DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-14, drawn to an apparatus, classified in G03F 7/20.
II. Claim 15, drawn to a method, classified in G03F 9/7042.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed could be used to practice another and materially different process, such as positioning an AFM tip or clamping sheets together during a bonding process.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
James Dobrow (Applicant’s representative) elected Group I, claims 1-14 (interpreted to be with traverse) in a telephone message on July 8, 2026. Claim 15 is withdrawn.
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.
Claims 1-2, 5, 6, and 10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Cherala (IEEE/ASME Transactions on Mechatronics, Vol. 20, No. 1 (February 2015), pp. 122-132). Cherala is available in a color at: https://ieeexplore.ieee.org/abstract/document/6729130
As to claim 1, Cherala teaches an imprint apparatus for forming a pattern on an imprint material on a substrate using a mold (Title). Cherla teaches that the apparatus comprises a holder configured to hold the mold (Fig. 6, Mechanism Frame) and deformation mechanism configured to deform the mold by applying a force to a side surface of the mold held by the holder (Fig. 6, everything other than Mechanism Frame). Cherala’s deformation mechanism includes an actuator (Pneumatic Cylinder), and a first member (vertical portion of MSCS fingers) driven by the actuator and a second member (horizontal portion of MSCS finger contacting Load cell and/or Delrin Pad, Load cell) configured to press the side surface of the mold along with driving of the first member by the actuator.
As to claim 2, when the Cherala deformation mechanism second member is interpreted as the Delrin Pad and Load Cell, a fastener is depicted in Fig. 6(b) as running in the horizontal direction through the MSCS finger and into the load cell, making the Cherala deformation mechanism configured to be able to switch between a connected and nonconnected state. As to claims 5 and 6, Cherala provides a controller (Fig. 7, Alignment Controller) that controls the actuator and (inherently) the connecting portion such that when the actuator is activated, the second member contacts the side surface of the mold (imprint mask). As to claim 10, Cherala’s holder (Fig. 6(a), mask chuck) includes a contact surface that comes into contact with the mold (imprint mask). As claimed, Cherala’s actuator is positioned above the holder in a horizontal direction depicted as driven parallel to the interface between the holder (mask chuck) and mold (imprint mask). Cherala’s first member (as described in the rejection of claim 1) extends vertically in a manner that meets the second direction crossing the contact surface. Cherala’s first member is connected to the output end of the actuator at one end and connected to the connecting portion at the other end (using the fastener running toward the Load cell as described above) and is depicted as crossing the contact surface. Cherala’s second member (Delrin Pad, Load cell) is connected to the first member and extends in the first direction below the holder and is configured to press the side surface of the mold on its end side.
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.
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cherala (IEEE/ASME Transactions on Mechatronics, Vol. 20, No. 1 (February 2015), pp. 122-132). Cherala teaches the subject matter of claims 1 and 2 above under 35 U.S.C. 102(a)(1).
As to claim 11, Cherala’s deformation mechanism further includes a fulcrum portion arranged on a wall surface of the holder (Flexure Joints between MSCS finger and Mechanism Frame). While the claim technically requires the fulcrum to be arranged on a wall surface crossing the contact surface in the holder, Cherala teaches the fulcrum on the contact surface. However, one would have recognized that the fulcrum could be located on either the wall surface crossing the contact surface or the contact surface itself as an obvious matter of design choice. Cherala’s first member swings with respect to the fulcrum portion as a fulcrum in accordance with the driving of the actuator.
As to claim 12, Cherala provides a device interpreted to be a parallel spring between the holder and second member which can be deformed and is moved in a first direction by swinging of the first member.
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As to claim 13, Cherala’s holder includes a contact surface configured to hold the mold. Cherala’s deformation mechanism has a linear motion mechanism comprising a pneumatic cylinder actuator which is located in a sequentially and parallelly arranged direction parallel to the first member (MSCS finger). The first member, connecting portion (fasteners), and second member are also arranged in a first direction parallel to the contact surface. As to claim 14, Cherala’s device has an avoiding portion as claimed. See below:
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Allowable Subject Matter
Claims 3, 4, 7, 8, and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: Claims 3, 7, and 8 are allowable because they each require an apparatus configured to do something in a “nonconnected state”, and Cherala’s device is not configured in this manner. Claims 4 and 9 are dependent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J DANIELS whose telephone number is (313)446-4826. The examiner can normally be reached Monday-Friday, 8:30-5:00 pm.
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 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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/MATTHEW J DANIELS/Primary Examiner, Art Unit 1742
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