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 .
Response to Amendment
The amendments made to claims 1 and 8 are acknowledged and have been fully considered. No new matter has been introduced.
Response to Arguments
Applicant’s arguments regarding the amendment made to claim 1, see pgs. 9-11 and 14, filed 06/02/2025, with respect to claims 1-7 and 11-14 have been fully considered and are persuasive. The claim rejections under 35 U.S.C. 102 and 103 with respect to claims 1-7 and 11-14 are withdrawn.
Applicant’s arguments, see pgs. 14-15, filed 06/02/2025, with respect to the rejections of claims 1-14 on the ground of nonstatutory double patenting over copending Application No. 17/749,899 have been fully considered and are persuasive in view of the amended claims 1 and 8. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection, as necessitated by the amendment of claim 8, is made in view of instant claims 8-10 on the ground of nonstatutory double patenting over copending Application No. 17/749,899 (as further explained below).
Applicant’s arguments, see pgs. 14-15, filed 06/02/2025, with respect to the rejections of claims 1-14 on the ground of nonstatutory double patenting over copending Application No. 17/734,772 have been fully considered and are not persuasive. Therefore, claims 1-14 remain rejected on the ground of nonstatutory double patenting over copending Application No. 17/734,772 (see rejection below).
Applicant's arguments, see pgs. 11-14, filed 06/02/2025, with respect to the rejections of claims 8-10 under 35 U.S.C. 102 have been fully considered but they are not persuasive. Claims 8-10 remain rejected under 35 U.S.C. 102 as being anticipated over Kanna et al. (US 7214467 B2), as further explained below. Applicant argues Kanna et al. teaches “photoacid generators in the form of salts that include cations and anions” (pg.12) while the applicant claims the “acid themselves…not salts or photoacid generators” (pg.13). However, claims 8-10, as written, use comprising language regarding the mixture of sulfonic and carboxylic acid compounds wherein the mixture comprises a compound by Chemical Formula 3 and a compound represented by Chemical Formula 4:
PNG
media_image1.png
129
521
media_image1.png
Greyscale
. Claim 10 further specifies the compound represented by Chemical Formula 3 and Chemical Formula 4 as selected from compounds of Group II or Group III, respectively:
PNG
media_image2.png
148
431
media_image2.png
Greyscale
PNG
media_image3.png
185
797
media_image3.png
Greyscale
. MPEP 2111.03(I) states: “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004)”. As pointed out by Applicant, Kanna et al. teaches a mixture of at least two compounds selected from (B1) to (B3) as the photoacid generators, which generate the acid upon irradiation, wherein (B1) generates a sulfonic acid compound substituted with at least one fluorine atom and (B3) generates a carboxylic acid substituted with at least one fluorine atom (col. 80, line 51 – col. 81, line 10). Specifically, Kanna et al. teaches examples (VII-4):
PNG
media_image4.png
139
628
media_image4.png
Greyscale
and (II-4f):
PNG
media_image5.png
136
626
media_image5.png
Greyscale
used in photosensitive resin compositions in Table 2 (column 134) wherein the weight ratio of (VII-4) to (II-4f) is 1:0.25 (column 134, lines 36-38). VII-4 and II-4f clearly depicts the deprotonated acids in which upon irradiation of the photoacid generator salt, the protonated acid would be generated, as claimed above in claim 10. Therefore, claims 8-10 remain rejected under 35 U.S.C. 102 and the rejection has been amended as necessitated by the amendments to claims 1 and 8.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of copending Application No. 17/749,899 (pre-grant publication number: US 20230028244 A1) and in view of Yagi et al. (US 20200192220 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim 1 of copending Application No. 17/749,899 and instant claim 8 claim a resist composition comprising an acrylic polymer comprising a structural unit comprising a hydroxy group and a fluorine, at least one acid compound selected from a sulfonic acid compound comprising at least one fluorine and a carboxylic acid compound comprising at least one fluorine, and a solvent. Further, claim 9 of copending Application No. 17/749,899 claims identical compounds to instant claim 10. However, Application No. 17/749,899 does not claim the two acids being a weight ratio of about 1:0.1 to about 1:50 (claim 1 of instant application).
Yagi et al. teaches a radiation-sensitive resin composition comprising of a polymer (resin) containing a hydroxy and fluorine group (section 10, upper right examples) and two acids (photoacids). Yagi et al. teaches a resist composition (section 53-54, table 3) where the resin is 10g, first photoacid generator is 1 g and the second photoacid generator is 0.2 g, therefore the ratio of polymer to the acid mixture is 10:1.2 or about 8.3:1.
