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 .
Amendments to the claims were submitted on 02/10/2026.
Claim Status
Claims 1-11, 13, and 15-22 are under consideration.
Claims 12 and 14 is 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/10/2026 has been entered.
Claim Rejections - 35 USC § 112
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.
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.
Claim 19 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.
Claim 19 discloses that the pendant fluorocarbon group is one or more selected from the group consisting of -C2F5 and -CH2CH2C3F7. However, this claim depends on independent claim 13, where the pendant fluorocarbon group is selected from the group consisting of -C(=O)OC4F9, -CH2OC4F9, and -C(=O)O(C(CF3)2OH).
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
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 7-11 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (US20150111154A1, published 2015) in view of DiPietro (US 20100062368 A1).
Regarding claims 7-9, and 11,
Takahashi teaches a photosensitive resin composition comprising a resin (P) (first polymer, photoresist polymer) with an acid labile group, a photoacid generator compound (B) (photoactive compound) [abstract], and that Resin (P) may contain a repeating unit comprising a carboxylic acid protected with an acid labile group [0027].
Takahashi teaches their compound (B) may be a photo-initiator for radical photopolymerization (free-radical generator) [0340].
Takahashi also teaches further including a dye and/or photosensitizer [0779].
However, Takahashi is silent to examples of the dye and/or photosensitizer.
DiPietro, analogous art, teaches a photoresist composition [abstract], where photoresist additives include dyes and sensitizers including examples such as anthraquinone compounds [0047].
It would have been obvious to a person of ordinary skill in the art that using the anthraquinone of DiPietro as the dye and/or sensitizer of Takahashi would result in a comparable and expected photosensitive resin composition.
That is, the substitution of the anthraquinone of DiPietro for the dye/sensitizer of Takahashi, absent unexpected results, would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application with the predictable result of forming a photosensitive resin composition. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (See MPEP § 2143, B).
Takahashi teaches a hydrophobic resin (D) (second polymer, protective polymer) which may contain a repeating unit with one or more fluorine atoms [0525-0529].
Takahashi teaches their resin (D) may have an acid group (x) [0604-0606], which may be the following (with an NH2 group, instant polar functional group) [0612], and which is preferably 1 to 50 mol %, more preferably 3 to 35 mol %, and even more preferably 5 to 20 mol %, based on all the repeating units in hydrophobic resin (D) [06111]. Although silent to wt.%, 1 to 50 mol % would be expected to be about 1 to 50 wt.%, overlapping the instantly claimed range, and reading on instant claim 7.
PNG
media_image1.png
106
98
media_image1.png
Greyscale
Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Takahashi teaches examples of the fluorine containing repeating unit may include —C(CF3)2OH [0531-0544], reading on instant claim 8, and may include the following example showing a polymer main chain formed from C2-3 monomer (where X1 may be H, F, CH3, or CF3), reading on instant claims 9.
PNG
media_image2.png
111
114
media_image2.png
Greyscale
Takahashi teaches resin (D) is preferably 1,000 to 100,000, more preferably 1,000 to 50,000, and even more preferably 2,000 to 15,000 [0642]. Takahashi further teaches examples of resin (D) such as HR-1 [0648] with a molecular weight of 4900, well within the instant claimed range, reading on instant claim 11.
Regarding claim 22,
The instant claim does not actually affirmatively require the addition of a photobase generator.
As this claim only add further limitations to the photobase generator, the examiner maintains that Takahashi has rendered said claim obvious.
Regarding claim 10,
Takahashi teaches the content of the fluorine atoms in their resin (D) is preferably 5-80% by mass and that the repeating unit with fluorine is preferably 10 to 100 mol% [0639]. While silent to a wt.% of a fluorocarbon pendant group excluding the polymer backbone and linking group, it would be obvious to a person of ordinary skill in the arts that the fluorine pendant groups of Takahashi would overlap the instant claimed range of 0.1 to 10 wt.%, reading on instant claim 10. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Claims 1, 3-6, 13, and 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (US20150111154A1, published 2015) and DiPietro (US 20100062368 A1) as applied to claim 7 above, and further in view of Thackeray (US20170031244A1, Published 02/02/2017).
Regarding claims 1, 5-6, 13, 15, and 18-21,
Takahashi teaches a photosensitive resin composition comprising a resin (P) (first polymer, photoresist polymer) with an acid labile group, a photoacid generator compound (B) (photoactive compound) [abstract], and that Resin (P) may contain a repeating unit comprising a carboxylic acid protected with an acid labile group [0027].
Takahashi teaches a hydrophobic resin (D) (second polymer, protective polymer) which may contain a repeating unit with one or more fluorine atoms [0525-0529].
Takahashi teaches examples of the fluorine containing repeating unit may include —C(CF3)2OH or a pentafluoroethyl group [0531-0544], reading on instant claims 5 and 19, and may be the following example showing a polymer main chain formed from C2-3 monomer, reading on instant claim 6 and 15, with a -C(=O)O- linking group, reading on instant claim 18.
PNG
media_image2.png
111
114
media_image2.png
Greyscale
Takahashi also teaches the partial structure including a fluorine atom may be bonded to the main chain through a group such as an amide bond (containing an -N- linking group) [0542].
Takahashi teaches their pendant fluorine containing group may be an alkyl group having a fluorine atom may be represented by formulae (F3) or (F4) [0531, 0535].
