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 .
Response to Arguments
1. Applicant’s arguments, see page 8, line 16, filed 11 December 2025, with respect to the rejection of Claims 1-2, 6-11, and 15-17 under 35 U.S.C. 103 as being unpatentable over by Nihashi et al. (United States Patent Publication No. US 2021/0011380 A1), hereinafter Nihashi, in view of Woods et al. (United States Patent Publication No. US 2005/0101689A1), hereinafter Woods; have been fully considered but they are not persuasive. Applicant argues that by incorporating the limitations of Claim 6, i.e. the further limitation of a fourth repeating unit comprising the polymer would overcome the rejection of record Nihashi in view of Woods. The limitation of Claim 6 is already taught in the same working examples of Nihashi as stated in the prior Office Action Paragraph #8: “Nihashi teaches (Tables 1-10, particularly Compositions 66 and 87) the polymer further comprises a fourth repeating unit comprising a polar group, wherein the polar group is pendant to the backbone of the polymer.” Clearly, the cited working examples of Nihashi teach the first and fourth repeating units limited by the present application’s claims, i.e. monomer M9 of Nihashi is within the scope of the first repeating unit of the present application and M13 & M14 of Nihashi are within the scope of the fourth repeating unit of the present application. The third repeating unit of the present application includes the limitation that it is different from the second repeating unit of the present application. The prior Office Action states that Woods teaches the inclusion of a second repeating unit of the present application. Thus, given this teaching by Woods, monomers M50 and M62 of Nihashi are within the scope of the third repeating unit of the present application. Thus, as previously stated in the prior Office Action, Nihashi in view of Woods teaches the first, second, third and fourth repeating units of the present application. Applicant further argues that that the newly claimed mole fractions of the first, second, third and fourth repeating units of the present application are not taught by the prior art. That is addressed below. Furthermore, Applicant argues that the disclosure of Claim 1, as amended, achieves unexpected results. The claims permit an exponential number of polymeric possibilities with variable substituents in any amount of a first repeating unit therein limited, a second repeating unit therein limited, and a third repeating unit therein limited. Furthermore, the polymer of the present application is limited using open-ended language, i.e. “comprising,” thus any number of other repeating units outside of the scope of the first, second, or third repeating units limited therein could comprise the polymer and it still be within the scope of the claim. Also, the claim has an unlimited photoacid generator, and an unlimited solvent. Also, as with the polymer, the composition also uses open-ended language, i.e. “comprising,” thus any number of components other than those limited by claim 1 of the present application could comprise the composition and it would still be within the scope of the claim. 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. Thus, Applicant’s argument is not persuasive and this rejection is maintained.
Claim Rejections - 35 USC § 112
2. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
3. Independent Claim 1 and Dependent Claims 2, 7-11, and 16-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant was amended on 06 February 2025 Claim 1 to add the further limitations to the second repeating unit of the present application including the limitation that “R10 [of Formula (3) of the present application] is substituted or unsubstituted C1-20 alkyl, substituted or unsubstituted C3-20 cycloalkyl, or substituted or unsubstituted C3-20 heterocycloalkyl, provided that R10 does not comprise fluorine.” (emphasis added) Applicant cited the prior Claims 4 and 5 as providing support for the amendment. The prior Claims 4 and 5 of the present application makes no mention of the added limitation that R10 does not comprise fluorine. Furthermore, a search of the specification similarly finds no such limitation to R10 of Formula (3) of the present application. MPEP § 2173.05(i) states: “Rather, as with positive limitations, the disclosure must only 'reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.' ...” Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 2022 USPQ2d 569 (Fed. Cir. 2022). While Examiner finds proper support for the exemplary second repeating units listed in the present application, Applicant has not reasonably conveyed that they were in possession of the presently claimed subject matter. For purposes of compact prosecution, Claim 1 will be interpreted to read without the added limitation that R10 of Formula (3) does not comprise fluorine.
Claim Rejections - 35 USC § 103
4. 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:
5. 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.
6. Claims 1-2, 7-11, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over by Nihashi et al. (United States Patent Publication No. US 2021/0011380 A1), hereinafter Nihashi, in view of Woods et al. (United States Patent Publication No. US 2005/0101689 A1), hereinafter Woods.
