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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04 September 2025 has been entered.
Response to Arguments
2. Applicant’s arguments, see page 5, line 7, filed 04 September 2025, with respect to the rejection of Claims 1-2 and 6-9 under 35 U.S.C. 103 as being unpatentable over Yahagi et al. (United States Patent Publication No. US 2017/0369697 A1), hereinafter Yahagi; have been fully considered but they are not persuasive. Applicant argues that the Declaration filed 04 September 2025 and the accompanying arguments overcome the rejection of record due to the stated rationale of the prior Office Action of essentially combining prior art elements according to known methods to yield predictable results, or as stated therein “functional results.” But at the same time, Applicant argues that the Declaration filed 04 September 2025 shows unexpected results.
3. Firstly, Applicant changes the “functional results” rationale stated in the prior Office Action with “functional equivalents,” which the prior Office Action does not state this phrase even one time. By “functional results,” Examiner meant “predictable results,” i.e. from the first rationale given to support a conclusion of obviousness in the MPEP of “combining prior art elements according to known methods to yield predictable results.” This rationale is a four-prong test. First, a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference, which was stated in the prior Office Action. Second, a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately, which was implicitly stated in the prior Office Action as each of the elements in the prior art, Yahagi, principally the photodegradable base containing a compound represented by any one of General Formulae (d0-c-1) to (d0-c-2) of the present application is taught by the prior art as functional alternatives to those used for experimental examples. Third, a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable, which was essentially stated in the prior Office Action by stating that the results would be “functional” which is analogous to predictable. Four, there are no additional findings based on the Graham factual inquiries that are necessary. Thus, the rejection of the present application as being obvious due to the rationale of “combining prior art elements according to known methods to yield predictable results,” is appropriate and thus maintained.
4. Addressing applicant’s arguments, it is noted that the claims of the present application permit an exponential number of base material components (often called resins) and acid generator components, save that they are within the scope of General Formula (b-1) of the present application. Furthermore, the present application claims the composition using open-ended language, i.e. “comprising,” thus any number of unclaimed components in any amount could also be comprised by the composition claimed by the present application and still be within the scope of the claims. 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, the Declaration filed 04 September 2025 utilizes only one base material component and only one acid generator component in all of the working examples. Applicant further argues that the Comparative Example 3 from the Declaration filed 04 September 2025, which uses the same photodegradable base compound utilized in the prior art’s working examples shows improved results, at least with respect to the “scum” metric. It’s worth noting that save for the “scum” metric, the other metrics with regards to the Comparative Examples of the Declaration filed 04 September 2025 show Eop and LWR values within the range of the Working Examples of the Declaration filed 04 September 2025. With regards to Comparative Example 3 of the Declaration filed 04 September 2025, noteworthy is that only that sample is acid generator component (B)-4 therein used, while all of the other Working and Comparative Examples acid generator component (B)-1 is used. Suffice to say, this is not an apples-to-apples comparison. One does not know if the inferior results are from an inferior acid generator component or an inferior photodegradable base compound. The decision to use acid generator component (B)-4 for Comparative Example 3 of the Declaration filed 04 September 2025 is a bit of a quandary as that compound is not used in the present application’s working examples nor in the prior art’s working examples. Applicant has not shown unexpected results occur over the entire claimed range of the present applications and thus the rejection of record is maintained.
Claim Rejections - 35 USC § 103
5. 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:
6. 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.
7. Claims 1-2 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yahagi et al. (United States Patent Publication No. US 2017/0369697 A1), hereinafter Yahagi.
8. Regarding Claims 1-2 and 6-7, Yahagi teaches (Paragraphs [0058-0357]) a base material component exhibiting changed solubility in a developing solution under action of acid. Yahagi teaches (Paragraphs [0358-0539]) an acid generator component generating an acid upon exposure. Yahagi teaches (Paragraphs [0543-0609]) a photodegradable base controlling diffusion of the acid generated from the acid generator component upon exposure. Yahagi teaches (Paragraphs [0360-0462], particularly Paragraphs [0361-0362 and 0404-0405]) the acid generator component (B) is a compound represented by General Formula (b-1) of the present application. Yahagi teaches (Paragraphs [0452 and 0550-0563]) the photodegradable base contains a compound represented by any one of General Formulae (d0-c-1) to (d0-c-2) of the present application. Yahagi teaches (Paragraphs [0461, 0538, and 0591]) a content of the acid generator component is higher than a content of the photodegradable base. Yahagi teaches (Paragraph [0409]]) the cation moiety of the acid generator component is a cation having an electron-withdrawing group. Yahagi teaches (Paragraphs [0360-0462], particularly Paragraphs [0361-0362 and 0404-0405]) the acid generator component (B) is a compound represented by General Formula (b-1-1) of the present application. Yahagi teaches (Paragraph [0591]) a content of the photodegradable base is 1 to 10 parts by mass with respect to 100 parts by mass of the base material component.
9. Regarding Claims 8-9, Yahagi teaches (Paragraph [0651]) forming a resist film on a support using the resist composition. Yahagi teaches (Paragraph [0652]) exposing the resist film. Yahagi teaches (Paragraph [0653]) developing the exposed resist film to form a resist pattern. Yahagi teaches (Paragraph [0652]) the resist film is exposed with extreme ultraviolet (EUV) rays or electron beam (EB).
10. However, Yahagi does not explicitly teach the photodegradable base contains a compound represented by any one of General Formulae (d0-c-1) to (d0-c-2) of the present application in a working example.
11. Therefore, a person of ordinary skill in the art in view of Yahagi would have found it obvious to try the combining the prior art elements of Yahagi which meet the limitations of the present application above according to known methods to yield predictable results. Herein, Yahagi included each element claimed by the present application for its claims, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of the photodegradable base containing a compound represented by any one of General Formulae (d0-c-1) to (d0-c-2) of the present application, which is taught by Yahagi, to produce functional results. Furthermore, one of ordinary skill in the art could have combined the elements as claimed by known methods taught by Yahagi, and that the photodegradable base containing a compound represented by any one of General Formulae (d0-c-1) to (d0-c-2) of the present application merely performs the same function the compound used in the Experimental Examples therein. Furthermore, Yahagi teaches one of ordinary skill in the art would have recognized that the results of the combination were predictable given that all of the elements are of the relevant claims of the present application are taught by Yahagi and are, even if not taught in a single experimental example, are taught as being functional alternatives to achieve predictable results in Yahagi’s stated aim of a resist composition which is capable of forming an excellent shaped resist pattern with high sensitivity and improved lithography properties. See: Yahagi (Paragraph [0017])
Conclusion
12. 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.
13. 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