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 11, line 20, filed 23 March 2026, with respect to the rejection of Claims 17, 19-21, 23-28, and 31 under 35 U.S.C. 103 as being unpatentable over by Suzuki et al. (United States Patent Publication No. US 2019/0339614 A1), hereinafter Suzuki, in view of Liu et al. (United States Patent Publication No. US 2019/0064662 A1), hereinafter Liu; Claims 29-30 under 35 U.S.C. 103 as being unpatentable over by Suzuki et al. (United States Patent Publication No. US 2019/0339614 A1), hereinafter Suzuki, in view of Liu et al. (United States Patent Publication No. US 2019/0064662 A1), hereinafter Liu, and in further view of Nozaki et al. (United States Patent Publication No. US 2005/0269290 A1), hereinafter Nozaki; 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 Therefore, the rejection has been withdrawn.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 Kawamura et al. (United States Patent Publication No. US 2016/0291464 A1), hereinafter Kawamura.
2. Applicant’s arguments, see page 11, line 20, filed 23 March 2026, with respect to the rejection of Claims 17, 19-21, 23-28, and 31 under 35 U.S.C. 103 as being unpatentable over by Suzuki et al. (United States Patent Publication No. US 2019/0339614 A1), hereinafter Suzuki, in view of Liu et al. (United States Patent Publication No. US 2019/0064662 A1), hereinafter Liu; Claim 22 under 35 U.S.C. 103 as being unpatentable over by Suzuki et al. (United States Patent Publication No. US 2019/0339614 A1), hereinafter Suzuki, and in further view of Liu et al. (United States Patent Publication No. US 2019/0064662 A1), hereinafter Liu, and in further view of Kawamura et al. (United States Patent Publication No. US 2016/0291464 A1), hereinafter Kawamura; Claims 29-30 under 35 U.S.C. 103 as being unpatentable over by Suzuki et al. (United States Patent Publication No. US 2019/0339614 A1), hereinafter Suzuki, in view of Liu et al. (United States Patent Publication No. US 2019/0064662 A1), hereinafter Liu, and in further view of Nozaki et al. (United States Patent Publication No. US 2005/0269290 A1), hereinafter Nozaki; have been fully considered but they are not persuasive. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969) (See MPEP § 2143). The prior art teaches a mixture of Polymers P and Q of the present application and thus a person having ordinary skill in the art would understand that this would, at minimum, teaches a 1:1 ratio of Polymers P:Q and that ratio falls in the middle of the very broadly claimed ratios of respective masses of Polymers P and Q compared to their combined mass. Applicant argues that Suzuki fails to teach the addition of a Polymer Q of the present application. MPEP § 2144(II) citing In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983) states: “Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.” Thus, it is not necessary for the primary reference to contemplate the teaching of the secondary reference. In the present case, the secondary reference teaches a motivation to combine its teaching which may improve the composition of the primary reference which meets the requirements for teaching a motivation to combine. Furthermore, Applicant argues that Suzuki teaches a narrower range of the Polymer Q of the present application. Applicant cites paragraphs of Suzuki teaching an acrylic polymer, despite Polymer Q of the present application being a novolac/novolak polymer. Paragraph [0086] of Suzuki teaches the addition of a novolac/novolak polymer. Paragraph [0086] of Suzuki teaches that the additional novolac/novolak polymer preferably comprising as much as 20 parts per mass compared to 100 parts per mass of the other polymer component. MPEP § 2123(I) states: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).” Furthermore, Suzuki does not teach away from higher amounts of an additional novolac/novolak polymer, i.e. Suzuki doesn’t teach higher amounts of the additional novolac/novolak polymer renders the invention therein inoperative for its intended purpose.
3. Applicant further argues the present application found unexpected results not appreciated by the prior art. The claims permit an exponential number of polymeric possibilities with regards to Polymers P and Q of the present application, to say nothing of the very broadly limited acid generator and the very broadly limited dissolution rate modifier. 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. The working examples of the present application all use the same acid generator and the same dissolution rate modifier. Furthermore, only four exemplary examples of Polymer Q in the ten working example compositions of the present application. Furthermore, only one exemplary example of Polymer P (P1), one acid generator (B1), one dissolution inhibitor (C1), one solvent mixture, and one plasticizer (F1) is used in all ten working example compositions of the present application. Suffice to say, the objective evidence is not commensurate in scope with the claims of the present application. Indeed, it’s worth noting that both the exemplary polymer P, i.e. P1, of the present application appears to be identical to the exemplary polymer taught by Suzuki, therein Polymer A in Paragraph [0102], i.e. 60:20:20 hydroxystyrene:styrene:t-butyl acrylate.
