DETAILED ACTION
Claims 1 and 6-11 are pending. Claim 1 has been amended and claims 2-5 and 12-15 were previously canceled.
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
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on May 29, 2026 has been entered.
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.
Claims 1 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kodama et al. (U.S. 2006/0292490) as evidenced by Koyama et al. (U.S. 2006/0058480) and/or Harada et al. (U.S. 2002/0198390).
Kodama et al. teaches a positive photosensitive composition comprising: (A) a compound capable of generating an acid upon irradiation with actinic rays or radiation; (B1) a resin of which solubility in an alkali developer increases under an action of an acid; and (B2) a resin that has at least one group selected from (a) an alkali-soluble group and (b) a group capable of decomposing under an action of an alkali to produce an alkali-soluble group, and the resin (B2) does not have a group capable of decomposing under an action of an acid; and a pattern forming method using the same [abstract] (claim 9) wherein in the resin as the component (B2), the at least one group selected from (a) an alkali-soluble group and (b) a group capable of decomposing under an action of an alkali to produce an alkali-soluble group is at least one group selected from a carboxyl group, a lactone group and an acid anhydride group [0022]. Kodama et al. also teaches the alicyclic hydrocarbon-based acid-decomposable resin for use in the present invention preferably has a lactone group. The alicyclic hydrocarbon-based acid-decomposable resin for use in the present invention more preferably has a repeating unit containing a group having a lactone structure represented by any one of the following formulae (LC1-1) to (LC1-16) [0153] examples include a repeating unit represented by the following formula (AI) [0155]:
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[0155] wherein Rb0 represents a hydrogen atom, a halogen atom or an alkyl group having a carbon number of 1 to 4. Preferred examples of the substituent which the alkyl group of Rb0 may have include a hydroxy group and a halogen atom. Examples of the halogen atom of Rb0 include a fluorine atom, a chlorine atom, a bromine atom and an iodine atom [0156], Ab can be a single bond [0157], and V can be the following formula (LC1-14) [0158]:
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[0153] such that when Rb0 is a fluorine atom it is equivalent to a polymerization unit represented by Formula (Y3’) of instant claim 1 which is derived from the monomer shown in claims 1 and 11. Although Kodama et al. does not explicitly show the above repeating unit in monomeric form, it is obvious to obtain since it is known in the resist art that in order to have a repeating unit one must start with the monomeric form (claims 1 and 11). Although Kodama et al. does not show a specific example when Rb0 is a fluorine atom, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make such a selection and arrive at the instant claims through routine experimentation based on the substitution of equally suitable groups in order to improve transparency to light particularly vacuum ultraviolet light as evidenced by Koyama et al. [0076], and improve adhesion to the substrate as evidenced by Harada et al. [0006].
With regard to claim 6, Kodama et a. teaches the resin having a monocyclic or polycyclic alicyclic hydrocarbon structure and undergoing decomposition under the action of an acid to increase the solubility in an alkali developer (hereinafter sometimes referred to as an "alicyclic hydrocarbon-based acid-decomposable resin") is preferably a resin containing at least one repeating unit selected from the group consisting of a repeating unit having an alicyclic hydrocarbon-containing partial structure represented by any one of the following formulae (pI) to (pV) [0117], preferably a repeating unit represented by formula (pA) [0138] and a specific example includes the following:
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[0144] wherein Rx is H, CH3, or CF3, and Rxa is an alkyl group number of 1 to 4 [0144] ] which is equivalent to formula (a2) of instant claim 6 when R is a hydrogen atom, an alkyl group which has 1 carbon atom, or an alky group which has 1 carbon atom and three halogen atoms, A is a single bond, R4 is an alkyl group which has 1-4 carbon atoms, p is 0, and Z1 is an alicyclic hydrocarbon ring having 10 carbon atoms.
With regard to claim 7, Kodama et al. teaches another example of the repeating unit containing a group having a lactone structure is the following:
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[0162] wherein Rx is H, CH3, or CF3 [0162] which is equivalent to a polymerization unit represented by Formula (b1) of instant claim 7 when R is an alkyl group which has 1 carbon atom and three halogen atoms, A is a single bond, X is a methylene group, and R8 is a hydrogen atom. It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art. In re Kerkhoven, 205 USPQ 1069 1072. In the instant case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to obtain a resin comprising two repeating units having two lactone groups through routine experimentation.
