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 .
Election/Restrictions
Claims 16-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/24/2024.
Claim status
No claim(s) is/are currently amended. Claims 3-4 have been canceled. Claim(s) 1-2 and 5-18 is/are pending with claim(s) 16-17 withdrawn from consideration. Claim(s) 1-2, 5-15 and 18 is/are under examination in this office action.
Response to Arguments
Applicant's argument, filed on 6/29/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that one would not have been led to have modified Tsutomu based on the teachings of Misumi with any reasonable expectation of success. First, Tsutonu is directed to positive development. The example disclosed in paragraph [0186] Tsutomu only illustrates positive development, and thus it is clear that Tsutomu is directed solely to the positive development. Misumi, on the other hand, relates to a cured film capable of negative development with a low concentration alkali developer. One looking for modifications to the Tsutomu composition thus would not have looked to Misumi for any relevant teachings in view of the different intended functionality. Furthermore, Tsutomu (and Ogihara) are directed to inventions regarding resist underlayer films, involving the use of polysiloxanes with film thicknesses on the nanometer scale (nm), whereas Misumi involves the use ofpolysiloxanes with film thicknesses on the micrometer scale (pm) (see paragraph [0164] of Misumi). In lithography, particularly where fine processing is required (e.g., EUV lithography), problems such as pattern collapse are likely to occur when a film is thick and a pattern is fine. Therefore, when a material with a large film thickness is used as in Misumi, it would be difficult to achieve a favorable pattern formation that is the objective of Tsutomu. In addition, Misumi is intended for use as insulating films and protective films. See paragraph [0020]. The Examples in Misumi disclose patterning on the micrometer scale (pm), confirming that Misumi is not intended for fine pattern formation.
In response, even though the examples disclose positive development, Tsutomu does not teach away from negative development. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure (see MPEP 2123). One of ordinary skill in the art at the time of filing would not be disencouraged to combine Misumi with Tsutomu simply because Misumi teaches negative development. The common issue faced to both Tsutomu and Misumi is the catalyst used for silane hydrolysis. This has nothing to do with positive development type composition or negative development type composition, has nothing to do with film thicknesses. Besides, both Tsutomu and Misumi are in the same field of endeavor of photosensitive composition used in interlayer insulating films in semiconductor devices. It is sufficient to motivate one of ordinary skill in the art at the time of filing to combine Misumi and Tsutomu because they are in the same field of endeavor and pertinent to the same problem.
Applicant argued that Tsutomu, as recited in claim 1, requires a step of effecting hydrolytic condensation of a hhydrolyzable silicon compound in the presence of a basic catalyst and thensubstantially removing the basic catalyst. Thus, Tsutomu intentionally excludes the presence of a basic catalyst in the silicon-containing compound, and describes disadvantages associated with the compound itself having basicity. Consequently, a person skilled in the art understanding these teachings of Tsutomu would not have proceeded contrary and adopted use of an alkoxysilane having an amino group therein.
In response, Tsutomu teaches the use of basic catalyst for silicon compound hydrolysis condensation. The basic catalyst is afterwords removed. There is no reason why the alkoxysilane having amino group as the basic catalyst cannot be removed afterwards.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-2, 5-15 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsutomu et al (JP 2008019423 A, machine translation is referenced herein) in view of Ogihara et al (US 20170154766 A1) and Misumi et al (US 20200301277 A1).
Regarding claims 1 and 5-6, Tsutomu teaches a composition for forming a silicon-containing photoresist film comprising (A-1) a silicon-containing compound obtained by subjecting a hydrolyzable silicon compound to hydrolysis condensation using an acid catalyst, (A-2) a silicon-containing compound obtained by subjecting a hydrolyzable silicon compound to hydrolysis condensation using an basic catalyst, and (D) an organic solvent [claim 1].
Tsutomu teaches that silane compound in (A-2) is represented by formula (3) [0093] as specified in [0052] to [0071]:
R1m1R2m2R3m3Si(OR)(4-m1-m2-m3),
wherein R is an alkyl having 1 to 3 carbon atoms, R1, R2, and R3 are each hydrogen or a monovalent organic group having 1 to 30 carbon atoms, including linear or branched alkyl group (e.g., methyl group), cyclic alkyl groups (e.g., cyclopentyl group), or replaced by an epoxy group; and m1, m2, and m3 are each 0 or 1.
Tetrafunctional hydrolyzable silane (i.e., having four alkoxysilyl group) only exists when m1=0, m2=0, and m3=0 [0055].
Examples of the (A-2) include trialkoxysilanes with m1=1,m2=0,m3=0 [0056], dialkoxysilane with m1=1,m2=1,m3=0 [0058], and monoalkoxysilane with m1=1,m2=1,m3=1 [0060]. Tetrafunctional hydrolyzable silane are 0% in these examples. Tsutomu teaches cyclohexyltrimethoxysilane etc. [0056], containing cyclohexyl as an alicyclic group. Tsutomu is silent about the claimed cycloheptyl group, etc.
