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 .
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 December 2025 has been entered.
Response to Arguments
2. Applicant’s arguments, see page 8, line 16, filed 09 July 2024, with respect to the rejection(s) of Claims 7, 9-15, 17-20, and 22-25 under 35 U.S.C. 103 as being unpatentable by Okada et al. (Japanese Patent Publication No. JP 2015-163672 A), hereinafter Okada; have been fully considered but they are not persuasive. Applicant argues that the prior art fails to have a working example within all limitations of the claims of the present application. Examiner acknowledges this fact (See: Paragraph #8 of the prior Office Action) and for this reason made a rejection under 35 U.S.C. 103 instead of under 35 U.S.C. 102. The Applicant argues that Okada fails to teach the sulfonic acid derivative compound represented by Formula (I) by essentially arguing that the teaching of Okada is too broad. As an initial matter, it is worth noting that the claimed sulfonic acid derivative is also fairly broad allowing for large number of various substituents at multiple positions on the claimed sulfonic acid derivative. Additionally, the two variable substituent sites on the sulfonic acid derivative compound represented by Formula (I) are taught by Okada. With respect to substituent X1 of Formula (I) of the present application, it is limited to “a linear or branched alkyl group having 1 to 14 carbon atoms.” Okada teaches for this substituent a “an alkyl group having 1 to 40 carbon atoms.” Thus, there is a clear overlap in the teaching. With respect to substituent R1 of Formula (I) of the present application, the present application limits to “an aliphatic hydrocarbon group having 1 to 18 carbon atoms” while Okada teaches “an aliphatic hydrocarbon group having 1 to 18 carbon atoms,” with both aliphatic hydrocarbon groups being potentially substituted with halogens. Thus, there is also a great deal of overlap in the teaching. Furthermore, the Applicant argues that Okada and the present application teach differing advantages with their disclosures. This is not relevant. MPEP § 2144(IV) states: “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).”
3. Applicant argues that the present application presents unexpectedly superior results from the prior art and that the amendment to the claims renders the claims commensurate in scope with the data in the present application, which is buttressed by the Declaration filed 30 December 2025. This is not persuasive. The claims still permit a large range of varying polymer compounds (B) of the present application, i.e. “10 to 60% by mole of hydroxy groups or carboxyl groups present in polymer compound (B) represented by Formula (III) are protected with tertiary alkyloxycarbonyl groups.” In addition, the claim also has a rather broad range of content of the sulfonic acid derivative (A) where the maximum claimed is 20X the minimum claimed. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02. Furthermore, MPEP § 2123(II) states: “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).” This recitation of the MPEP is relevant as Applicant has only these experimental example compositions from the present application and is not commensurate in scope with the present claims. There are only two different sulfonic acid derivative compounds used in working examples, with R1 of Formula (I) of the present application being a -CF3 or -Ph-CF3 moiety, while the claim allows for “R1 represents an alkyl group having 1 to 18 carbon atoms which may be substituted with a halogen atom, or an aryl group having 6 to 20 carbon atoms which may be substituted with a halogen atom.” As for the X1 moiety, both are n-butyl alkyl groups, while the claim allows for “X1 represents a linear or branched alkyl group having 3 to 8 carbon atoms, wherein a methylene group in the alkyl group is not substituted.” As for Polymer compound (B) of the present application, the three working examples use only two different polymers, i.e. poly(p-hydroxystyrene) wherein 30% by mole of poly(p-hydroxystyrene) is substituted with t-butoxycarbonyl groups, and hydroxystyrene/styrene/t-butoxycarbonyl substituted hydroxystyrene in a 60:20:20 ratio. The claim allows for Polymer compound (B) of the present application to comprise 50-100% structural units comprising Formula (III) of the present application. Formula (III) is very broad, but only p-hydroxystyrene structural units of the working examples fall within the scope of Formula (III) of the present application and none have a molar ratio greater than 70%. The Applicant further argues that the experimental example photoacid generators of Okada, of which there are eight (B-1 to B-8), of which Applicant has used (B-1), (B-7), and (B-8) of Okada as Comparative examples (A’-3), (A’-4), and (A’-5), respectively, and argues that the inferior results using this subset of the experimental example photoacid generators would teach against the higher performing compositions of the present application, as detailed in the Declaration dated 30 December 2025. It is unclear why Applicant chose to only use 3 of the 8 experimental example photoacid generators of Okada, but even if those other 5 showed inferior results, that would not negate the broader teaching of Okada. MPEP § 2123(II) states: “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).” Thus, for said reasons, the Applicant’s arguments are not persuasive and the rejections of record are maintained.
