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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 17 October 2025 has been entered.
Response to Arguments
2. Applicant’s arguments, see page 9, line 9, filed 17 October 2025, with respect to the rejection of Claims 1, 3-4, 7, 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 one constitutional unit (a0) of the present application, all of the working example acid generators have values of nb05 and nb06 equal to zero despite formula (b1’) of the present application allowing both of those values to be from 0 to 5, none of R202 or R203 of formula (d1-1’) of the present application are substituted or bonded to each other in the working example acid diffusion controlling agents despite the claims allowing for either, and while the claim amendments have made the base material component of the present application close ended, the claim are still open-ended with respect to the acid generator component and the acid diffusion-controlling agent. Also, the claims allow for from 1 to 40 parts per mass of the acid generator component and 0.1 to 20 parts by mass of the acid diffusion-controlling agent, respectively, with respect to 100 parts by mass of the polymeric compound, but the working examples only have between 10.7 and 15.6 parts of acid generator component with respect to 100 parts by mass of the polymeric compound and only either 0.7 or 10.0 parts by mass of the acid diffusion-controlling agent with respect to 100 parts by mass of the polymeric compound. 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, there is no comparison to the nearest prior art compositions of Ou – this argument was put forward in the prior Office Action, which is required by MPEP § 716.02(e) when arguing for unexpected results. Applicant’s response to this requirement is (Page 10, Paragraph 2):
Ou discloses the resist compositions (Re 40) containing the resin (A-40) corresponding to the polymeric compound (A1) recited in amended claim1, but no acid generator component (B) and no acid diffusion-controlling agent component (D) as recited in claim 1 are present. Comparative Examples 4 to 8 of the present specification are more closely related to the invention in as they contain the polymeric compound (A1), the acid generator component (B) and the acid diffusion-controlling agent component (D).
To state the obvious, Applicant’s present application is not prior art and thus when MPEP § 716.02(e) states Applicant: “must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).” Furthermore, 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 argument that “Ou discloses the resist compositions (Re 40) containing the resin (A-40) corresponding to the polymeric compound (A1) recited in amended claim1, but no acid generator component (B) and no acid diffusion-controlling agent component (D) as recited in claim 1 are present” is beside the point. 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
3. 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:
4. 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.
5. Claims 1, 3-4, 9, and 11 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.
6. Regarding Claims 1, 4, 9, and 11, Ou teaches (Table 2-1, particularly Example Re-40) 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 Example Re-40) the base material component contains a polymeric compound having a constitutional unit represented by General Formula (a0-1) of the present application. Ou teaches (Table 2-1, particularly Example Re-40) 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 Example Re-40) the proportion of the polymeric compound having a constitutional unit represented by General Formula (a0-1) of the present application is 30% 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 1 to 35 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 0.1 to 11 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. Ou teaches (Table 2-1, particularly Example Re-40) the base material component contains a polymeric compound having a constitutional unit represented by General Formula (a0-1-1) of the present application. Ou teaches (Paragraph [0231]) the proportion of the polymeric compound having a constitutional unit represented by General Formula (a0-1) of the present application is 35 to 65% by mole. Ou teaches (Table 2-1, particularly Example Re-40) the proportion of the polymeric compound having a constitutional unit represented by General Formula (a1-1) of the present application is 50% by mole.
7. 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.
8. 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
9. 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.
10. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARK F 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.
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/R.D.C./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737