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 .
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.
3. Claims 1-2, 5-6, 11-13 have been amended and claims 1-13 are pending as amended on 09/29/25.
4. The new ground of rejection set forth below for claims are necessitated by Applicant's amendment filed on 09/29/25. In particular, claim 1 has been amended to change the temperature range. Now, the scope of independent claim 1 and the claims depends from claim 1 are changed. For this reason, the present action is properly made final.
5. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
6. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
7. This application is a 371 of PCT/JP2020/030120 08/06/2020.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application JAPAN 2019-147848 08/09/2019 filed on 01/24/22.
Response to Amendment
8. Applicant's amendment filed on 09/29/25, has been fully considered and entered.
Response to Arguments
9. Applicant's arguments with respect to rejection of claims 1-13 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph filed on 09/29/25, have been fully considered but are moot in view of amendment. Previous rejections have been withdrawn.
10. Applicant's arguments with respect to rejection of claims 1-5, 8-13 under 35 U.S.C. 101 filed on 09/29/25, have been fully considered but are moot in view of amendment. Previous rejections have been withdrawn.
11. Applicant's arguments with respect to rejection of claims 1-13 under 35 U.S.C. 103 as being unpatentable over Sounik (US 7834113) filed on 09/29/25, have been fully considered but are moot in view of amendment. Previous rejections have been withdrawn. However, in view of amendment to claims and response, a new ground(s) of rejection is made.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sounik (US 7834113) in view of Gupta (US 4877843).
Regarding claims 1-13, Saunik discloses photoresist composition comprising a copolymer resin and a method of producing a photoresist copolymer resin comprising providing structural unit derived from p-hydroxystyrene and an acrylate units protected by acetal, e.g. 1-butoxy-ethyl methacrylate and functionally equivalent esters, e.g. allyl methacrylate, wherein the copolymer is derived from p-acetoxystyrene and an acrylate units protected by acetal, e.g. 1-butoxy-ethyl methacrylate and functionally equivalent esters, e.g. allyl methacrylate, and a method where the protecting group on the styrene is deprotected in the presence of organic solvents such as methanol or propylene glycol monomethyl ether acetate, and base such as sodium methoxide at temperature in the range of from about 50 0C to about 200 0C (column 1, lines 8-12, column 4, lines 4-, column 5, lines -26, column 8, lines 64-, column 10, lines -40, examples, claims 1, 13-16). Saunik does not discloses the deprotection temperature within the range of 0 0C to about 40 0C (regarding claims 1) or range of 20 0C to about 40 0C (regarding claims 5, 11-13).
Gupta discloses a photoresist composition comprising a copolymer resin and a method of producing a photoresist copolymer resin comprising providing structural unit derived from p-hydroxystyrene and an acrylate units protected by allyl, e.g. allyl methacrylate, wherein the copolymer is derived from p-acetoxystyrene and an acrylate units protected by allyl, e.g. allyl methacrylate, and a method where the protecting group on the styrene is deprotected in the presence of organic solvents such as methanol, and base such as sodium methoxide at temperature in the range of from about 20 0C to about 100 0C for selectively hydrolyzing the copolymer wherein no saponification occurred on the ester groups (column 1, lines 63-, column 3, lines -48), overlapping the claim 1 range of 0 0C to about 40 0C or encompassing the claims 5, 11-13 range of 20 0C to about 40 0C.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Saunik by performing the deprotection at temperature in the range of from about 20 0C to about 100 0C, as taught by Gupta. The rationale to do so would have been motivation provided by of Gupta that to do so would selectively hydrolyze the copolymer wherein no saponification occurred on the ester groups.
A prima facie case of obviousness exists for the method, where deprotection temperature is in the range of from about 20 0C to about 100 0C, overlapping the requirement of claim 1 or encompassing the requirement claims 5, 11-13. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Conclusion
References Fujifilm (JP 2007-86284), Fujifilm (JP 2009-86354), Shin-Etsu (JP 2004-45448), and Hoechst (JP 2-311505) were cumulative in nature to the above rejection and thus not set forth.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766