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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 29 June 2026 has been entered.
Response to Arguments
2. Applicant’s arguments, see page 11, line 7, filed 22 May 2026, with respect to the rejection of Claims 17, 19-20, and 23-33 under 35 U.S.C. 102(a)(1) as being anticipated by Shimizu et al. (World Intellectual Property Organization (WIPO) Publication no. WO 2008/066011 A1), hereinafter Shimizu; Claims 21-22 and 34-36 under 35 U.S.C. 103 as being unpatentable by Shimizu et al. (World Intellectual Property Organization (WIPO) Publication no. WO 2008/066011 A1), hereinafter Shimizu; and Claim 20 under 35 U.S.C. 103 as being unpatentable by Shimizu et al. (World Intellectual Property Organization (WIPO) Publication no. WO 2008/066011 A1), hereinafter Shimizu; and further in view of Hashimoto et al. (Japanese Patent Publication no. JP 2008-249993 A), hereinafter Hashimoto; have been fully considered but they are not persuasive. Applicant argues that the amendments to independent Claim 17 overcomes the rejection of record, stating “The polymer relied upon from paragraph 106 of the Shimuzu reference does not meet the requirements of the polymer as amended here in claim 17. As a result it does not anticipate the claim, and withdrawal is respectfully requested.” This is not persuasive. Paragraph [0106] of Shimuzu states: “Further, as a result of 13C NMR analysis, the copolymerization molar ratio of 4-hydroxystyrene (1), acrylic acid t-butyl (2) and styrene (3) was (1): (2): (3) = 61:19:20. This resin is referred to as "resin (B-2).” This resin (B-2) of the prior art is clearly within the scope of the claim as amended. Firstly, while Applicant has amended Claim 17 wherein it’s “the polymer (A) comprises: a structural unit represented by formula (P-1) . . ., a structural unit represented by formula (P-2) . . ., and a structural unit represented by formula (P-3).” (emphasis added) While amending “or” to “and” may seem to make a meaning amendment, the unamended values of “np1,” “np2,” and “np3” of the present application were already greater than zero, that already required structural units of formulae (P-1), (P-2), and (P-3) of the present application. Secondly, by amending Rp4 of formula (P-2) of the present application but not amending the value of m3, i.e. m3 can still be zero, this fails to overcomes the teaching of styrene in the aforementioned Paragraph [0106] of the prior art. 4-hydroxystyrene of the prior art is within the scope of formula (P-1) of the present application, acrylic acid t-butyl is within the scope of formula (P-3) of the present application and styrene is within the scope of formula (P-2) of the present application and the relative amounts of each are also within the scope of independent Claim 17. Thus, Applicant’s arguments are not persuasive and the rejection of record is maintained.
Claim Rejections - 35 USC § 102
3. 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.
4. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
5. A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale,
or otherwise available to the public before the effective filing date of the claimed invention.
6. Claims 17, 19-20, and 23-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shimizu et al. (World Intellectual Property Organization (WIPO) Publication no. WO 2008/066011 A1), hereinafter Shimizu.
7. Regarding Claims 17, 19-20, and 23-33, Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) a polymer. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) a deprotecting agent, therein triphenylsulfonium trifluoromethanesulfonate. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) a photoreaction quencher, therein triphenylsulfonium salicylate. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) a solvent, therein ethyl lactate and propylene glycol monomethyl ether acetate. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the photoreaction quencher is represented by formula (C-1) of the present application, therein triphenylsulfonium salicylate. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the Cm+ cation of formula (C-1) of the present application consists of at least one cation selected from the group consisting of a cation represented by the formula (CC1) of the present application and a cation represented by the formula (CC2) of the present application. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the Cm- anion of formula (C-1) of the present application consists of at least one anion selected from an anion represented by formula (CA) of the present application. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the polymer comprising the structural units represented by the formula (P-1) of the present application; the structural unit represented by the formula (P-2) of the present application; and the structural unit represented by the formula (P-3) of the present application, therein 4-hydroxystyrene : styrene : acrylic acid t-butyl, respectively. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) wherein np1, np2, and np3 are the repetition numbers respectively of the formulae (P1), (P2), and (P3) of the present application, wherein np1 / (np1 + np2 + np3)] = 61%, np2 / (np1 + np2 + np3)] = 20%, and np3 / (np1 + np2 + np3) = 19%. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the deprotecting agent is represented by the formula (B-1) of the present application. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the Bm+ cation of formula (B-1) of the present application consists of a cation represented by the formula (BC1) of the present application. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the Bm- anion of formula (B-1) of the present application consists an anion represented by formula (BA2) of the present application. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the deprotecting agent releases an acid having an acid dissociation constant pKa (H2O) of −20 to 1.4 upon exposure. Shimizu teaches (Paragraphs [0090-0096, 0106 and 0112-0113], Table 1) the composition further comprises a basic compound, therein acid diffusion control agent, and the basic compound is ammonia, a C1-16 primary aliphatic amine compound, a C2-32 secondary aliphatic amine compound, a C3-48 tertiary aliphatic amine compound, a C6-30 aromatic amine compound or a C5-30 heterocyclic amine compound. Shimizu teaches (Paragraphs [0090-0096, 0106 and 0112-0113], Table 1) the content of the basic compound is 0 mass % based on the total mass of the polymer. Note: given that the amount of the basic compound can be 0%, Shimizu teaches these limitations by not teaching the basic compound in the same composition. Shimizu teaches (Paragraphs [0090-0096, 0106 and 0112-0113], Table 1) the base dissociation constant pKb (H2O) of the basic compound (E) is −12 to 5. Shimizu teaches (Paragraphs [0090-0096, 0106 and 0112-0113], Table 1) the molecular weight of the basic compound is 17 to 500. