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 .
Amendment to the claims was submitted on 10/14/2025, claim 2 is canceled.
Claim Status
Claims 1, 3, and 5-13 are under consideration
Claims 2 and 4 are canceled
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/14/2025 has been entered.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3 and 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Shin (US20200117088 A1, filed 2018) in view of Nakafuji (US 20140048512 A1, published 2014).
Regarding claims 1, 3, and 5-13,
Shin teaches a resin composition and a cured (calcined) film comprising of a compound (C) [abstract, claim 1], which may be the following example with formula 14 (with a weight average molecular weight of 471) [0083], reading on the instant epoxy group-containing compound.
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Shin teaches including a solvent [0113].
Shin teaches their compound (C) binds with silanol groups (containing an OH group) in their siloxane polymer [0078], reading on instant site reactive with an epoxy group, reading on instant claim 3.
Shin also teaches including an epoxy compound (D) which would similarly bind with and be a part of the siloxane polymer [0085] and may contain additional structural units such as N-vinyl pyrrolidone (where the pyrrolidone (tetrahydropyrrole) structure contains a heterocyclic pyrrol (pyrrole) ring) [0092], reading on the instant heterocyclic compound.
Shin is silent to their resist composition for forming an underlayer film.
Nakafuji teaches thermosetting resins such as epoxy resins for use in underlayer film forming compositions and functions to prevent intermixing between the resultant resist underlayer film and a resist coating film provided thereon [0099-0100, 0106]. Nakafuji further teaches a method comprising steps of coating and baking their underlayer film forming composition on a substrate, coating and baking a resist film on the underlayer film, exposing the resist film with radiation such as visible light rays, ultraviolet rays, far ultraviolet rays, and electron beams, developing the exposed resist film to form a patterned film, etching the underlayer film using the patterned resist film, and etching (processing) the substrate using the patterned underlayer film [0114-0122].
As both teach similar coating compositions for forming a resist film, it would have been obvious to a person of ordinary skill in the art to try using the method of forming and patterning an underlayer film of Nakafuji with the composition of Shin, reading on instant claims 1, 6-8, and 12-13. Further, Nakafuji teaches a known benefit in using epoxy resin containing compositions as underlayer film forming compositions, to prevent intermixing between the resultant resist underlayer film and a resist coating film provided thereon [0099].
Shin also teaches the weight average molecular weight of their siloxane polymer may be 500 to 50,000 [0057]. The resulting compound formed by binding with compound (D) would be about 971 or greater, overlapping the instantly claimed range of 300-3000, reading on instant claims 9-11. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Shin teaches including a surfactant [0085], reading on instant claim 5.
Response to Arguments
Applicant’s arguments filed 10/14/2025 with respect the new claim amendments have been fully considered but are not persuasive. The above rejections have been updated accordingly.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Lee whose telephone number is (571)272-2261. The examiner can normally be reached M-Th 7:30-5:30 EST.
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/A.N.L./Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734
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