Claim Rejections - 35 USC § 103
4. 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:
5. 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.
6. Claims 7, 9-15, 17-20, and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable by Okada et al. (Japanese Patent Publication No. JP 2015-163672 A), hereinafter Okada.
7. Regarding Claims 7, 9-15, 17-20, and 22-25, Okada teaches (Paragraphs [0081-0083]) a sulfonic acid derivative compound represented by Formula (I) of the instant application. Okada teaches (Paragraphs [0093-0095 and 0134]) a polymer compound comprising a structural unit represented Formula (III) of the instant application, wherein 10 to 60% by mole of hydroxy groups or carboxyl groups present in polymer compound (B) represented by Formula (III) are protected with tertiary alkyloxycarbonyl groups, e.g. Paragraph [0134] which teaches a poly(p-hydroxystyrene) resin, wherein 30 mol % of the hydroxyl of the groups is replaced with t-carbobutoxy groups. Okada teaches (Paragraphs [0081-0083]) X1 of Formula (I) of the instant application is an alkyl group having 3 to 8 carbon atoms. Okada teaches (Paragraph [0100]) a total amount of the sulfonic acid derivative (A) and the polymer compound (B) ranges from 5 to 50 % by mass other than the solvent with respect to the total amount of the composition including the solvent. Okada teaches (Paragraphs [0093-0095 and 0134]) a content of the structural unit represented by the Formula (III) is 70% by mole in the polymer compound. Okada teaches (Paragraphs [0081-0083]) X1 of Formula (I) of the instant application is an alkyl group having 4 carbon atoms. Okada teaches (Paragraphs [0081-0083]) wherein R1 of Formula (I) of the instant application is a perfluoroalkyl group having 1 to 8 carbon atoms. Okada teaches (Paragraphs [0093-0095 and 0134]) the content of the structural unit represented by the Formula (III) is 50 to 90% by mole. Okada teaches (Paragraphs [0098, 0102-0103, 0124, and 0128]) a pattern obtained using the positive photosensitive composition. Okada teaches (Paragraphs [0098, 0120-0121, and 0126-0127]) forming a pattern by irradiating the positive photosensitive composition with heat or light. Okada teaches (Paragraphs [0081-0083]) a sulfonic acid derivative compound represented by Formula (I) of the instant application, wherein Okada teaches R1 of the present application is represented by Formula (II) of the present application.
8. However, Okada fails to explicitly teach a content of the sulfonic acid derivative ranges from 0.5 to 10 parts by mass, with respect to 100 parts by mass of components other than a solvent of the polymer compound. Okada teaches (Paragraphs [0081-0083]) a positive photosensitive composition comprising a sulfonic acid derivative compound represented by Formula (I) of the instant application. However, Okada is silent as to the relative amounts of sulfonic acid derivative compound and does not comprise the sulfonic acid derivative compound in its working examples.
9. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Okada to have a content of the sulfonic acid derivative ranges from 0.5 to 10 parts by mass, with respect to 100 parts by mass of components other than a solvent of the polymer compound. MPEP § 2144.05(II)(A) states: “[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). Herein, Okada teaches the inclusion of a sulfonic acid derivative compound represented by Formula (I) of the instant application in a positive photosensitive composition, but is silent as to the relative amounts of said sulfonic acid derivative compound. It is obvious to discover the workable ranges of said sulfonic acid derivative compound in a positive photosensitive composition.
Conclusion
10. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
11. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARK F HUFF can be reached at (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.D.C./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
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