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the photoreaction quencher releases a weak acid having an acid dissociation constant pKa (H2O) of 1.5 to 8 upon exposure. Regarding pKa and pKb, MPEP § 2112(I) states: “’[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).” The present set of claims of the present application claims pKa and pKb values, which are intrinsic, inherent properties of a material. Given that Shimizu teaches the compounds within the limits of the claims, and once a reference teaches a product to be substantially identical and within the scope of the claims of the present application, inherency is assumed and the burden of proof that said property is not taught shifts to the applicant. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the mass average molecular weight (Mw) of the polymer is 11,500. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the molecular weight of the deprotecting agent is 412.44. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the molecular weight of the photoreaction quencher is 400.49. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the composition further comprises a plasticizer and further comprises an additive, which is at least one selected from the group consisting of surfactants, dyes, contrast enhancers, acids and substrate adhesion enhancers. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the content of the plasticizer is 0 mass % based on the total mass of the polymer (A). Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) the content of the additive (G) is 0% by weight based on the total weight of the polymer (A). Note: given that the amount of the plasticizer and the additive can be 0%, Shimizu teaches these limitations by not teaching the plasticizer or the additive in the same composition. Shimizu teaches (Paragraphs [0106 and 0112-0113], Table 1) solvent is a combination of an ether solvent, therein propylene glycol methyl ether acetate, and an ester solvent, therein ethyl lactate. Shimizu teaches (Paragraph [0116]) the thick film resist composition is a positive type chemically amplified thick film resist composition.
8. Regarding Claims 31-36, Shimizu teaches (Paragraphs [0106 and 0111-0113], Table 1) applying the composition above a substrate. Shimizu teaches (Paragraphs [0106 and 0111-0113], Table 1) heating the composition to form a resist film. Shimizu teaches (Paragraphs [0106 and 0111-0113], Table 1) the heating is performed at 100° C. Shimizu teaches (Paragraphs [0106 and 0111-0113], Table 1) exposing the resist film. Shimizu teaches (Paragraphs [0106 and 0111-0113], Table 1) developing the resist film.
Claim Rejections - 35 USC § 103
9. 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:
10. 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.
11. Claims 21-22 and 34-36 are rejected under 35 U.S.C. 103 as being unpatentable by Shimizu et al. (World Intellectual Property Organization (WIPO) Publication no. WO 2008/066011 A1), hereinafter Shimizu.
12. Regarding Claim 21-22 and 34-36, Shimizu teaches (Paragraph [0001]) a light source of 248 nm±1% or 193 nm 1% is used upon exposure to be performed later. Shimizu teaches (Paragraphs [0099, 0106 and 0112-0113], Table 1) the content of the polymer (A) is 10 to 60 mass % based on the total mass of the composition. Shimizu teaches (Paragraphs [0099, 0106 and 0112-0113], Table 1) the content of the photoreaction quencher is 2.5 mass % based on the total mass of the polymer. Shimizu teaches (Paragraphs [0057, 0106 and 0112-0113], Table 1) the content of the deprotecting agent is 0.05 to 5 mass % based on of the total mass of the polymer. Shimizu teaches (Paragraphs [0099, 0106 and 0112-0113], Table 1) the content of the solvent is 50 to 90 based on the total mass of the composition. Shimizu teaches (Paragraphs [0106 and 0111-0113], Table 1) wherein ITW, FTW, IBW, and FBW satisfy: ITW−FTW≤400 nm, and/or IBW−FBW≤50 nm. Herein, MPEP § 2144.05(II) states: “[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). The present set of claims of the present application involve the photolithographic processing of a resist composition. Given that Shimizu teaches all claimed compounds to the present application, and the photolithographic processing thereof, meeting said metrics of the pattern produced thereof would be the process of routing optimization. Shimizu teaches (Paragraphs [0106 and 0111-0113], Table 1) processing with the resist pattern as a mask, which is processing an underlayer film or a substrate. Shimizu teaches (Paragraphs [0106, 0111-0113 and 0116], Table 1) manufacturing a device.
13. However, Shimizu fails to explicitly teach all components of the composition limited by the present application with a single experimental example. That said, all components of the composition are described with sufficient detail by the prior art. Thus, a person of ordinary skill in the art in view of Shimizu would have found it would only require a simple substitution of one known element or amount for another with respect to the combinations of components herein limited with the results of the substitution would have been predictable.
14. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable by Shimizu et al. (World Intellectual Property Organization (WIPO) Publication no. WO 2008/066011 A1), hereinafter Shimizu; and further in view of Hashimoto et al. (Japanese Patent Publication no. JP 2008-249993 A), hereinafter Hashimoto.
15. Regarding Claim 20, Shimizu teaches all limitations of Claim 17 above. However, Shimizu fails to explicitly teach the resist film having film thickness of 1 to 25 μm.
16. Hashimoto teaches (Paragraph [0087]) the resist film having film thickness of 5 to 25 μm. Hashimoto teaches (Paragraph [0007]) a thick resist film having improved crack resistance.
17. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shimizu to incorporate the teachings of Hashimoto wherein the resist film having film thickness of 5 to 25 μm. Doing so would result in the resin film having improved crack resistance, as recognized by Hashimoto.
Conclusion
18. 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.
19. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH D HENDRICKS can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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21. 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.
/RICHARD DAVID CHAMPION/Examiner, Art Unit 1737
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