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 .
Response to Arguments
1. Applicant’s arguments, see page 13, line 8, filed 30 December 2025, with respect to the rejection of Claims 12-16, 18, 20, 22-24, 26-29, and 32-34 under 35 U.S.C. 103 as being unpatentable over Taruya (Japanese Patent Publication No. JP 2011-35173 A), hereinafter Taruya, and in view of Soong et al. (United States Patent Publication No. US 2010/0244332 A1), hereinafter Soong, and in view of Suzuki (United States Patent Publication No. US 2012/0238090 A1), hereinafter Suzuki; Claim 25 under 35 U.S.C. 103 as being unpatentable over Taruya (Japanese Patent Publication No. JP 2011-35173 A), hereinafter Taruya, and in view of Soong et al. (United States Patent Publication No. US 2010/0244332 A1), hereinafter Soong, and in view of Suzuki (United States Patent Publication No. US 2012/0238090 A1), hereinafter Suzuki, and in view of Kon (United States Patent Publication No. US 2010/0009296 A1), hereinafter Kon; have been fully considered and, in light of the claim amendments made, are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Shirakawa et al. (United States Patent Publication No. US 2003/0124456 A1), hereinafter Shirakawa.
2. Applicant’s arguments, see page 13, line 8, filed 30 December 2025, with respect to the rejection of Claim 30 under 35 U.S.C. 103 as being unpatentable over Taruya (Japanese Patent Publication No. JP 2011-35173 A), hereinafter Taruya, and in view of Soong et al. (United States Patent Publication No. US 2010/0244332 A1), hereinafter Soong, and in view of Suzuki (United States Patent Publication No. US 2012/0238090 A1), hereinafter Suzuki, and in view of Shirakawa et al. (United States Patent Publication No. US 2003/0124456 A1), hereinafter Shirakawa; have been fully considered but they are not persuasive. Applicant argues, without support, that the specific combination of limitations of the amended Claim 12 are not taught by the prior art of record. While that is true with regards to the prior Claim 12, which was not rejected in view of Shirakawa, but it is not true with respect to the prior Claim 30, which was rejected in view of Shirakawa. The crosslinker of formula (2) is taught by Shirakawa with a motivation to combine and all other limitations were taught by the earlier rejection of the prior Claim 12, i.e. under 35 U.S.C. 103 as being unpatentable over Taruya (Japanese Patent Publication No. JP 2011-35173 A), hereinafter Taruya, and in view of Soong et al. (United States Patent Publication No. US 2010/0244332 A1), hereinafter Soong, and in view of Suzuki (United States Patent Publication No. US 2012/0238090 A1), hereinafter Suzuki. Furthermore, Applicant argues that the present application represents unexpected results, but the present claims are not commensurate in scope with the claims which the evidence is offered to support. 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. The present application merely limits the alkali soluble resin to “comprising” unit A represented by formula (3) of the present application and unit B represented by formula (4) of the present application, whereas the Working Examples of the present application all use the one single alkali soluble resin “consisting of” unit A represented by formula (3) of the present application and unit B represented by formula (4) of the present application. Not only that, but the alkali soluble resin of the Working Examples of the present application has a very specific (but unclaimed) ratio of unit A to unit B. Similarly, while the present application limits the composition to comprise a surfactant, all Working Examples of the present application use the exact same surfactant. There are no means of knowing if the data provided is in any way commensurate in scope with the limitations of the claim or if, at minimum, the results therein can only be achieved with the specific alkali soluble resin and surfactant used. For all said reasons, Applicant’s arguments are not persuasive.
Claim Rejections - 35 USC § 112
3. 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.
4. 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.
5. Claims 28-30 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 28-30 are dependent of the now-cancelled Claim 13. Also, all limitations therein are either broader of the same as the now-amended independent Claim 12, from which the now-cancelled Claim 12 formerly was dependent. Thus, for purposes of compact prosecution, said claims will be examined if they do not further limit, but are dependent of, Claim 12.