It would have been obvious to one of ordinary skill in the art at the time to have combined the claimed resist composition of copending Application No. 17/749,899 to include the weight ratio of the acid mixture of Yagi et al. because “the results shown in table 3...the resist composition of the embodiment of the present invention provides a pattern having excellent LER performance” (section 54, paragraph 728). See MPEP § 2143, rationales (A, B, and E). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10-14 of copending Application No. 17/734,772 (pre-grant publication number: US 20230026721 A1) and in view of Kanna et al. (US 7214467 B2).
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim 1 of Application No. 17/734,772 and instant claim 1 claim a resist topcoat composition comprising an acrylic polymer comprising a structural unit comprising a hydroxy group and a fluorine; a mixture comprising two acids, both comprising a fluorine, where the first acid is a sulfonic acid compound and the two acids are in a weight ratio of about 1:0.1 to about 1:50; and a solvent. Furthermore, the remaining content claimed in claims 2-14 of copending Application No. 17/734,772 are identical to the instant application. However, Application No. 17/734,772 does not claim a carboxylic acid compound as the second acid.
Kanna et al. teaches a photosensitive resin composition comprising a resin (A) and at least two kinds of compounds capable of generating an acid upon irradiation of which one is a sulfonic acid substituted with at least one fluorine atom (B1) and one is a carboxylic acid substituted with at least one fluorine atom (B3).
It would have been obvious to one of ordinary skill in the art at the time to have swapped the sulfonimide compound of Application No. 17/734,772 with the carboxylic acid of Kanna et al. to improve “the problems of line edge roughness, development time dependence and footing formation” (column 146, lines 39-42). See MPEP § 2143, rationales (A, B, and E). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of 1:5 to about 1:50 for the weight ratio from the claimed range of 1:0.1 to about 1:50 as disclosed by copending Application No. 17/734,772 because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Claim Rejections - 35 USC § 102
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.
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.
Claims 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanna et al. (US 7214467 B2).
Kanna et al. teaches a photosensitive resin composition comprising a resin (A) represented by the general formula (Z):
PNG
media_image6.png
187
319
media_image6.png
Greyscale
wherein R50 to R55 are the same or different and represent a hydrogen atom, a fluorine atom, or an alkyl group, and at least one of R50 to R55 represents a fluorine atom, a compound capable of generating an acid upon irradiation which includes at least two kinds of compounds (B1), (B2), (B3), and (B4) of which (B1) is a sulfonic acid substituted with at least one fluorine atom and (B3) is a carboxylic acid substituted with at least one fluorine atom, a solvent (C), and a surfactant (D) (column 2, lines 51-67 through column 3, lines 1-30). Resin (A) comprises of repeat units that are represented by general formula (IIA) and (VIA):
PNG
media_image7.png
585
633
media_image7.png
Greyscale
wherein the substituents are defined in column 15, lines 36-58 and includes (F-54) as a specific example:
PNG
media_image8.png
306
632
media_image8.png
Greyscale
(column 70, lines 1-13). Examples of the sulfonic acid substituted with at least one fluorine atom (B1) include: (VI-1), (V1-4), (VI-13), (VI-15), (VI-19), (VII-1), (VII-4), (VII-22), (VII-23), (VII-24), (VII-30), (VII-33), (VII-36), and (VII-45) (columns 83-91) and examples of the carboxylic acid substituted with at least one fluorine atom (B3) include: (I-2f), (I-4f), (I-13), (I-15), (I-17f), (I-21f), (II-2f), (II-3f), (II-4f), (II-24f), (II-30f), (II-36f), and (II-45f) (columns 105-113). Specifically, examples (VII-4):
PNG
media_image4.png
139
628
media_image4.png
Greyscale
and (II-4f):
PNG
media_image5.png
136
626
media_image5.png
Greyscale
are shown and used in photosensitive resin compositions in Table 2 (column 134), particularly example 1-7 which comprises of a ratio of 1:0.25 (VII-4) to (II-4f) (column 134, lines 36-38).
Conclusion
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 Christine Curiac whose telephone number is (703)756-1375. The examiner can normally be reached M-F 9:00-6:00 ET.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTINE CURIAC/Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737