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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04 September 2026 has been entered.
Response to Arguments
2. Applicant’s arguments, see page 10, line 9, filed 04 August 2026, with respect to the rejection of Claims 17, 19-28, and 31-35 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 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 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; have been fully considered but they are not persuasive. Applicant argues, but fails to explain, how the amendments to the claims overcomes the rejection of record. The amendment limiting the polymer P of the present application to one which “consists” (close-ended) of repeating units represented by formulae (P-1) to (P-4) of the present application, as well as further limiting the mole fractions of said repeating units. Suzuki, as previously stated in the prior Office Action, teaches 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, which meets all of those said limitations. Also, as previously stated, the dissolution rate modifier of formula (c) of the present application, which is identical to the structure of the now-cancelled claim 34, is also explicitly taught by Suzuki. Similarly, as previously stated, Liu teaches the Polymer Q of the present application and including the further limited mole fractions of its repeating units. Similarly, as previously stated, Kawamura teaches the further limited acid generator represented by formula (b) of the present application. As such, Applicant’s argument that the prior art of record fails to teach all limitations of the claims of the present application is not persuasive.
3. Applicant further argues the present application found unexpected results not appreciated by the prior art. 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. Applicant has limited the mole ratios of repeating units of formulae (P-1) to (P-4) to 60-70:1-20:0:20-30, but there is only one experimental Polymer P in the data provided which has mole fraction of 60:20:0:20. Firstly, this is the exact same mole fraction as taught by Suzuki, but allow Applicant hasn’t shown a “range” of improved results, but only a single data point. Furthermore, there appears to be only one single metric Applicant is using to adjudicating whether or not desirable results are achieved, i.e. the taper angle, found in Table 1 of the present application. Applicant merely states that a taper angle of greater than 90 degrees is what is preferred in Paragraph [0084] of the present application. By this metric, all of the working examples of the present application have desirable results. Most of the working examples of the present application are outside of the scope of the present application, i.e. Examples 2-6 and 10, while the minority of working examples of the present application are within the scope of the present application, i.e. Examples 1 and 7-9. Yet, all of these working examples have a Taper Angle of greater than 90 degrees. One cannot claim unexpected results when both examples within and without the scope of the working examples have similarly desirable results. Furthermore, Applicant has actually broadened the scope of Claim 1 by deleting limitations with regards of the relative amounts of Polymers P and Q of the present application, which Table 1 of the present application shows to be important to achieve desirable results. See especially Comparative Example 3 of the present application which is within the scope of the claim including the recent claim amendments, but achieves undesirable results, seemingly due to not having a 50:50 mixture of Polymers P and Q of the present application, as it is in all of the working examples of the present application. Thus, Applicant has shown not only do examples outside the scope of the claims achieve similarly desirable results, but at least one example within the scope of the claim which has undesirable results. As such, Applicant’s arguments are not persuasive and the rejection of record is maintained.
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, 31-33, and 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, 31-33, and 35, Suzuki teaches (Paragraphs [0022-0031 and 0102]) at least one polymer selected from the group consisting of a polymer consisting a repeating unit selected from the group consisting of the formulae (P-1) to (P-4) of the present application. 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, represented by formula (c) of the present application. Suzuki teaches (Paragraphs [0032-0033]) a mixture of PGME and EL. Suzuki teaches (Paragraphs [0068-0071]) a basic compound. Suzuki teaches (Paragraphs [0083-0088]) a plasticizer. 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 units represented by the formulae (Q-1a) and (Q-1b) 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 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. Suzuki teaches (Abstract) a photoresist composition comprising a polymer which reacts with an acid to increase its solubility in an alkaline aqueous solution, an organic solvent, and a photo acid generator, and a pattern forming method using the same. Liu teaches (Abstract, Paragraphs [0012-0015 and 0101-0105]) a chemically amplified photoresist composition comprising a polymer which reacts with an acid to increase its solubility in an alkaline aqueous solution, an organic solvent, and a photo acid generator, and a pattern forming method using the same. Liu teaches (Paragraphs [0048-0051]) a polymer consisting repeating units represented by the formula (Q-1a) and (Q-1b) 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 consisting of repeating units represented by the formula (Q-1a) and (Q-1b) 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; 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 teaches (Abstract) a photoresist composition comprising a polymer which reacts with an acid to increase its solubility in an alkaline aqueous solution, an organic solvent, and a photo acid generator, and a pattern forming method using the same. Kawamura teaches (Abstract) a photoresist composition comprising a polymer, therein resin, which reacts with an acid to increase its solubility in an alkaline aqueous solution, an organic solvent, and a photo acid generator, and a pattern forming method using the same. Kawamura teaches (Paragraphs [0163-0210], particularly Paragraph [0190]) the acid generator is represented by the formula (b) of the present application. Kawamura teaches (Paragraph [0404]) resist compositions comprising said acid generator are capable of achieving a resist pattern with excellent shape and high resolution.
12. 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 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.
13. Suzuki in view of Liu in further view of Kawamura teaches 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 in further view of Kawamura 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.
14. 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.
15. 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.
16. Suzuki teaches (Abstract) a photoresist composition comprising a polymer which reacts with an acid to increase its solubility in an alkaline aqueous solution, an organic solvent, and a photo acid generator, and a pattern forming method using the same. Nozaki teaches (Paragraphs [0056, 0058-0059, and 0083]) a photoresist composition comprising a polymer, therein a resist, which reacts with an acid to increase its solubility in an alkaline aqueous solution, an organic solvent, therein a dissolved resist material, and a photo acid generator, therein a chemically amplified resist, and a pattern forming method using the same. 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
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 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
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.
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/RICHARD DAVID CHAMPION/Examiner, Art Unit 1737
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