6. Claims 27-28 recite the limitations "R1" in line 2, "R2" in line 3, and "R5" in line 4. There is insufficient antecedent basis for these limitations in these claims.
7. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
8. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
9. Claim 29 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As previously stated, Claim 29 will be examined as if it is dependent of Claim 12 instead of Claim 13, which is cancelled, as the claim currently reads. Furthermore, Claim 12 limits the first crosslinker (B) to just one of the five listed possibilities of Claim 29 of the present application. Furthermore, Claim 12 limits the second crosslinker (C) to just one of the four listed possibilities of Claim 29 of the present application.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
10. 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:
11. 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.
12. Claims 12, 14-16, 18, 20, 22-24, 26-30, and 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over Taruya (Japanese Patent Publication No. JP 2011-35173 A), hereinafter Taruya, and in view of Soong et al. (United States Patent Publication No. US 2010/0244332 A1), hereinafter Soong, and in view of Suzuki (United States Patent Publication No. US 2012/0238090 A1), hereinafter Suzuki, and in view of Shirakawa et al. (United States Patent Publication No. US 2003/0124456 A1), hereinafter Shirakawa.
13. Regarding Claims 12, 14-16, 18, 20, 22-24, 26-30, and 32-34, Taruya teaches (Paragraphs [0022-0050]) an alkali soluble resin. Taruya teaches (Paragraphs [0022-0050]) the alkali soluble binder resin comprising a unit represented by formula (3) of the instant application. Taruya teaches (Paragraphs [0022-0050]) the alkali soluble binder resin comprising a unit represented by formula (4) of the instant application. Taruya teaches (Paragraphs [0148-0150]) a surfactant. Taruya teaches (Paragraphs [0051-0089 and 0211], particularly Paragraphs [0076 and 0211]) a cross linker represented by formula (1) of the instant application. Taruya teaches in Paragraph [0174 and 0188] spin-coating of the resist composition on to the substrate. Taruya teaches (Paragraphs [0173-0190]) curing the resist composition to form a resist layer. Taruya teaches (Paragraphs [0173-0190]) exposing the resist layer. Taruya teaches (Paragraphs [0173-0190]) developing the resist layer to form resist patterns. Taruya teaches (Paragraphs [0173-0190]) forming metal film on the resist patterns. Taruya teaches (Paragraph [0089]) that the crosslinkers of the composition therein described has a mass ratio of “preferably from 3 to 65% by weight [. . .] based on the total solid content of the resist composition” and “the crosslink[ers] may be used alone or in combination of 2 or more.” While Taruya also teaches (Paragraph [0037]) the mass ratio of the alkali soluble binder resin “is from 30 to 95% by weight [. . .] based on the total solid content of the composition.” Thus, Taruya teaches a mass ratio of the crosslinker(s), including crosslinker (B) of the present application, to the mass of the alkali soluble binder resin being preferably 3.16% to 8%. Taruya teaches (Paragraphs [0022-0050]) the alkali soluble binder resin comprising a unit represented by formula (3) of the instant application. Taruya teaches (Paragraphs [0022-0050]) the alkali soluble binder resin comprising a unit represented by formula (4) of the instant application. Taruya teaches (Paragraphs [0022-0050]) the weight average molecular weight of the alkali soluble binder resin is 2,000 to 50,000. Taruya teaches (Paragraphs [0022-0050]) the mass ratio of the alkali soluble binder resin to the total mass of the negative tone lift off resist composition is 30-50 mass %. Taruya teaches (Paragraphs [0051-0089]) the mass ratio of the cross linker represented by formula (1) of the instant application to the mass of the alkali soluble binder resin is 0.3-5 mass %. Taruya teaches (Paragraphs [0051-0089]) the mass ratio of the cross linker represented by formula (2) of the instant application to the mass of (A) alkali soluble binder resin is 0.50-40 mass %. Taruya teaches (Paragraphs [0145-0147]) a solvent, wherein the solvent is selected from the group consisting of aliphatic hydrocarbon solvent, aromatic hydrocarbon solvent, monoalcohol solvent, polyol solvent, ketone solvent, ether solvent, ester solvent, nitrogen-containing solvent, sulfur-containing solvent, and any combination of thereof. Taruya teaches (Paragraphs [0090-0132]) the photo acid generator of Claim 12. Taruya teaches (Paragraphs [0090-0132]) the