Prosecution Insights
Last updated: July 17, 2026
Application No. 17/726,036

PHOTORESIST COMPOSITION WITH NOVEL SOLVENT

Final Rejection §102§103§112
Filed
Apr 21, 2022
Examiner
CHU, JOHN S Y
Art Unit
1737
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Taiwan Semiconductor Manufacturing Company, Ltd.
OA Round
4 (Final)
77%
Grant Probability
Favorable
5-6
OA Rounds
0m
Est. Remaining
83%
With Interview

Examiner Intelligence

Grants 77% — above average
77%
Career Allowance Rate
749 granted / 971 resolved
+12.1% vs TC avg
Moderate +6% lift
Without
With
+5.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 11m
Avg Prosecution
49 currently pending
Career history
1034
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
75.6%
+35.6% vs TC avg
§102
12.8%
-27.2% vs TC avg
§112
6.3%
-33.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 971 resolved cases

Office Action

§102 §103 §112
DETAILED CORRESPONDENCE This Office action is in response to the amendment received March 23, 2026. The rejection under 35 U.S.C. 103 as being unpatentable over the combination of ZI et al (20200073238) and WOO et al (2021/0311387) and ZI et al (2019/0384171) in view of CHEN et al (2020/0178380) and HATAKEYAMA et al (2015/0099228) is withdrawn in view of the amendment to claim 1. Bolded language is new to the office action. Claim 1 is objected to because of the following informalities: Phenol is listed as a primary alcohol in the claim, yet it is not seen as a primary alcohol. Appropriate correction is required. Claim Rejections - 35 USC § 112 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. Claims 1-10 and 21-30 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. Claims 1, 3 and 8 use the labels for second, third and fourth solvent do not match with the disclosure in the specification for the second and the third solvent. In fact, there is no label for a fourth solvent in the specification at all. So, the claims as recited find no support and create confusion as the to the designated number of solvents in the recited photoresist composition. In addition, with respect to claims 1, 10 and 21, the limitation that the tertiary alcohol has less than two OH groups find no support in the specification as originally filed and can be seen as new matter. A mixture of a tertiary alcohol compounds having one OH group with those having two or more OH groups with an average of less than two OH groups could be seen to meet the limitation which has no support in the specification. Claim 25 refers to a second solvent list of compounds which are not tertiary alcohols, which is indefinite and confusing with respect to claim 21 which labels the second solvent as comprising a tertiary alcohol. Claim 26 recites the use of the second solvent as the developer from claim 1. This finds not support in the specification as originally filed wherein the developer is recited to be a mixture of a primary alcohol and a third solvent selected from the group consisting of secondary alcohol, a tertiary alcohol, diol or alcohol with at least one ether group located on the main chain. (para. [0068] from the specification). Claim 27 finds no support as it states the developer to comprising those chemical structures listed in the claim which are only tertiary alcohols. Correction is necessary. Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-10 and 21-30 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of ZI et al (2020/0073238) and ZI et al (2019/0384171) in view of CHEN et al (2020/0178380) and MEYERS et al (2016/0116839). The claimed invention now recites the following: PNG media_image1.png 830 682 media_image1.png Greyscale PNG media_image2.png 196 718 media_image2.png Greyscale PNG media_image3.png 278 690 media_image3.png Greyscale PNG media_image4.png 850 702 media_image4.png Greyscale PNG media_image5.png 122 602 media_image5.png Greyscale PNG media_image6.png 630 706 media_image6.png Greyscale PNG media_image7.png 398 698 media_image7.png Greyscale MEYERS et al disclose an organotin compound and solvent coated on a substrate with a 4-methyl-2-pentanol alcohol solvent, see Example 3 on page 15. This disclosure meets the amended claims consisting of an organotin compound and a solvent. Additional solvents are disclosed on page 9, para. [0089] which include propanol and butanol as primary alcohols and disclose mixtures thereof as well, see below: PNG media_image8.png 466 376 media_image8.png Greyscale ZI et al ‘238 report a photoresist composition comprising a polymer resin a photoactive compound an organometallic compound and a first and second solvent. See the abstract. Applicants are directed to para. [0045] for the second solvent and para. [0053] for the first solvent, shown below. PNG media_image9.png 488 434 media_image9.png Greyscale