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 17, 19-28, and 31-35 are rejected under 35 U.S.C. 103 as being unpatentable over by Suzuki et al. (United States Patent Publication No. US 2019/0339614 A1), hereinafter Suzuki, in view of Liu et al. (United States Patent Publication No. US 2019/0064662 A1), hereinafter Liu, and in further view of Kawamura et al. (United States Patent Publication No. US 2016/0291464 A1), hereinafter Kawamura.
7. Regarding Claims 17, 19-28, and 31-35, Suzuki teaches (Paragraphs [0022-0031 and 0102]) at least one polymer selected from the group consisting of a polymer comprising a repeating unit selected from the group consisting of the formulae (P-1) to (P-4) of the present application. Both the exemplary polymer P, i.e. P1, of the present application appears to be identical to the exemplary polymer taught by Suzuki, therein Polymer A in Paragraph [0102], i.e. 60:20:20 hydroxystyrene:styrene:t-butyl acrylate. Suzuki teaches (Paragraphs [0034-0066]) an acid generator. Suzuki teaches (Paragraphs [0080-0082]) a dissolution rate modifier, which is a compound in which two or more of phenol structures are bonded by a hydrocarbon group, therein a contrast enhancer. Suzuki teaches (Paragraphs [0032-0033]) a solvent. Suzuki teaches (Paragraphs [0068-0071]) a basic compound. Suzuki teaches (Paragraphs [0034-0066]) the content of the acid generator is 0.5 to 10 mass% based on the total mass of the composition. Further, Suzuki teaches (Paragraph [0033]) 100 to 900 mass% based on the total mass of the polymer (A). Thus, Suzuki teaches a minimum content of the acid generator of 0.5/100 composition, wherein the composition is otherwise 50:50 polymer:solvent, and thus 0.5/50 which equals 1.0 mass% content of the acid generator based on the total mass of the polymer (A). Furthermore, Suzuki teaches a maximum content of the acid generator of 10/100 composition, wherein the composition is otherwise 10:90 polymer:solvent, and thus 10/10 which equals 100 mass% content of the acid generator based on the total mass of the polymer (A). This overlaps with the claimed range of 0.1-10.0 mass% based on the total mass of the polymer (A). Suzuki teaches (Paragraphs [0022-0031]) the content of the polymer is 10 to 50 mass% based on the total mass of the composition. Suzuki teaches (Paragraphs [0080-0082]) the content of the dissolution rate modifier is 0.5 to 40 mass% based on the total mass of the polymer (A) and more preferably 1 to 20 mass% based on the total mass of the polymer (A). This overlaps with the claimed range of 0.1 to 20 mass% based on the total mass of the polymer (A). Suzuki teaches (Paragraphs [0032-0033]) the content of the solvent is 100 solvent/(100 solvent + 100 polymer (A) + 20 acid generator) = 100/220 or 45.45% to 900 solvent/(900 solvent + 100 polymer (A) + 5 acid generator) = 900/1005 or 89.55%. This range falls entirely within the claimed range of 40 to 90 mass% of solvent based on the total mass of the composition. Suzuki teaches (Paragraphs [0068-0071]) the content of the basic compound is 0 to 2 mass% based on the total mass of the polymer and more preferably 0.01 to 1 mass% based on the total mass of the polymer. This overlaps with the claimed range of 0 to 1 mass% of the basic compound based on the total mass of the polymer (A). Suzuki teaches (Paragraphs [0080-0082]) the dissolution rate modifier represented by the formula (c) of the present application. Suzuki teaches (Paragraphs [0068-0071]) the basic compound is selected from a group consisting of ammonia, C1-16 primary aliphatic amine, C2-32 secondary aliphatic amine, C3-48 tertiary aliphatic amine, C6-30 aromatic amine, C5-30 heterocyclic amine, and any derivatives thereof. Suzuki teaches (Paragraphs [0083-0088]) a plasticizer comprising a structural unit represented by the formula (f-1) of the present application. Suzuki teaches (Paragraphs [0090-0100]) is a positive type resist composition forming reverse tapered shape, given that this is a non-limiting intended use claim element. Suzuki teaches (Paragraphs [0090-0100]) a positive type lift-off resist composition, given that this is a non-limiting intended use claim element. Suzuki teaches (Paragraphs [0090-0100]) applying the composition above a substrate. Suzuki teaches (Paragraphs [0090-0100]) heating the composition to form a resist layer. Suzuki teaches (Paragraphs [0090-0100]) exposing the resist layer. Suzuki teaches (Paragraphs [0090-0100]) subjecting the resist layer to post exposure bake. Suzuki teaches (Paragraphs [0090-0100]) developing said resist layer. Suzuki teaches (Paragraph [0095]) the film thickness of said resist pattern is 0.9 to 15 µm. This overlaps with the claimed range of 1 to 50 µm of the film thickness of the resist pattern. Suzuki teaches (Paragraphs [0090-0100]) manufacturing a resist pattern. Suzuki teaches (Paragraphs [0080-0082]) the dissolution rate modifier is that of Claim 34 of the present application. Suzuki teaches (Paragraphs [0080-0082]) the content of the dissolution rate modifier is 0.5 to 40 mass% based on the total mass of the polymer (A) and more preferably 1 to 20 mass% based on the total mass of the polymer (A). This overlaps with the claimed range of 2.5 to 20 mass% based on the total mass of the polymer (A).
