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 .
Continued Examination Under 37 CFR 1.114
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11 August 2026 has been entered.
Claim Rejections - 35 USC § 112
2. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claim 1 and its dependent Claim 3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 comprises essentially free-floating chemical structures labeled (a0-11) and (a1-1) which have no textual connection to the claim language and its limitations. For purposes of compact prosecution, Claim 1 will be interpreted as though it reads (in part): “a polymeric compound (A1)-2 consisting of the constitutional unit (a0) represented by General Formula (a0-11), a constitutional unit (a1) represented by General Formula (a1-1), and a constitutional unit (a3) represented by General Formula (a3-1).”
4. Claim 1 and its dependent Claim 3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 is recites the limitation “the constitutional unit (a0)” and “the constitutional unit (a1)” in line 16. There is insufficient antecedent basis for this limitation in the claim.
5. Claim 1 and its dependent Claim 3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 comprises the chemical structure labeled (a3-1) which comprises the variable “j” modifying the number of hydroxyl moieties of General Formula (a3-1). For purposes of compact prosecution, Claim 1 will be interpreted as though it reads (in part): “j represents an integer in a range of 1 to 3,” as stated in the specification of the present application.
Response to Arguments
6. Applicant’s arguments, see page 7, line 9, filed 11 August 2026, with respect to the rejection of Claims 1, 3, 9, and 11 under 35 U.S.C. 103 as being unpatentable over Ou et al. (United States Patent Publication No. US 2021/0271162 A1), hereinafter Ou; have been fully considered but they are not persuasive. Applicant argues that the amendments render the scope of the claims commensurate with the data provided in the present application. This is not persuasive. Applicant argues that the claim amendments render the objective evidence of nonobviousness, i.e. the experimental results of the present application, to be commensurate in scope with the claims. The working examples of the present application utilize constitutional unit (a1) of the present application represented by General Formula (a1-1) of the present application. The working examples of the present application only comprise two (2) examples of the now no longer claimed polymeric compound (A1)-1 of the present application [i.e. Experimental Polymeric Compounds (A1)-2 and (A1)-3], one (1) example of polymeric compound (A1)-2 of the present application [i.e. Experimental Polymeric Compound (A1)-1], and two (2) examples of the now no longer claimed polymeric compound polymeric compound (A1)-3 of the present application [i.e. Experimental Polymeric Compound (A1)-4 and (A1)-5]. In the single (1) experimental example of polymeric compound (A1)-2 of the present application the ratio of constitutional unit (a0) to constitutional unit (a1) to constitutional unit (a3) is 40:50:10 despite Applicant claiming a range of relative amounts of constitutional units (a0), (a1), and (a3) of 40% to 60%, 30% to 70%, and 5 to 20%, respectively. Thus, there only one exact ratio of constitutional units comprising the polymeric compound (A1)-2 supported the working examples of the present application. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02. Furthermore, now that the Applicant has delete claim limitations regarding the now no longer claimed polymeric compounds (A1)-1 and (A1)-3, the working examples of those now no longer claimed polymeric compounds are outside of the scope of the claims of the present application. Thus, the experimental examples of the present application, notably Example 3, which comprises the now no longer claimed polymeric compound (A1)-1 of the present application, achieves the same number of defects as the claimed working examples (rated as an A) and has a lower CDU value (5.5) than five of the eight working examples of the present application comprising polymeric compound (A1)-2 of the present application, i.e. within the scope of the claims. Thus, it is not reasonable to claim unexpected results within the claimed range, if examples outside of the claimed limitations (See: Example 3 of the present application) perform as well or better than those working examples within the scope of the claimed limitations.
7. Furthermore, Applicant argues that Ou fails to suggest the claimed composition. Examiner will point to the fact that, as stated in MPEP § 716.02(e), Applicant is seeking to “rebut a prima facie case of obviousness,” not a 102 anticipation rejection. Thus, Applicant’s Declaration under 37 C.F.R. § 1.132 dated 14 April 2026 wherein Applicant attempts to compare a single working example composition of Ou, which is outside the scope of the claims of the present application, to the working example composition of the present application, which are within the scope of the claims of the present application, essentially seeks to rebut a 102 anticipation rejection of the present application in view of Ou. But Examiner did not reject the present application under 102. Examiner has rejected the claims of the present application with a 103 obviousness rejection for the explicit reason that, as stated in Paragraph #7 of the prior Office Action, “However, while Ou teaches all of the individual limitations of the present claim set of the present application, it fails to explicitly disclose all said limitations in the same exemplary sample.” But, as explained therein, each of the claimed elements of the present application are taught by Ou, albeit not in a single experimental example, and thus a 103 obviousness rejection was made. Therefore, the burden is on Applicant to show that the closest prior art to “the claimed subject matter” fails to achieve the same unexpected results that Applicant claims to have evidence of. Applicant has not done so. There is no evidence that the closest prior art of Ou utilized in a 103 obviousness rejection, i.e. the acid generator component, the acid diffusion-controlling agent component, the base material component, and the organic solvent of Ou closest to what’s claimed by the present application, doesn’t achieve the same or similar unexpected results as what the present claimed subject matter purports to show. As such, Applicant’s argument is not persuasive and the rejection of record is maintained.
