DETAILED ACTION
The communication of 9 March 2026 has been entered and fully considered.
Claims 1, 3, 6-10, and 12-16 are pending.
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 Amendment
The amendment to claim 1 and 3 overcomes the prior rejection as set forth in the office action dated 9 December 2025.
However an updated search was performed and WO 2019009212 (Komizo) was discovered. The Komizo reference, as discussed below, renders obvious not only claims 1 and 3 but claims 10 and 16, previously having been indicated as allowable. As such, the indicated allowability of claims 10 and 16 is withdrawn. Rejections based on the newly cited reference follow.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35 and 37, U.S. Code not included in this action can be found in a prior Office action. The text of those sections of the MPEP not included in this action can be found in a prior Office action.
Claims 1, 3, 6-8, 10, 12-14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Komizo (WO 2019009212, US 2020/0218143 relied upon for translation).
Komizo published on 10 January 2019, more than a year before the effective filing date of the claimed invention; and was filed on 29 June 2018, prior to the effective filing date of the claimed invention. As such Komizo is available as prior art under both 102(a)(1) and 102(a)(2). Any attempts to overcome the rejection should ensure that the attempts overcome both the 102(a)(1) and 102(a)(2) dates.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Komizo teaches a reflective photomask blank (10) of a first aspect includes a substrate (1); a reflective layer (2) formed on the substrate (1); and a light absorbing layer (4) formed on the reflective layer (2) and including a tin oxide film with a film thickness of 17 nm or more and less than 25.0 nm. Abstract, ¶29.
Komizo teaches the tin oxide film has a ratio of O/Sn of 1.0-2.0, a total content of Sn and O of 80% or more, and additional elements such as Pt may be (i.e., optionally are) included (¶69-71). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to form the layer with just SnO because the other elements are taught as optional or to include the other elements, such as Pt, because Komizo teaches they are suitable for inclusion.
Although Komizo fails to teach the ratio of O/Sn is greater than 2.0 Komizo teaches a range which touches the claimed range at the end point (i.e., 2.0 vs. greater than 2.0). It would have been obvious to a person having ordinary skill in the art to choose any part of the range, including 2.0 based upon the desired properties (see ¶39-40) according to known methods (see ¶69).
When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case-by-case determination must be made as to anticipation. However, a prima facie case of obviousness may exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05. If the prior art disclosure does not disclose a claimed range with "sufficient specificity" to anticipate a claimed invention, any evidence of unexpected results within the narrow range may render the claims nonobvious. MPEP 2131.03.
Because the difference between the claimed range and the disclosed range is infinitesimally small (2.0 vs. greater than 2.0) one would expect the properties to be the same at and near the endpoints. A review of the specification at hand does not reveal any unexpected properties at or near the claimed endpoint of greater than 2.0. The comparison made in the specification (Table 1) is 2.0 vs. 2.5 which is not commensurate in scope of the claims and it is unclear if the results are significant because the data is only generically presented and generalized. See MPEP 716.02.
Komizo renders obvious claims 1, 3, 6-8, 10, 12-14, and 16.
Claims 9 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Komizo (WO 2019009212, US 2020/0218143 relied upon for translation) in view of Hayashi (US 2012/0107733).
Regarding Claims 9 and 15, the discussion of Claims 1 and 3 are relied upon as above. Komizo is silent to the crystallinity of the absorption pattern layer is amorphous or slightly crystallized amorphous.
However, Hayashi discloses reflective mask blanks for EUV lithography (abstract). With respect to the EUV absorber layer of the EUV mask, since the absorber layer is amorphous structure or a film of fine crystal structure, the surface roughness of a surface of the absorber layer is at most 0.5 nm (paragraph [0081]). If the surface roughness is large, the edge roughness of a pattern formed in the absorber layer becomes large, and the dimensional accuracy of the pattern becomes poor (paragraph [0081]). Since the influence of edge roughness becomes significant as the pattern becomes fine, the surface of the absorber layer is required to be smooth (paragraph [0081]). Thus, the absorber layer is required to be amorphous in order to make the surface of the absorber layer smooth.
It would have been obvious for one of ordinary skill in the art to have modified the absorber layer of Komizo to have an amorphous structure to ensure a smooth absorber layer as suggested by Hayashi. One of ordinary skill would have been motivated to make this modification to ensure the edge roughness and dimensional accuracy of the pattern remains good as suggested by Hayashi.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 3 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,067,886.
Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of instant claim 1 is found in patented claims 1 and 10 except the ratio of O/Sn.
However, for the reasons discussed above, and incorporated here there does not appear to be a patentable distinction between the end point of the claim 2.0 and the end point of the pending claim greater than 2.0.
Conclusion
Applicant's amendment did not necessitate the new ground of rejection presented in this Office action. Accordingly, this action is made NON FINAL.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK J VINEIS whose telephone number is (571)270-1547. The examiner can normally be reached Monday - Thursday: 8:00 a.m. - 4:00 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Greg Tryder can be reached at (571) 270-7365. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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