PNG
media_image3.png
181
292
media_image3.png
Greyscale
Takahashi teaches specific examples of the group represented by Formula (F3) include a nonafluorobutyl group [0540] and specific examples of the group represented by Formula (F4) include —C(CF3)2OH [0541], where the pendant fluorine containing group may be bonded to the main chain through a group selected from the group consisting of an alkylene group, an ether bond, an ester bond, or a group formed by combining two or more thereof [0542].
A nonafluorobutyl group bonded through an ester bond aligns with the following instant fluorocarbon pendant group.
PNG
media_image4.png
18
106
media_image4.png
Greyscale
A nonafluorobutyl group bonded through a combination of a methylene (C1 alkylene group) and ether group aligns with the following instant fluorocarbon pendant group.
PNG
media_image5.png
19
90
media_image5.png
Greyscale
A —C(CF3)2OH group bonded through an ester bond aligns with the following instant fluorocarbon pendant group.
PNG
media_image6.png
20
158
media_image6.png
Greyscale
Given that Takahashi discloses the pendant fluorocarbon group that encompasses the presently claimed pendant fluorocarbon group, including the above disclosed pendant fluorocarbon groups and linking groups, 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 pendant fluorocarbon group of Takahashi, which is both disclosed by Takahashi and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Takahashi does not teach their composition further comprising metal oxide nanoparticles.
Thackeray, analogous art, teaches a composition which may be a photoresist composition [claims 1 and 9], comprising of a nanoparticle comprising of a core and a coating comprising of a ligand such as a carboxylic acid [claim 1, 0078], where the core may be an oxide of any metal element and may include an oxide of lithium, beryllium, sodium, magnesium, aluminum, silicon, calcium, potassium, manganese, scandium, titanium, vanadium, chromium, zinc, iron, cobalt, nickel, copper, gallium, germanium, arsenic, selenium, zirconium, rubidium, strontium, yttrium, niobium, molybdenum, technetium, ruthenium, tin, cadmium, indium, cesium, antimony, tellurium, neodymium, barium, lanthanum, cerium, praseodymium, terbium, promethium, samarium, europium, gadolinium, ytterbium, dysprosium, holmium, erbium, thulium, rhenium, lutetium, hafnium, tantalum, tungsten, thallium, lead, and bismuth. (metal oxide nanoparticle) [0076-0077]. Takahashi teaches inclusion of metal oxide nanoparticles can improve pattern transfer, especially for small pattern size (25 nm) and thin films [0062].
As both teach photoresist compositions, it would have been obvious to a person of ordinary skill in the art to use the metal oxide particles of Thackeray with the composition of Takahashi in order to improve pattern transfer as taught by Thackeray, reading on instant claims 1, 13, and 21.
Takahashi teaches resin (D) is preferably 1,000 to 100,000, more preferably 1,000 to 50,000, and even more preferably 2,000 to 15,000 [0642]. Takahashi further teaches examples of resin (D) such as HR-1 [0648] with a molecular weight of 4900, well within the instant claimed range, reading on instant claim 20.
Regarding claim 3,
Takahashi teaches a film formed from their composition has a receding contact angle that is preferably 60° to 90°, and more preferably 70° or more [0818], overlapping the instant claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 4,
Takahashi teaches the content of the fluorine atoms in their resin (D) is preferably 5-80% by mass and that the repeating unit with fluorine is preferably 10 to 100 mol% [0639]. While silent to a wt.% of a fluorocarbon pendant group excluding the polymer backbone and linking group, it would be reasonable to a person of ordinary skill in the arts that the fluorine pendant groups of Takahashi would overlap the instant claimed range of 0.1 to 10 wt.%. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 17,
Takahashi teaches the content of the fluorine atoms in their resin (D) is preferably 5-80% by mass and that the repeating unit with fluorine is preferably 10 to 100 mol% [0639]. While silent to a wt.% of a fluorocarbon pendant group excluding the polymer backbone and linking group, it would be reasonable to a person of ordinary skill in the arts that the fluorine pendant groups of Takahashi would overlap the instant claimed range of 0.1 to 10 wt.%. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 16,
Takahashi teaches resin (D) may include a repeating unit with group (x) which may be a carboxylic acid group such as the following containing an OH group [0608-0612].
PNG
media_image7.png
83
90
media_image7.png
Greyscale
Takahashi further teaches repeating unit with group (x) is preferably 1 to 50 mol %, more preferably 3 to 35 mol %, and even more preferably 5 to 20 mol %, based on all the repeating units in hydrophobic resin (D). While silent to wt.%, it would be reasonable to a person of ordinary skill in the art that the polar group -OH have a wt.% that overlaps the instant claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (US20150111154A1, published 2015) in view of DiPietro (US 20100062368 A1) and Thackeray (US20170031244A1, Published 02/02/2017) as applied to claim 1 above, and further in view of Tsubaki (US20180217503A1, with a priority date of 9/30/2015).
Regarding claim 2,
Takahashi et al fail to teach forming a film with a thickness of 0.1-20 nm.
Tsubaki teaches a similar resist film forming composition comprising a hydrophobic resin, acid generator and solvent, and is formed with a thickness of 5-300 nm [0230, 0577], overlapping the instant claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
It would have been obvious to a person of ordinary skill in the art that the composition of Takahashi could be used to form a film thickness of 5-300 nm as taught by Tsubaki, as both teach similar resist composition comprising a hydrophobic resin.
Response to Arguments
Applicant's arguments filed 02/10/2026 regarding the amendments to claims 1 and 13 have been fully considered but they are not persuasive. However, the applicant’s arguments with respect to the amendments to claim 7 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of DiPietro. The above rejections have been updated to account for the new claim amendments.
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.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.N.L./Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734