Cyclohexyl and cycloheptyl are homologs - compounds differing regularly by the successive addition of the same chemical groups, in the present instance, a -CH2- group. Homologs “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Additionally, Tsutomu’s cyclohexyl has the same utility as the claimed cycloheptyl: being part of a hydrolysis condensate.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979); MPEP 2144.09.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Tsutomu to select cycloheptyl as a homolog of cyclohexyl, as cycloheptyl and cyclohexyl are expected to possess similar properties and have similar utility.
The modified (A-2) meets the claimed Formula (1) wherein R1 is cycloheptyl group (alicyclic group), a=1, b=0, R3 is methoxy group.
The examiner submits that the (A-1) reads on the claimed (B); the modified (A-2) reads on the claimed (A); and the (D) reads on the claimed solvent.
Tsutomu teaches that silane compound in (A-1) is also represented by formula (3); and tetraalkoxysilane exists when m1=0,m2=0,m3=0 [0052, 0055].
Tsutomu does not teach that the hydrolyzable silane compound (A-1) includes a tetrafunctional hydrolyzable silane in an amount of 50% by mole or more relative to an entire amount of the hydrolyzable silane compound (A-1).
In the same field of endeavor, Ogihara teaches a silicon-containing condensate used to form photoresist films [0023] comprising a polysiloxane derived from a tetrafunctional hydrolyzable monomer, in a ratio of 50 mol % or more of all the repeating unit in the polysiloxane compound [0020, 0110]. The hydrolysis condensation uses acidic catalyst [0065].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a composition for forming a silicon-containing photoresist film according to Tsutomu including a polysiloxane derived from a tetrafunctional hydrolyzable monomer (A-1), in a ratio of 50 mol % or more of all the repeating unit in the polysiloxane compound using acidic catalyst, as Ogiwara demonstrates this range to be suitable for similar composition for forming a silicon-containing photoresist film. This represents the use of a suitable range of tetrafunctional hydrolyzable monomer in a polysiloxane which is compositionally similar to that of Ogiwara and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Tsutomu does not teach that the basic hydrolysis catalyst is a hydrolyzable silane containing an amino-group-containing organic group.
In the same field of endeavor, Misumi teaches a photosensitive composition used in interlayer insulating films in semiconductor devices [0020] (also see Tsutomu’s teaching in claim 15 rejection above). The composition comprises polysiloxane [0010] which can be produced in a manner where a silane compound is hydrolyzed in the presence of an acidic or basic catalyst and then condensed [0046]. Examples of the basic catalyst include alkoxysilane having amino group [0058].
It would have been obvious to one of ordinary skill in the art at the time of filing to select alkoxysilane having amino group as the basic catalyst in Tsutomu’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
An alkoxysilane having amino group reads on the claimed hydrolyzable silane containing an amino-group-containing organic group, because the alkoxy group in the alkoxysilane is hydrolysable.
Regarding claim 2, Tsutomu teaches that (A-2) can be 20 parts to 50 parts with respect to 100 parts of (A-1) by mass [0114]. This represents a ratio of (A-2) : (A-1) being 1/5 to 1/2, meeting the claimed range of 1 : 1 to 1 : 20.
Regarding claim 7, Tsutomu teaches that silane compound in (A-1) is represented by formula (3) [0051] to [0071]:
R1m1R2m2R3m3Si(OR)(4-m1-m2-m3),
wherein R is an alkyl having 1 to 3 carbon atoms, R1, R2, and R3 can be linear or branched alkyl group (e.g., methyl group), or replaced by an epoxy group; and m1, m2, and m3 are each 0 or 1.
The examiner submits that the R1, R2, and R3 read on the claimed R4, m1+m2+m3 reads on the claimed c, and OR reads on the claimed R5.
Regarding claim 8, Tsutomu teaches tetramethoxysilane [0055], which reads on the claimed Formula (2) wherein c=0, R5 is methoxy group.
Regarding claim 9, Tsutomu teaches molecular weights of (A-1) being 2,000 [0171], (A-2) being 100,000 [0178], falling within the claimed ranges of 500-1,000,000.
Regarding claim 10, Tsutomu teaches that the solvent contains water [0088].
Regarding claim 11, Tsutomu teaches that the composition comprises (C) organic acid [claim 1].
Regarding claim 12, Tsutomu teaches that the composition further comprises a photoacid generator [claim 5].
Regarding claim 13, Tsutomu teaches that the organic acid can be added to adjust pH [0116]. Thus, the organic acid meets the claimed pH adjuster, as evidenced by the applicant [0114 and 0136 spec.].
Regarding claim 14, Tsutomu teaches that the composition further comprises a surfactant [0147].
Regarding claim 15, the recited “the composition is for forming a resist underlayer film for EUV lithography” represents a statement of intended use that imparts no additional structure beyond the claimed composition and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III). Nevertheless, Tsutomu teaches that the composition is used for underlayer photo resist film [0115], forming a pattern by photolithography using light having wavelengths of 300nm or less [claim 15 and 0048], which overlaps the EUV (extreme ultraviolet rays).
Regarding claim 18, Tsutomu teaches that (A-2) can be trimethoxysilane [0056], where the trifunctional hydrolyzable silane is present in an amount of 100 mol%.
Conclusion
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).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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