DETAILED CORRESPONDENCE
This Office action is in response to the amendment received April 6, 2026.
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 9-24 are rejected under 35 U.S.C. 103 as being unpatentable over KUROIWA et al (2018/0259853).
The claimed invention recites the following:
PNG
media_image1.png
808
642
media_image1.png
Greyscale
PNG
media_image2.png
96
644
media_image2.png
Greyscale
KUROIWA et al report a positive chemically amplified composition comprising two resin binders, and does not contain a compound represented by General Formula (e1-1)
The claimed resin (p10) is disclosed as acrylic resin (C3) in para. [0155], page 22 having ether-bond-containing compound and constituent unit derived from a carboxy group-containing polymerizable compound, see below:
PNG
media_image3.png
408
362
media_image3.png
Greyscale
The resin (p20) is disclosed in para. [0108], page 9 for the polyhydroxystyrene resin (B1-b) wherein the resin contains acid-dissociative dissolution-controlling group, see below:
PNG
media_image4.png
44
376
media_image4.png
Greyscale
PNG
media_image5.png
202
368
media_image5.png
Greyscale
Applicants are directed to page 125, para. [0188] to [0195] wherein KURIOWA et al discloses Resin (B) comprises Resin B1-B4 which meets second resin (P2) and a B5 resin which meets the claimed first resin (P1) of claim 9, see the highlighted units below:
PNG
media_image6.png
260
370
media_image6.png
Greyscale
PNG
media_image7.png
206
288
media_image7.png
Greyscale
PNG
media_image8.png
834
376
media_image8.png
Greyscale
PNG
media_image9.png
68
378
media_image9.png
Greyscale
The photolithographic method is reported on pages 24-25, para. [0180] to [0187].
Claims 10-12 are disclosed above for the dissolution rate which are properties inseparable from the resins disclosed in the prior art which are the same as those of having the constitutional units (a0), (a2) and (u1).
Claim 13 limitations are disclosed in para. [0107] and [0108] for the carboxyl group having acid-dissociative-controlling protective groups.
Claim 14 limitations are disclosed in para. [0081] for the content of the units (u1).
Claim 15 is met by the disclosure in para. [0139] wherein v it 10 to 30% by mole in the copolymer (B1-c).
Claim 16 limitations to the proportions of the first resin (P1) to (P1) and (P2) is 10 parts by mass or more and 50 parts by mass or less are disclosed in para. [0158] for 0 to 60 parts by mass of resin (C3) to the acrylic resin.
Claims 17 is met by KUROIWA et al wherein the second resin is a novolak resin having an acid decomposable group for (u1) and is not a hydroxystyrene derivative protected by a substituent contain the acid decomposable group.
Claim 18 is inherent disclosed from the reference wherein the dissolution rate for a mixed resin
Claim 19 is met by the first unit in Resin (B5) in KUROIWA et al above.
Claim 20 is met in para. [0082] and [0147] for the equivalent polymers wherein the resin can be either units of a hydroxystyrene or a novolak repeat unit.
Claim 21 is met by para. [0102] and [0103] where a copolymer of hydroxystyrene and a carboxy group containing monomers content can be used to regulate the solubility of the resin in an aqueous basic solution .
Claim 22 is met by B1 above wherein the percent of acid protected groups is 20 mol% as disclosed in para. [0192].
Claims 23 is met by the methacrylic acid group in Resin B5 of KUROIWA et al above.
Claim 24 is met by para. [0158] wherein the acrylic resin having an ether-bond containing group, a methacrylic acid unit and a second ether-bond containing polymerizable compound. The recited units in claim 17 is to a derivative of acrylic acid which include ester containing groups which are derived from acrylic acid.
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive compositions to substituted polyhydroxystyrene in for the novolak resin in Examples 1-4 of Table 1 with the reasonable expectation of same or similar results excellent developability with developers with a low pH, such as sodium carbonate.
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 on M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached at telephone number 571-272-1401. 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 Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
June 9, 2026
Prosecution Insights