DETAILED ACTION
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Jan. 23, 2026 has been entered.
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 .
Claim Rejections – 35 U.S.C. § 112(b)
Claims 2 and 22 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 2 depends on independent claim 1. Independent claim 1 recites a polymer including repeating units of AB, where the “A” and the “B” refer to units of monomer A and of monomer B.
Claim 2 states that “monomer B is inactive, so it cannot be initiated to form a growth reactive species”. Because base claim 1 recites repeating units of AB, base claim 1 requires polymers in which monomer B has reacted with monomer A. Base claim 1 thus requires that monomer B be capable of forming a reactive species that can grow the polymer by reaction with monomer A. Claim 2 does not set forth with reasonable clarity how monomer B can simultaneously not be initiated to form a growth reactive species while also requiring it to be capable of reaction with monomer A.
Claim 22 refers to the copolymer of base claim 1 and recites a step of providing “a secondary monomer”. Due to the dependence of claim 22 upon claim 1, it is evident that the recited polymerization of this “secondary monomer” results in a polymer having the structure recited in base claim 1.
The claim and the specification do not define the phrase “secondary monomer”. The ordinary meaning of the phrase indicates that there is an additional, or primary, monomer in the copolymer.
Because claim 22 does not set forth the identity of any such additional, or primary, monomer in the copolymer, and because any such further monomer would result in a copolymer structure that differs from that recited in base claim 1, claim 22 does not set forth the scope of the phrase “secondary monomer” with reasonable clarity.
Claim Rejections – 35 U.S.C. § 103
Claims 1-3, 5-6, 16, and 20-22 are rejected under 35 U.S.C. § 103 as being unpatentable over CN 109929070 A (herein “Deng”). A computer-generated English translation of Deng is attached to the Office action mailed on Jul. 8, 2025 and is referred to herein.
As to claims 1, 5-6, and 20-21: Deng describes monomers and copolymers obtained by polymerizing them (see ¶ [0002] of the translation). Deng describes an example of a monomer (see monomer B6 in ¶¶ [0142]-[0145] of the translation and ¶ [0138] of the original) according to the chemical formula:
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. Deng’s monomer B6 has the same structure as the monomer M1 that is disclosed in the present application (see ¶ [0253] of the published application).
Deng further discloses examples of the polymerization of further monomers (see ¶¶ [0146]-[0153] of the translation) which are polymerized with the initiator AIBN in the solvent DMF at 60 °C. These conditions are substantially the same as those presently disclosed (see ¶ [0252] of the published application).
Deng does not specifically disclose an embodiment of a polymer made by polymerizing the cited monomer B6.
In light of Deng’s disclosure that the monomers disclosed therein are intended for making copolymers by polymerizing them, one of ordinary skill in the art would have been motivated to polymerize any of the monomers described in Deng, including the monomer B6, using the polymerization methods described therein. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made a polymer by polymerizing Deng’s monomer B6.
Because Deng’s monomer B6 has the same chemical structure as the presently disclosed monomer M1, and because Deng’s polymerization conditions are substantially the same as those presently disclosed, there is a reasonable basis to conclude that the polymer resulting from polymerizing Deng’s monomer B6 would have the same architecture as does the presently claimed polymer.
As to claims 2-3: Because Deng’s monomer B6 has the same chemical structure as the presently disclosed monomer M1, there is a reasonable basis to conclude that the monomer B6 has the same physical properties as those presently disclosed and claimed.
As to claim 16: The presently recited “lithographic material” does not include any particular structural characteristics that would distinguish such a material from the polymer resulting from polymerizing Deng’s monomer B6. The recited “lithographic material” has therefore been construed as an intended use of the polymer recited in base claim 1.
Statements in the preamble reciting the purpose or intended use of the claimed invention are evaluated to determine whether or not the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such a structural difference exists does the recitation serve to limit the claim. A prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. MPEP 2111.02(II).