mass ratio of the photo acid generator to the mass of alkali soluble binder resin is 1-20 mass %. Taruya teaches (Paragraphs [0090-0132]) the photo acid generator comprises is a sulfonic acid derivative. Taruya teaches (Paragraphs [0148-0172]) at least one additive selected from the group consisting of a quencher, a surfactant, dye, a contrast enhancer, acid, a radical generator, and an agent for enhancing adhesion to substrates. Taruya teaches (Paragraphs [0173-0190]) manufacturing a device utilizing the manufacturing method of metal film patterns on a substrate. Taruya teaches (Paragraphs [0051-0089 and 0211], particularly Paragraphs [0076 and 0211]) the crosslinker of formula (1) of the present application with the substituents of Claim 27 of the present application. Taruya teaches (Paragraphs [0051-0089], particularly Paragraph [0057]) a cross linker represented by formula (2) of the present application with the substituents of Claim 27 of the present application. Taruya teaches (Paragraphs [0051-0089 and 0211], particularly Paragraphs [0076 and 0211]) the crosslinker of formula (1) of the present application with the substituents of Claim 28 of the present application. Taruya teaches (Paragraphs [0051-0089], particularly Paragraph [0057]) a cross linker represented by formula (2) of the present application with the substituents of Claim 28 of the present application. Taruya teaches (Paragraphs [0051-0089 and 0211], particularly Paragraphs [0076 and 0211]) the crosslinker of formula (1) of the present application with the substituents of Claim 29 of the present application. Taruya teaches (Paragraphs [0051-0089], particularly Paragraph [0057]) a cross linker represented by formula (2) of the present application with the substituents of Claim 29 of the present application. Taruya teaches (Paragraphs [0051-0089 and 0211], particularly Paragraphs [0076 and 0211]) the crosslinker of formula (1) of the present application with the substituents of Claim 31 of the present application.
14. However, Taruya fails to explicitly disclose removing remained resist patterns. Furthermore, Taruya fails to explicitly teach obtain metal film patterns on the substrate following forming a metal film on the resist patterns and removing the remained resist patterns. Furthermore, Taruya fails to explicitly teach forming of metal film on the resist patterns is by vapor deposition. Furthermore, Taruya fails to explicitly teach the patterned metal film is an electrode. Furthermore, Taruya fails to explicitly teach the mass ratio of the (B) cross linker of the present application to the mass of the alkali soluble binder resin is 0.5-2 mass % and the mass ratio of the (C) cross linker of the present application to the mass of the alkali soluble binder resin is 4-15 mass %. Furthermore, Taruya fails to explicitly teach the mass ratio of the (B) cross linker of the present application to the mass of the alkali soluble binder resin is 0.65-1.31 mass % and the mass ratio of the (C) cross linker of the present application to the mass of the alkali soluble binder resin is 5.5-8.5 mass %. Furthermore, Taruya fails to explicitly teach the crosslinker of formula (2) of the present application of Claim 30 of the present application.
15. Taruya teaches (Paragraph [0089]) that the crosslinkers of the composition therein described has a mass ratio of “preferably from 3 to 65% by weight [. . .] based on the total solid content of the resist composition” and “the crosslink[ers] may be used alone or in combination of 2 or more.” While Taruya also teaches (Paragraph [0037]) the mass ratio of the alkali soluble binder resin “is from 30 to 95% by weight [. . .] based on the total solid content of the composition.” Thus, Taruya teaches a mass ratio of the crosslinker(s) to the mass of the alkali soluble binder resin being preferably 3.16% to 217%. The limitations of Claims 32-34 of the present application have a combined mass ratio of crosslinkers to alkali soluble binder resin of, at minimum, of 6%, 6.81% and 6.81%, respectively, with a mass ratio crosslinker (A) of the present application to crosslinker (B) of the present application of 1:2, 1:4, and 1:4, respectively. MPEP § 2144.05(II)(A) 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).” Thus, given that the claimed combined crosslinker mass ratios are within the scope of Taruya and the ratios between the crosslinkers are not extraordinary, it would have been obvious to a person having ordinary skill in the art to arrive at the claimed mass ratios of crosslinkers (A) and (B) of the present application through routine optimization.
