DETAILED ACTION
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 .
Amendment to the claims was submitted on 02/06/2026, new claims 16-21 are added.
Claim Status
Claims 1-10 and 14-21 are under consideration
Claims 11-13 are canceled
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/06/2026 has been entered.
Claim Rejections - 35 USC § 112
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.
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.
Claims 1-10, 14, and 16-18 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.
Independent claim 1 discloses “and A11- and A12- meet any one of the following requirements 1 to 4”, however there are 5 listed requirements, as requirement 5 has been added in the latest amendment. It is unclear if requirement 5 is a further requirement in addition to one of requirements 1-4 Further, if required, requirement 5 does not appear to be satisfiable if one of requirements 1-4 are satisfied.
For the sake of examination, the examiner will interpret this to mean “and A11- and A12- meet any one of the following requirements 1 to 5”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 and 14-21 are rejected under 35 U.S.C. 103 as obvious over Yamaguchi (US20150331314A1, published 2015).
Regarding claims 1-10 and 15-21,
Yamaguchi teaches an actinic ray-sensitive or radiation-sensitive resin composition comprising of a resin having a group capable of decomposing by an action of an acid (acid decomposable resin) as well as compounds (C1) and (C2) [claim 1].
Yamaguchi further teaches example composition comprising of a resin, a compound B, and a compound C [0822, table 6].
Yamaguchi also teaches the following example of compound (C1) [0432],
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Where the right anion represents a moiety capable of forming the following acidic functional group (Ca-6) [0293], where R11 may be a cycloalkyl group [0294], which may preferably be an adamantyl group [0296].
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It would be obvious to a person of ordinary skill in the art that using adamantyl as the R11 group of the above example compound (C1) in place of CF3 would result in an expected and comparable compound.
The resulting compound aligns with instant compound (I) and instant formula (Ia), as well as satisfying requirement 4, where A11- and A12- are each independently represented by general formulae (B-1) and (B-8), where each RX1 is an unsubstituted alkyl group. Further, the anionic moieties match those of instant compound B-9, with pKa values of -4.41 and 0.37 per table 2 of the instant specification. As the anionic moieties are the same as those of the instant compound B-6, the pKa values would be expected to be similar or identical, reading on instant claims 2-3 and 16-21.
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Given that Yamaguchi discloses the compound that encompasses the presently claimed compound (I) with formula (Ia), including the instantly claimed anionic moieties, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, to use the compound (C1), which is both disclosed by Yamaguchi and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Yamaguchi teaches their compound B is an acid generator which may be an ionic compound composed of an anion and a cation, where the anion may be a camphorsulfonate anion [0475-0478].
Substituting the above cation with H+ results in the following structure with a predicted pKa of 1.2 (as evidenced by scifinder as seen below, CAS number 5872-08-2), aligning with instant general formula (1), reading on instant claims 1, 4-7, and 15.
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Alternatively, given that Yamaguchi discloses a compound B that encompasses the presently claimed compound with formula (1), including a camphorsulfonate anion with an acid dissociation constant of 0 to 4, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, to use compound B including a camphorsulfonate anion, which is both disclosed by Yamaguchi and encompassed within the scope of the present claims and thereby arrive at the claimed invention, reading on instant claims 1, 4-7, and 15.
Yamaguchi teaches a pattern forming method comprising forming a resist film on a substrate, exposing the film, and developing a developer [0725-0732], reading on instant claims 8-9.
Yamaguchi also teaches their invention for use in manufacturing electronic devices [0845], reading on instant claim 10.
Regarding claim 14,
Yamaguchi teaches their cation for their compound C may be a cation with formula (ZI), where each of R201, R202 and R203 independently represents an organic group [0322-0323], and may be represented by formula (ZI-4) [0332], where l is 0-2, r may be 0, each R15 independently represents an alkyl group, a cycloalkyl group or a naphthyl group (organic groups), and R13 may be an alkyl group with a substituent [0362-0368], where the substituent may preferably be a halogen atom (particularly a fluorine atom) [0375, 0378], reading on the instant formula (Za1), reading on instant claim 14.
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Given that Yamaguchi discloses the cation that encompasses the presently claimed cation, including an aryl group substituted with a halogen substituted alkyl group (alkyl halide), it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, to use the cation ion including an aryl group substituted with a halogen substituted alkyl group (alkyl halide), which is both disclosed by Yamaguchi and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Response to Arguments
Applicant’s arguments regarding the new claim amendments filed 02/06/2026 with respect to the rejections over Yamaguchi have been fully considered and are not persuasive. The above rejections have been updated accordingly.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Lee whose telephone number is (571)272-2261. The examiner can normally be reached M-Th 7:30-5:30 EST.
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/A.N.L./Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734