7. Regarding Claims 1-2, 7-11, and 16-21, Nihashi teaches (Tables 1-10, particularly Compositions 66 and 87) a polymer comprising a first repeating unit derived from a first monomer comprising a substituted lactone, wherein the first repeating unit comprises a lactone ring derived from the substituted lactone and wherein a carbon atom of the lactone ring forms a part of a backbone of the polymer. Nihashi teaches (Tables 1-10, particularly Compositions 66 and 87) a polymer comprising a second repeating unit derived from a second monomer comprising an acetal group. Nihashi teaches (Tables 12-15, particularly Compositions 66 and 87) a photoacid generator. Nihashi teaches (Paragraph [0509]) a solvent. Nihashi teaches (Tables 1-10, particularly Compositions 66 and 87) the first monomer is of Formula (1) of the present application. Nihashi teaches (Tables 1-10, particularly Compositions 66 and 87) the polymer further comprises a fourth repeating unit comprising a polar group, wherein the polar group is pendant to the backbone of the polymer. Nihashi teaches (Tables 1-10, particularly Compositions 66 and 87) a photo-decomposable quencher or a basic quencher, therein an acid diffusion control agent. Nihashi teaches (Paragraphs [0510-0517]) applying a layer of the photoresist composition on a substrate to provide a photoresist composition layer. Nihashi teaches (Paragraphs [0510-0517]) pattern-wise exposing the photoresist composition layer to activating radiation to provide an exposed photoresist composition layer. Nihashi teaches (Paragraphs [0510-0517]) developing the exposed photoresist composition layer to provide a photoresist pattern. Nihashi teaches (Paragraphs [0510-0517]) the photoresist composition layer is exposed to 193 nm radiation or EUV radiation.
Nihashi teaches (Tables 1-10, particularly Composition 66) the second monomer is represented by Formula (2) of the present application, Formula (3) of the present application, or a combination thereof.
Nihashi teaches (Tables 1-10, particularly Composition 66) the polymer further comprises a third repeating unit derived from a monomer of Formula (3) of the present application. Nihashi teaches (Tables 1-10, particularly Compositions 66 and 87) the polymer comprises 20 mol% of the first repeating unit. Nihashi teaches (Paragraph [0139]) the polymer comprises 50 mol% of the third repeating unit. Nihashi teaches (Tables 1-10, particularly Compositions 66 and 87) the photoacid generator comprises a sulfonium salt or an iodonium salt.
8. However, Nihashi fails to explicitly teach the second monomer is represented by Formula (2) of the present application, Formula (3) of the present application, or a combination thereof, wherein said Formulae comprise an ester acetal group that does not comprise fluorine. Furthermore, Nihashi fails to explicitly teach the polymer further comprises a third repeating unit structurally different from a monomer of Formula (2) of the present application in addition to Formula (3) of the present application. Furthermore, Nihashi fails to explicitly teach the polymer comprises 3-30 mol% of the second repeating unit.
9. Woods teaches (Table 3) Formula (2) of the present application, Formula (3) of the present application, or a combination thereof, wherein said Formulae comprise an ester acetal group that does not comprise fluorine. Woods teaches (Table 3) the polymer further comprises a third repeating unit structurally different from a monomer of Formula (2) of the present application in addition to Formula (3) of the present application. Woods teaches (Paragraph [0026]) the polymer comprises 5-30 mol% of the second repeating unit. Woods teaches (Paragraph [0059]) the polymer therein has improved decomposition properties.
10. 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 Nihashi to incorporate the teachings of Woods wherein the polymer further comprises Formula (2) of the present application, Formula (3) of the present application, or a combination thereof, wherein said Formulae comprise an ester acetal group that does not comprise fluorine; the polymer further comprises a third repeating unit structurally different from a monomer of Formula (2) of the present application in addition to Formula (3) of the present application; and the polymer comprises 5-30 mol% of the second repeating unit. Doing so would result in improved decomposition properties, as recognized by Woods.
Conclusion
11. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
12. 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 extension fee 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 date of this final action.
13. 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.
14. 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
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