16. Soong teaches (Paragraphs [0011-0018, 0022, and 0041]) removing remained resist patterns via a lift-off process. Soong teaches (Paragraphs [0011-0018, 0022, and 0041]) the formation of photoresist patterns via both mold and lift-off processes are functional alternatives.
17. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present claimed invention to have modified Taruya in view of Soong to removing remained resist patterns via a lift-off process. Doing so would result in a functional alternative to the mold process taught by Taruya, as understood by Soong.
18. Suzuki teaches (Claim 1) obtain metal film patterns on the substrate following forming a metal film on the resist patterns and removing the remained resist patterns. Suzuki teaches (Paragraph [0024]) forming of metal film on the resist patterns is by vapor deposition. Suzuki teaches (Paragraph [0024]) forming of metal film on the resist patterns is by vapor deposition may be utilized to form an electrode.
19. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present claimed invention to have modified Taruya in view of Soong in view of Suzuki obtain metal film patterns on the substrate following forming a metal film on the resist patterns and removing the remained resist patterns; and to form the metal film on the resist patterns is by vapor deposition and wherein the patterned metal film is an electrode. Doing so would result in the capability to form an electrode from the patterned metal film, as understood by Suzuki.
20. Shirakawa teaches (Paragraph [0118]) both the crosslinker of formula (2) of the present application of the present application, in addition to the crosslinkers taught by Paragraph [0057] of Taruya.
21. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present claimed invention to have modified Taruya in view of Soong in view of Suzuki with Shirakama for the crosslinker of formula (2) of the present application of Claim 30 of the present application as Shirakama teaches the crosslinker of formula (2) of the present application of Claim 30 of the present application to be a functional alternative to the crosslinkers taught by Paragraph [0057] of Taruya. A person having of ordinary skill in the art would understand that they could, in view of Shirakawa, substitute the crosslinkers taught by Paragraph [0057] of Taruya with the crosslinker of formula (2) of the present application of Claim 30 with a reasonable expectation of success.
22. Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Taruya (Japanese Patent Publication No. JP 2011-35173 A), hereinafter Taruya, and in view of Soong et al. (United States Patent Publication No. US 2010/0244332 A1), hereinafter Soong, and in view of Suzuki (United States Patent Publication No. US 2012/0238090 A1), hereinafter Suzuki, and in view of Shirakawa et al. (United States Patent Publication No. US 2003/0124456 A1), hereinafter Shirakawa, and in view of Kon (United States Patent Publication No. US 2010/0009296 A1), hereinafter Kon.
23. Taruya in further view of Soong in further view of Suzuki in further view of Shirakawa teaches all limitations of Claim 12 above. Furthermore, Taruya teaches [0020-0021] exposing the resist layer by an electron beam. However, Taruya fails to explicitly teach exposing the resist layer by KrF excimer laser.
24. Kon teaches (Paragraphs [0126, 0128, 0148, and 0152]) exposing the resist layer by KrF excimer laser, which is a variety to an electron beam. Kon teaches (Paragraphs [0189]) there are commercially available resist resins which work with KrF exposure.
25. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present claimed invention to have modified Taruya in view of Soong in further view of Suzuki in further view of Shirakawa with Kon for exposure of the resist layer by KrF excimer laser. Doing so would result in the capability to readily available resist resins which work with KrF exposure, as understood by Kon.
Conclusion
26. 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).
27. 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.
28. 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.
29. 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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31. 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.
/R.D.C./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
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