With regard to claim 8, Kodama et al. teaches the alicyclic hydrocarbon-based acid-decomposable resin for use in the present invention preferably has a repeating unit containing a group having an alicyclic hydrocarbon structure substituted by a polar group. By virtue of this repeating unit, the adhesion to substrate and the affinity for developer are enhanced [0164] such as the following repeating unit:
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[0169] which is equivalent to a polymerization unit represented by Formula (c1) of instant claim 8 when R is an alkyl group which has 1 carbon atom and three halogen atoms, A is a single bond, q is 1, Rb is a hydroxyl group, and Z2 is an alicyclic hydrocarbon ring having 10 carbon atoms.
With regard to claim 10, Kodama et al. teaches the positive photosensitive composition is coated on a substrate, and dried to form a photosensitive film. This photosensitive film is irradiated with actinic rays or radiation through a predetermined mask and preferably after baking (heating), subjected to development and rinsing, whereby a good pattern can be obtained [0299-0300] wherein in the development step, an alkali developer is used [0303].
Response to Arguments
Applicant's arguments filed May 29, 2026 have been fully considered but they are not persuasive. Applicant argues the 103 rejection over Kodama in view of the evidence of unexpected results provided in the present specification, see also Graham v. John Deere. The claimed invention has achieved unexpected results, whereby such results rebut any asserted prima facie case of obviousness, see In re Corkill. According to MPEP 2145, rebuttal evidence and arguments can be presented in the specification, In re Soni. Office personnel should consider all rebuttal arguments and evidence presented by Applicant. Specifically, Comparative Example 1 of the present specification corresponds to Kodama. Based on the evaluation results comparing Example 4 and Comparative Example 1, the photoresist resin of the claimed invention exhibited excellent swelling resistance to the alkaline developing solution. Applicant previously relied on the comparative testing in the present specification to rebut the obviousness rejection but the Examiner was not persuaded by this evidence and indicated that the results did not appear to be unexpected. In response, Applicant submitted a 1.132 Declaration on October 30, 2023 which provides strong evidence of the patentability of the claimed invention. Specifically, the swelling resistance of Example 4 is unexpectedly superior to Comparative Example 1. Claim 1 corresponds to the resin of Example 4 and claim 11 corresponds to monomer A of Example 4. As such, the claims are commensurate in scope with inventive Example 4. In the Decision on Appeal, the Board agrees with the Examiner that the results are not commensurate in scope with the claims. The Board notes that Applicant has not shown results for the full scope of resins having only Y2 polymerization unit. As such, the claims are amended to delete Y2. Thus, Applicant requests the Examiner reconsider the evidence of unexpected results, see KSR v. Teleflex.
The Examiner respectfully disagrees. The Board affirmed the Examiners rejection based on all of the facts. Specifically, the Board agreed that the results provided by Applicant would have been expected based on the teachings of Kodama as evidenced by Koyama and Harada, see page 6. The Board also agreed that the one example is not commensurate in scope for multiple reasons, not just the additional recitation of polymerization unit Y2 (now deleted). Specifically, the specification and declaration still lack examples for: a) the monomer of claim 11 and b) a resin comprising only polymerization unit (Y3’), see pages 7 and 8. Both also fail to teach a comparison for a copolymer having (Y3’) together with any other polymerization unit claimed, i.e. formulae (a2)-(a4), (b1)-(b5), and/or (c1). The single example provided is a copolymer having a specific secondary polymerization unit. Thus, while claim 1 has been amended, the results are still not commensurate in scope with broad claim 1 or specific claim 11. The Board also pointed out that the specification further discusses that Example 6 (a resin with a -CF3 backbone) also has 0% swelling. Kodama describes the same structure [0162]. Thus, “it shows that the recited fluorine backbone resin itself is not critical to the reduced swelling results because a similar exemplified resin with a CF3 backbone, as taught by Kodama, has the same result”, see page 10 of the Board decision. More likely, Kodama’s -CF3 backbone resin is the closest prior art. Therefore, the rejection over Kodama is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 6:30-3:00 EST M-F.
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/Anna Malloy/Examiner, Art Unit 1737
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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