Because Deng suggests a polymer according to base claim 1, and because the presently recited intended use of a lithographic material does not result in a structural difference between the claimed invention and the prior art, there is a reasonable basis to conclude that the polymer suggested by Deng would be capable of being used as a lithographic material. The present claim is therefore properly suggested by Deng, notwithstanding the lack of disclosure of the use of the polymers therein as lithographic materials.
As to claim 22: The present claim refers to the method of preparing the polymer of base claim 1. The claim is thus drafted as a product-by-process. Case law has established that the patentability of a product-by-process is determined by the patentability of the product itself, i.e. that the patentability of a product does not depend upon its method of production (MPEP 2113). The process limitations are only given consideration regarding patentability if there is criticality to the structure implied by the steps of the process. Because no such criticality of the temperature of the polymerization to the structure of the polymer has been demonstrated, the claim stands properly suggested by Deng, notwithstanding any difference in the method by which Deng’s polymer is made.
Allowable Subject Matter
Claims 7-9 and 17 are objected to as being dependent upon a rejected base claim, but it would be allowable if written in independent form.
Response to Arguments
Applicant’s arguments filed Jan. 23, 2026 (herein “Remarks”) have been fully considered and they are persuasive in part.
The rejection under 35 U.S.C. § 112(b) with respect to the scope of moiety Ra2 has been obviated by the amendments of the claims.
Regarding the rejection of claim 2 under 35 U.S.C. § 112(b): Applicant argues (first full paragraph on p. 20 of Remarks) that a homopolymeric segment of monomer B cannot be formed. This argument is unpersuasive because the pertinent limitation of claim 2 (“monomer B is inactive, so it cannot be initiated to form a growth reactive species”) does not recite merely that a homopolymeric segment of monomer B cannot be formed.
Applicant also argues (id.) that “monomer B is unable to polymerize with monomer A that do not share the same structure”. The examiner does not understand this argument because by virtue of being different monomers, the monomers A must necessarily not have the same structure as monomers B.
Applicant argues (second full paragraph on p. 20 of Remarks) that monomer B is inert or inactive and that it forms a structure AB. This argument is unpersuasive because it does not explain why the formation of a structure AB (as recited in base claim 1) is a meaning of the phrase “so it cannot be initiated to form a growth reactive species”. The ordinary meaning of the words of this phrase is not limited to such structures, and because such structures are already required by base claim 1, a limitation that meant such would not impart a further limitation upon the subject matter of claim 1.
The rejection of claim 19 under 35 U.S.C. § 112(d) has been obviated by the cancellation of the claim.
Regarding the rejection under 35 U.S.C. § 103 over Deng: Applicant argues (p. 22 of Remarks) that Deng’s monomer B1 has two polymerizable acrylate groups which are both incorporated into the main chain of the copolymer. Applicant argues (p. 23 of Remarks) that the copolymer of the present invention is different due to the different reactivities of the two polymerizable moieties.
The recognition of the sequence structure of a polymer of Deng’s monomer B6 is a recognition of a latent property of the monomer.
Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). MPEP 2145(II). In the present case, the act of recognizing or identifying the structure of a polymer obtained by polymerizing Deng’s monomer B6 does not outweigh the prima facie obviousness of performing a polymerization of the prior art monomer.
Similarly, "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). MPEP 2112(I). In the present case, the discovery of the polymeric sequence that results from polymerizing Deng’s monomer B6 does not render a polymer of Deng’s monomer B6 patentably new.
Additionally, the mere recognition of the sequence that results from polymerizing Deng’s monomer B6 does not outweigh the obviousness of merely polymerizing Deng’s monomer B6.
Applicant argues (p. 23 of Remarks) that the temperature of polymerization is critical to the structure of the polymer. This argument is unpersuasive because it is not supported by evidence that establishes criticality of the polymerization temperature. Arguments of counsel cannot take the place of evidence in the record. MPEP 2145(I).
Applicant argues (p. 24 of Remarks) that one of ordinary skill in the art would not have had an expectation that adjusting the concentration of monomer in Deng would yield the present structure. This argument is unpersuasive because it is not supported by evidence that establishes criticality of the monomer concentration. Arguments of counsel cannot take the place of evidence in the record. MPEP 2145(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764