8. However, Suzuki fails to explicitly teach a polymer comprising a repeating unit represented by the formula (Q-1) of the present application. Furthermore, Suzuki fails to explicitly teach the acid generator is represented by the formula (b) of the present application. Furthermore, Suzuki fails to explicitly teach that provided that the total mass of the polymer comprising a repeating unit selected from the group consisting of the formulae (P-1) to (P-4) of the present application is (Mp) and the total mass of the polymer comprising a repeating unit represented by the formula (Q-1) of the present application is (Mq), 40 < Mp/(Mp+Mq) ≤ 50%; and 50 ≤ Mq/(Mp+Mq) < 60%. Furthermore, Suzuki fails to explicitly teach wherein, Nqa that is the number of the repeating unit of (Q-1a) of the present application, Nqb that is the number of the repeating unit of (Q-1b) of the present application, Nqc that is the number of the repeating unit of (Q-1c) of the present application, and Nqa that is the number of the repeating unit of (Q-1d) of the present application; 40% ≤ Nqa / (Nqa + Nqb + Nqc + Nqd) ≤ 60%; 30% ≤ Nqb / (Nqa + Nqb + Nqc + Nqd) ≤ 50%. Furthermore, Suzuki (alone) fails to explicitly teach the viscosity of the composition is 50 to 2,000 cP at 25°C. Furthermore, Suzuki fails to explicitly teach nb of formula (b) of the present application is 0.
9. Liu teaches (Paragraphs [0048-0051]) a polymer comprising a repeating unit represented by the formula (Q-1) of the present application. Liu teaches (Paragraphs [0048-0051]) 0-60% p-cresol, which is within the scope of the (Q-1b) repeating unit of the present application and 0-80% m-cresol, which is within the scope of the (Q-1a) repeating unit of the present application. Wherein Nqa that is the number of the repeating unit of (Q-1a) of the present application, Nqb that is the number of the repeating unit of (Q-1b) of the present application, Nqc that is the number of the repeating unit of (Q-1c) of the present application, and Nqd that is the number of the repeating unit of (Q-1d) of the present application, Liu thus teaches a Nqa / (Nqa + Nqb + Nqc + Nqd) between 0 and 80% and Nqb / (Nqa + Nqb + Nqc + Nqd) between 0 and 60%. The range of values of Nqa / (Nqa + Nqb + Nqc + Nqd) and Nqb / (Nqa + Nqb + Nqc + Nqd) taught by Liu overlaps with the claimed ranges of 40% ≤ Nqa / (Nqa + Nqb + Nqc + Nqd) ≤ 60%; 30% ≤ Nqb / (Nqa + Nqb + Nqc + Nqd) ≤ 50%. Liu teaches (Paragraph [0006]) such novolac polymer composition does not have photosensitivity problems that other polymer compositions have.
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 Suzuki to incorporate the teachings of Liu wherein a polymer comprising a repeating unit represented by the formula (Q-1) of the present application; that provided that the total mass of the polymer comprising a repeating unit selected from the group consisting of the formulae (P-1) to (P-4) of the present application is (Mp) and the total mass of the polymer comprising a repeating unit represented by the formula (Q-1) of the present application is (Mq), 40% < Mp/(Mp+Mq) ≤ 50% and 50% ≤ Mq/(Mp+Mq) < 60%; wherein Nqa that is the number of the repeating unit of (Q-1a) of the present application, Nqb that is the number of the repeating unit of (Q-1b) of the present application, Nqc that is the number of the repeating unit of (Q-1c) of the present application, and Nqd that is the number of the repeating unit of (Q-1d) of the present application; 40% ≤ Nqa / (Nqa + Nqb + Nqc + Nqd) ≤ 60%; 30% ≤ Nqb / (Nqa + Nqb + Nqc + Nqd) ≤ 50%. Doing so would result in a photosensitive composition without the photosensitivity problems that other polymer compositions have, as recognized by Liu.