Claim Rejections - 35 USC § 103
8. 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:
9. 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.
10. Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Ou et al. (United States Patent Publication No. US 2021/0271162 A1), hereinafter Ou.
11. Regarding Claim 1, Ou teaches (Table 2-1) a base material component that exhibits changed solubility in a developing solution under action of acid. Ou teaches (Paragraphs [0374-0471], particularly Paragraphs [0459-0460]) an acid generator component that generates acid upon exposure. Ou teaches (Table 2-1, particularly acid diffusion control agents Q-5 and Q-6) an acid diffusion-controlling agent component. Ou teaches (Paragraphs [0498-0539]) an organic solvent component. Ou teaches (Table 2-1, particularly monomer (a-6)) the base material component contains a polymeric compound having a constitutional unit represented by General Formula (a0-11) of the present application. Ou teaches (Table 2-1, particularly monomers (b-11) to (b-16)) the base material component contains a polymeric compound having a constitutional unit represented by General Formula (a1-1) of the present application. Ou teaches (Table 2-1, particularly monomers (c-3) to (c-4)) the base material component contains a polymeric compound having a constitutional unit represented by General Formula (a3-1) of the present application. Ou teaches (Paragraph [0358]) the proportion of the polymeric compound having a constitutional unit represented by General Formula (a0-11) of the present application, therein repeating units A, is 40% to 60% by mole. Therein, Ou teaches most preferably repeating units A comprise 20% to 60% by mole, of which the claimed range is completely within the prior art teaching. Ou teaches (Paragraph [0359]) the proportion of the polymeric compound having a constitutional unit represented by General Formula (a1-1) of the present application, therein repeating units B, is 30% to 70% by mole by mole. Therein, Ou teaches more preferably repeating units B comprise 25% to 70% by mole by mole, of which the claimed range is completely within the prior art teaching. Ou teaches (Paragraph [0360]) the proportion of the polymeric compound having a constitutional unit represented by General Formula (a3-1) of the present application, therein repeating units C, is 5% to 20% by mole. Therein, Ou teaches most preferably repeating units C comprise 5% to 20% by mole. Ou teaches (Table 2-1, particularly Example Re-40) the acid generator component contains a compound represented by General Formula (b1’) of the present application. Ou teaches (Paragraphs [0371 and 0470]) the content of the acid generator compound in the resist composition is in a range of 5 to 25 parts by mass with respect to 100 parts by mass of the polymeric compound. Ou teaches (Table 2-1, particularly acid diffusion control agents Q-5 and Q-6) the acid diffusion-controlling agent component contains a compound represented by General Formula (d1-1’) of the present application. Ou teaches (Paragraphs [0371 and 0591]) the content of the acid diffusion-controlling agent compound in the resist composition is in a range of 0.5 to 5 parts by mass with respect to 100 parts by mass of the polymeric compound. Ou teaches (Paragraphs [0498-0539], see particularly Paragraphs [0500-0504]) the organic solvent component is a mixed solvent consisting of propylene glycol monomethyl ether acetate and propylene glycol monomethyl ether.
12. Regarding Claim 3, Ou teaches (Paragraphs [0933-0935]) a step of forming a resist film on a support using the resist composition. Ou teaches (Paragraphs [0933-0935]) exposing the resist film. Ou teaches (Paragraphs [0933-0935]) developing the exposed resist film to form a resist pattern.
13. However, while Ou teaches all of the individual limitations of the present claim set of the present application, it fails to explicitly disclose all said limitations in the same exemplary sample. Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ou to combine the materials and method steps within the scope of the claims of the present application, all of which as aforementioned are taught individually in Ou, with a reasonable expectation of success.
Conclusion
14. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
15. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH D HENDRICKS can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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17. 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.
/RICHARD DAVID CHAMPION/Examiner, Art Unit 1737
