DETAILED ACTION
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 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.
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 1-4, 10, 12-15, 17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (JP 2013-234313) using the English language translation provided on the Notice of References Cited for the citations in view of Amstutz et al. (US 2019/0322799) and Ohnishi et al. (US 2016/0186006).
Regarding claim 1: Yoshida et al. teaches a method for producing a polymer comprising reacting (para. 195) an epoxy compound having two epoxy groups in a molecule (para. 38, chemical formula 5), a reactive compound having two functional groups reactive with an epoxy group in the molecule (para. 110) in the presence of a polymerization catalyst and a co-catalyst (para. 154), including onium salts (para. 153) and tertiary amines (para. 151). Yoshida et al. further teaches an organic solvent (para. 191). Yoshida et al. teaches a container/sheet shaped mold (para. 193). Yoshida et al. teaches making the hardening epoxy resin composition by heating at 130-230 °C for 1-10 hours (para. 212), which overlaps the claimed ranges. This limitation is also disclosed in paragraph 197, which teaches that a hardening epoxy resin composition is obtained by heating the epoxy resin composition or the aforementioned semi-hardening epoxy resin composition of an uncured state at 130 degrees C – 230 degrees C for 1 hour to 10 hours or 1 hour to 8 hours. The designation of “epoxy resin composition” in contrast to “the aforementioned semi-hardening epoxy resin composition of an uncured state”, indicates that the organic solvent is present in the epoxy resin composition, since paragraph 191 teaches the epoxy resin composition may further include at least one kind of organic solvent. It could be argued that the composition that undergoes the “semi-hardening” step may no longer contain solvent if evaporation occurs, but the reference specifically distinguishes between the two (epoxy resin composition and semi-hardening epoxy resin composition) and indicates the method step claimed can be applied to either.
Yoshida et al. does not teach the co-catalyst of pyridine. However, Amstutz et al. teaches pyridine as a catalyst (para. 47). Yoshida et al. and Amstutz et al. are analogous art since they are both concerned with the same field of endeavor, namely reactions of epoxy compounds with epoxy-reactive compounds. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the pyridine of Amstutz et al. in the reaction of Yoshida et al. and would have been motivated to do so since it is known to speed the reaction of epoxy groups and carboxylic acid groups.
Yoshida et al. also does not teach the specifically claimed reactive compounds (B) as claimed. However, Ohnishi et al. teaches a similar method comprising the claimed component (B) (para. 20). Yoshida et al. and Ohnishi et al. are analogous art since they are both concerned with the same field of endeavor, namely epoxy resin reactions. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the dicarboxyl group containing compounds of Ohnishi et al. in the method of Yoshida et al. and would have been motivated to do so since Ohnishi et al. teaches a regular linear polymer is obtained which, when crosslinked, does not intermix with a resist (para. 8).
While some of the cited references may include monomers other than only an epoxy compound having two or more epoxy groups in the molecule and (B) one of the structures shown in claim 1, the word “comprising” transitioning from the preamble to the body signals that the entire claim is presumptively open-ended (MPEP 2111.03 I). Also, component (B) is defined such that the component is “at least one component selected from the group consisting of”, but as long as one of the Markush group compounds is present in (B), additional, unnamed monomers can also be considered as a part of component (B). Therefore, monomers that do not have the structure of (B1-1)-(B1-26), (B2-1)-(B2-12), (B3-1)-(B3-18), (B4-1)-(B4-4), or (B5-1)-(B5-11), but are also reactive to the epoxy group with two or more functional groups can be considered to be a part of component (B) as long as one of (B1-1)-(B1-26), (B2-1)-(B2-12), (B3-1)-(B3-18), (B4-1)-(B4-4), or (B5-1)-(B5-11) is also present.
Regarding claims 2, 3, and 4: Yoshida et al. teaches tetraphenylphosphonium tetraphenyl borate (para. 154)/an onium salt having one or more quaternary Group 15 element structures, which is phosphorous, wherein a substituent in the Group 15 element structure is an aryl group having 6 carbon atoms.
Regarding claim 10: Yoshida et al. teaches a diepoxy compound (para. 38, chemical formula 5).
Regarding claim 12: Yoshida et al. teaches the equivalent ratio of amine equivalent to epoxy equivalent of 0.5-2.0 (para. 149). When converted to the claimed ratio of epoxy groups to functional groups, this range is 1:0.5-1:2, which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). At the time of the invention a person having ordinary skill in the art would have found it obvious to use an overlapping ratio of the epoxy and the hardener and would have been motivated to do so since Yoshida et al. teaches it is an acceptable ratio to achieve the disclosed invention.
Regarding claim 13: Yoshida et al. teaches the mixing ratio can be decided by a person having ordinary skill in the art when using two or more kinds of hardening accelerators (para. 155). Also disclosed is 5.56 of epoxy resin monomer A, 0.03 mass% triphenylphosphine, 0.03 mass% tetraphenylphosphonium tetraphenyl borate (example 7). The epoxy resin monomer has a molecular weight of 424, the triphenyl phosphine has a molecular weight of 262 and the tetraphenylphosphonium tetraphenyl borate has a molecular weight of 659. The moles of the epoxy resin monomer are (5.56/424) = 0.01311, the moles of the triphenylphosphine are (0.03/262) = 1.145 x 10-4, and the moles of the tetraphenylphosphonium tetraphenyl borate are (0.03/659) = 4.55 x 10-5. Therefore, in 1 mole epoxy, there are 0.0122 moles catalyst and co-catalyst, which overlaps the claimed range.
Regarding claim 14: Yoshida et al. teaches methyl isobutyl ketone as a solvent (para. 191).
Regarding claim 15: Yoshida et al. teaches 5.56 mass % epoxy resin monomer A and 14.47 mass % and 3.08 mass % solvent (example 7). This is 3.29 parts by weight solvent to 1 part by weight component (A), which overlaps the claimed range.
Regarding claim 17: Yoshida et al. teaches a method comprising mixing the polymer obtained by the production method according to claim 1/an epoxy resin composition with an organic solvent (para. 200). The use of the resultant composition as a resist lower layer film forming composition is intended use and carries little patentable weight.
Regarding claim 21: Yoshida et al. teaches a weight average molecular weight of 564 (para. 262) or 2000 or less (para. 145), which overlaps the claimed range.
Claims 5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (JP 2013-234313) using the English language translation provided on the Notice of References Cited for the citations below, in view of Amstutz et al. (US 2019/0322799) as applied to claim 2 set forth above and in view of Kawai et al. (US 2012/0296011).
Regarding claims 5 and 18: Yoshida et al. teaches the basic claimed method as set forth above. Not disclosed is the counter anion claimed. However, Kawai et al. teaches a similar method using tetramethylammonium chloride (para. 53). Yoshida et al. and Kawai et al. are analogous art since they are both concerned with the same field of endeavor, namely epoxy reactions with quaternary salt accelerators. At the time of the invention a person having ordinary skill in the art would have found it obvious to use the salt of Kawai et al. in the composition of Yoshida et al. and would have been motivated to do so since it has high catalytic activity.
Response to Arguments
Applicant's arguments filed January 6, 2026 have been fully considered but they are not persuasive.
A) Applicant’s argument that the polymer is required to consist of only components (A) and (B) is addressed in the rejection above.
B) Applicant’s arguments directed to Piotrowski are moot as the reference has been removed and Amstutz et al. is used instead. This is due to the amendment since Amstutz et al. teaches epoxy-reactive monomers closer to the monomers shown in claim 1.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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