or more species of polymerizable monomer (A) (Page 4 Paragraph 0053) which included a first acrylate monomer comprised of a benzyl group in the form of benzyl (meth)acrylate, a second acrylate monomer comprised of a naphthyl group in the form of 1-naphthyl (meth)acrylate (Page 5 Paragraph 0063) and a third acrylate monomer comprised of a phenyl group in the form of a bisphenol A di(meth)acrylate (Page 5 Paragraph 0065). Furthermore, Kodama teaches that at least 10 wt% of the polymerizable material was a multi-functional (meth)acrylate compound (Page 11 Paragraph 0127) and that suitable multi-functional (meth)acylates included bisphenol A di(meth)acylate (Page 5 Paragraph 0065).
Furthermore, Kodama teaches that the curable composition was used in patterning processes wherein a layer of the composition was pressed with a mold and cured by irradiation with light and then heat treated (Page 21 Paragraphs 0227-0228 and Page 23 Paragraph 0247) and that the cured composition was solvent resistant and etch resistant (Page 23 Paragraphs 0249 and 0250).
Based on the teaches of Kodama, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used the curable composition of Kodama as the planarization material of Shih in view of Fong because Kodama taught a known photo-curable composition in the art for forming an optical/electronic device which had solvent and etch resistance.
Shih does not teach that the polymerizable material included at least 3 wt% of a divinylbenzene monomer. However, Shih teaches that the material included a cross-linker (Abstract)
Young teaches a polymerizable composition used in imprinting processes during the formation of optical/electronic devices (Abstract and Page 1 Paragraphs 0001 and 0007-0012). Young further teaches that the polymerization of the composition was conducted through exposure to light (Page 2 Paragraph 0024 and Page 4 Paragraph 0046). Young further teaches that the composition included a cross-linker comprising a divinylbenzene monomer which increased the strength and integrity of the film during etching (Page 4 Paragraph 0047).
Based on the teachings of Young, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have included divinylbenzene in the planarization material of Shih in view of Fong and Kodama because divinylbenzene was a known cross-linker in the art which increased the etching resistance of the film formed from the composition.
As for divinylbenzene being included in the amount of at least 3 wt% none of the references teach this. However, as was discussed previously, it would have been obvious to have determined optimal values for relevant process parameters.
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal concentrations for the divinylbenzene in the planarization material of Shih in view of Fong and Kodama and Young through routine experimentation because the amount of divinylbenzene affected the etch resistance of the cured material.
Shih does not teach that the glass transition temperature of the composition after curing was at least 130 ℃.
Goto teaches a photo-polymerizable composition comprising a polymerizable compound having an aromatic group which was used to form objects by imprinting (Abstract and Page 1 Paragraph 0002). Goto further teaches that when the composition was cured it formed a film with a glass transition temperature of greater than 100 ℃ (Page 3 Paragraph 0050) which suppressed the occurrence of waviness during an etching treatment of the cured film (Page 3 Paragraph 0046).
Based on the teachings of Goto, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formed the composition of Shih in view of Fong and Kodama and Young to provide a glass transition temperature of a cured film of the composition in the range of 100 ℃ or greater in order to prevent the occurrence of waviness during an etching process. Furthermore, the range or 100 ℃ or greater overlapped 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). See section 2144.05.I of the MPEP.
Shih does not teach that the photo-cured layer had a weight loss after heating at 250 ℃ for 60 second of not greater than 5.5%.
Yamaki teaches a curable composition comprising acrylates which was cured by irradiation and produced a cured product having excellent transparency and heat resistance (Abstract and Page 8 Paragraph 0129). Yamaki teaches that the cured product provided excellent heat resistance by having a 5% weight loss when heated to 330 ℃.
Based on the teachings of Yamaki, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have produced a cured layer of Shih in view of Fong and Kodama and Young and Goto to have a weight loss of not greater than 5.5% when heated at 250 ℃ for 60 seconds in order to impart excellent heat resistance to the layer.
As for claim 2, Shih teaches that the planarization material had a viscosity of 10 to 5,000 cPa or 10 to 5,00 mPa-s (Column 5 Lines 59-64), which overlapped with the required range. As was discussed previously, overlapping ranges are prima facie obvious.
As for claim 3, 9, 11 and 12, as was discussed previously, the polymerizable material of Kodama comprised three different types of monomers including benzyl acrylate, bisphenol A dimethacrylate and 1-naphthyl (meth)acrylate.
As for claim 4, Shih does not teach that the photo-cured layer had an Ohnishi number of not greater than 3.0.
Goto teaches that the cured composition had an Ohnishi number/parameter or 4.0 less which reduced the etch rate of the composition (Page 4 Paragraph 0054).
Based on the teachings of Goto, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have had the phot-cured layer of Shih in view of Fong and Kodama and Young and Goto to have an Ohnishi number of not greater than 4.0 in order to reduce the etch rate of the cured layer. Furthermore, the taught range of 4.0 or less overlapped with the claimed range of not greater than 3.0. 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). See section 2144.05.I of the MPEP.
As for claims 6-8, Shih in view of Kodama taught polymerizable material concentration ranges which overlapped with the required ranges and overlapping ranges are prima facie obvious.
Conclusion
Claims 1 through 4, 6 through 9, 11 and 12 have been rejected. No claims were allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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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)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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