PNG media_image10.png 236 414 media_image10.png Greyscale PNG media_image11.png 90 422 media_image11.png Greyscale PNG media_image12.png 170 414 media_image12.png Greyscale The scope of claim 3 in the current application recites that the method of claim 2 can further have a second solvent to include methanol, ethanol, propanol and butanol, etc. If the primary alcohol in claim 1 were propanol, the second solvent could be selected to be butanol as well leaving a single primary alcohol as the claimed “first and second solvent”. The second solvent in ZI et al is reported in para. [0045] above and would meet the third solvent claimed in claim 8 for a diol and alcohol as seen above with propylene glycol butyl ether having at least one ether group located on the main chain. Claims 4 and 5 disclose recite a solvent mixture of the first solvent and the second solvent percent wherein an even mixture of both would meet these claims a taught in MEYERS et al and ZI et al ‘238. Claim 6 is met if the initial solvent is 4-methyl-2-pentanol and propanol and butanol are mixed in as recited by MEYERS et al. Claim 7 and 9 are met when three solvents are evenly mixed in the organotin composition of MEYERS et al, para. [0089]. Claim 8 is met by the disclosure in ZI et al ‘238, para. [0045] for butanediol. With regard to claim 10, CHEN et al report an EUV apparatus comprising a droplet generator, and optical guide elements controlling the trajectory of the radiation source. The system can be used to expose a resist layer by EUV as reported in para. [0019], seen here: PNG media_image13.png 234 424 media_image13.png Greyscale wherein a resist composition comprising a metal-containing compound and a first, second and third solvent can be to exposed by the photoresists. Claims 21-25 are met by the second solvent in the mixture as reported above wherein the vapor pressure of claims 22 propanol would meet the recited 0.2 kPA at 20o C with the additional a solvent such as butanol meeting claim 24 when the two are added together and added to Example 3 of MEYERS et al. Claim 26 report propanol as a developer, see below: PNG media_image14.png 352 380 media_image14.png Greyscale Claims 27-29 are met by the disclosure in para. [0109] wherein the organic solvent used to form the precursor solvent can be used a developer teaching mixtures of the solvents reported in that same paragraph. Claim 30 is met by the disclosure in ZI et al ‘171 para. [0062] for propanediol. The ZI et al addresses the amendments to claims 1, 10 and 21 wherein the metal-containing component has a metal core bonded with the primary alcohol as a ligand of the metal core. Applicants are directed to page 8, para [0072] for the use of metal oxide nanoparticles alone such that the presence of an alcohol and other polar solvents can form a ligand with the metal core when formulated in a composition with the solvent. The suitable solvents include those listed on page 7, para [0062] for primary alcohol, shown below: PNG media_image15.png 86 378 media_image15.png Greyscale Further with respect to the second and third solvents, the disclosures in the ZI et al references teach a second solvent and combination of solvents, see page 21 in ZI et al ‘238 and para. [0062] in ZI et al ‘171 It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition having a metal and a primary alcohol with another a mixture of solvents such as those reported in MEYERS et al in para. [0089] wherein the solvents can be in a mixture of 50/50 to optimize the dissolution of the components and with the reasonable expectation of higher device density, higher performance and lower costs. 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 JOHN S CHU whose telephone number is (571)272-1329. The examiner can normally be reached M-F, IFP-Flex. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff, can be reached at telephone number 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. /John S. Chu/ Primary Examiner, Art Unit 1737 J. Chu May 28, 2026
Read full office action

Prosecution Timeline

Show 2 earlier events
Jun 17, 2025
Response Filed
Sep 11, 2025
Final Rejection mailed — §102, §103, §112
Nov 26, 2025
Response after Non-Final Action
Dec 08, 2025
Request for Continued Examination
Dec 11, 2025
Response after Non-Final Action
Dec 18, 2025
Non-Final Rejection mailed — §102, §103, §112
Mar 23, 2026
Response Filed
Jun 02, 2026
Final Rejection mailed — §102, §103, §112 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

5-6
Expected OA Rounds
77%
Grant Probability
83%
With Interview (+5.6%)
2y 11m (~0m remaining)
Median Time to Grant
High
PTA Risk
Based on 971 resolved cases by this examiner. Grant probability derived from career allowance rate.

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