11. Suzuki in view of Liu teaches a combination of the Polymer P of the present application and the Polymer Q of the present application and thus a person having ordinary skill in the art would understand that this would, at minimum, that their teaching in combination would teach a 1:1 ratio of Polymers P:Q. Or put alternatively that provided that the total mass of the polymer P comprising a repeating unit selected from the group consisting of the formulae (P-1) to (P-4) of the present application is (Mp) and the total mass of the polymer Q comprising a repeating unit represented by the formula (Q-1) of the present application is (Mq), Suzuki in view of Liu, at minimum, teaches Mp/(Mp+Mq) = 50%; and Mq/(Mp+Mq) = 50%, which falls in the middle of the very broadly claimed ratios of respective masses of Polymers P and Q of 40% < Mp/(Mp+Mq) ≤ 50%; 50% ≤ Mq/(Mp+Mq) < 60%.
12. Suzuki in view of Liu teach all limitations, including structural limitations, of Claim 17 of the present application. Claim 23 further has the limitation: “The composition of claim 17, wherein the viscosity of the composition is 50 to 2,000 cP at 25°C.” A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. MPEP § 2144.09(I) states: "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).” Herein, Suzuki in view of Liu teaches all limitations of the composition of Claim 17 of the present application, thus a prima facie case for obviousness is made for said composition possessing the claimed viscosities of Claim 23 of the present application.
13. Kawamura teaches (Paragraphs [0163-0210], particularly Paragraph [0190]) the acid generator is represented by the formula (b) of the present application. Kawamura teaches (Paragraphs [0163-0210], particularly Paragraph [0194]) nb of formula (b) of the present application is 0. Kawamura teaches (Paragraph [0404]) resist compositions comprising said acid generator are capable of achieving a resist pattern with excellent shape and high resolution.
14. 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 Suzuki in further view of Liu to incorporate the teachings of Kawamura wherein the acid generator is represented by the formula (b) of the present application. Doing so would result a resist pattern with excellent shape and high resolution, as recognized by Kawamura.
15. Claims 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over by Suzuki et al. (United States Patent Publication No. US 2019/0339614 A1), hereinafter Suzuki, in view of Liu et al. (United States Patent Publication No. US 2019/0064662 A1), hereinafter Liu, and in further view of Kawamura et al. (United States Patent Publication No. US 2016/0291464 A1), hereinafter Kawamura, and in further view of Nozaki et al. (United States Patent Publication No. US 2005/0269290 A1), hereinafter Nozaki.
16. Regarding Claims 29-30, Suzuki in view of Liu in further view of Kawamura teaches all limitations of Claim 26 above. However, Suzuki in view of Liu in further view of Kawamura fails to explicitly teach depositing metal above a substrate using the resist pattern as a mask. Furthermore, Suzuki in view of Liu in further view of Kawamura fails to explicitly teach removing the resist pattern with a remover. Furthermore, Suzuki in view of Liu in further view of Kawamura fails to explicitly teach the film thickness of said metal pattern is 0.01 to 40 µm.
17. Nozaki teaches (Paragraphs [0140-0141], Figs. 15 A-D) depositing metal above a substrate using the resist pattern as a mask. Nozaki teaches (Paragraph [0142], Figs. 15 A-D) removing the resist pattern with a remover. Nozaki teaches (Paragraphs [0140-0141], Figs. 15 A-D) the film thickness of said metal pattern is 3.06 µm, 0.01 µm Ti + 0.05 µm Cu + 3.0 µm Cu. Nozaki teaches (Paragraph [0143]) the resulting metal pattern is capable of serving as magnetic heads
18. 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 Suzuki in view of Liu in further view of Kawamura to incorporate the teachings of Nozaki depositing metal above a substrate using the resist pattern as a mask; removing the resist pattern with a remover; and the film thickness of said metal pattern is 3.06 µm. Doing so would result the capacity to fabricate a pattern of magnetic heads, as recognized by Nozaki.
Conclusion
19. 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).
20. 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.
21. 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.
22. 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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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/R.D.C./Examiner, Art Unit 1737
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