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 Arguments
1. Applicant’s arguments, see page 8, line 8, filed 14 April 2026, with respect to the rejection of Claims 1, 3-4, 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. General Formula (a1-1) of the present application states that na1 represents an integer from 0 to 2, while for all working examples the value of na1 is zero (0). All of General Formulae (a1-1), (a2-1), and (a3-1) of the present application have a moiety “R” which is limited as representing “a hydrogen atom, an alkyl group having 1 to 5 carbon atoms, or a halogenated alkyl group having 1 to 5 carbon atoms,” yet in all of the working examples the “R” moiety is only ever a methyl group. General Formula (a2-1) is limited wherein Ra21 “represents a lactone-containing cyclic group, a carbonate- containing cyclic group, or a -SO2--containing cyclic group.” None of the working examples of the present application comprise a constitutional unit wherein the Ra21 moiety is a carbonate-containing cyclic group. Furthermore, only one “-SO2--containing cyclic group” is utilized in the working examples of the present application, i.e. (A1-4), and only one “lactone-containing cyclic group” is utilized in the working examples of the present application, i.e. (A1-5) and thus the claim limitations are much broader the data provided. General Formula (a1-r2-1) limits the moiety Ra’10 as representing “a linear or branched alkyl group having 1 to 12 carbon atoms,” while the working examples of the present application do not comprise a constitutional unit wherein the Ra’10 moiety comprises more than three (3) carbon atoms. The working examples of the present application only comprise two (2) examples of 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 polymeric compound (A1)-3 of the present application [i.e. Experimental Polymeric Compound (A1)-4 and (A1)-5]. In both of the experimental examples of polymeric compound (A1)-1 of the present application the ratio of constitutional unit (a0) to constitutional unit (a1) is 50:50, despite Applicant claiming a range of ratios from 30:70 to 70:30. In the lone 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 30% to 70%, 30% to 70%, and 1 to 30%, respectively. In both of the experimental examples of polymeric compound (A1)-3 of the present application the ratio of constitutional unit (a0) to constitutional unit (a1) to constitutional unit (a2) is 35:35:30 despite Applicant claiming a range of relative amounts of constitutional units (a0), (a1), and (a2) of 30% to 70%, 30% to 70%, and 10 to 40%, respectively. Thus, there only one exact ratio of constitutional units comprising the polymeric compounds (A1)-1, (A1)-2, and (A1)-3 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.
2. 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 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
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, 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, 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 (a0-11) 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 (a0-11) 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 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. Ou teaches (Paragraph [0231]) the proportion of the polymeric compound having a constitutional unit represented by General Formula (a0-11) 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. 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).
10. 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 extension fee 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 date of this final action.
11. 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.
12. 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
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