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 .
The Applicant’s amendments filed on September 11, 2025 were received. The text of those sections of Title 35., U.S.C. code not included in this action can be found in the prior Office action issued June 12, 2025. Claim 1 was amended and claim 3 was canceled.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
2. Claims 1,2,4-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sue et al. (WO 2020/004172). See attached machine translation of the reference.
Regarding claims 1,4, Sue et al. teach an organically modified metal oxide nanoparticles comprising a core of metal oxide, a first modification group which is a carboxylic acid carboxylate ligand coordinated to the core, a second modifying group which is a carboxylic acid carboxylate ligand and/or an inorganic anion which is coordinated to the core and has a smaller molecular weight than the first modifying group. The organically modified metal oxide nanoparticles are represented by the general formula M6O4(OH)4XnY12-n wherein M is a metal, one or more selected from the group consisting of Zr, Hf, and Ti, X is the first modifying group, Y is the second modifying group, and 1 ≤ n ≤ 11. Furthermore, it is preferable that Z, which represents the ratio of X and Y and is defined as X/(X+Y)×100, satisfies the relationship 5 mol% ≤ Z ≤ 95 mol%. For instance, Example 1 shows the methacrylic acid : nitric acid = 61:39 = 7.3:4.7. Thus, the X/(X+Y) = 60.8 mol%. See Abstract, papa.10,17, Examples 1-3.
Regarding claim 2, Sue et al. teach the first modification group involving saturated carboxylic acids can be propionic acid (3 carbon atoms) or isobutyric acid (4 carbon atoms). See Examples 4,5. The second modifying group is a carboxylate acetate ligand and/or a nitrate ion. See Para. 16.
Regarding claim 5, Sue et al. teach the EUV photoresist material comprise a solvent. See Para. 19.
Regarding claim 6, Sue et al. also teach a method for producing the organically modified metal oxide nanoparticles using metal nitrate and a hydrophilic liquid. Para. 20,21.
Regarding claim 7, Sue et al. also teach a method for producing an organicall modified metal oxide using isobutyric acid. See Example 4.
Regarding claim 8, Sue et al. teach the reaction is carried out in ambient (an air atmosphere). See Examples 1-5.
Regarding claim 9, Sue et al. teach the use of zirconium oxynitrate and zirconium oxyacetate. See Para. 21,22.
Regarding claim 10, Sue et al. teach a film forming step, a drying step, an exposing step and a developing step and a removing step. See para. 12,44.
Claim Rejections - 35 USC § 103
3. The claim rejections under 35 U.S.C. 103 as being unpatentable over Thackeray et al. in view of Krysak et al. on claims 1-5,10 are withdrawn because claim 1 has been amended. The claim rejections under 35 U.S.C. 103 as being unpatentable over Kimura et al. on claims 6-7,9 are withdrawn because claim 1 has been amended. The claim rejections under 35 U.S.C. 103 as being unpatentable over Kimura et al. in view of Hashimoto et al. on claims 8-9 are withdrawn because claim 1 has been amended.
Double Patenting
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
4. Claims 1,2,4-10 are rejected under 35 U.S.C. 101 because A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1,2,4-10 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-2,4-9,13-15 of prior U.S. Patent No. 12,153,347. This is a statutory double patenting rejection.
Response to Arguments
5. Applicants’ arguments filed 9/11/2025 have been fully considered but they are not persuasive. Applicant’s principal arguments are:
Neither Thackeray nor Krysak discloses the limitations of general formula M6O4(OH)4XnY12-n where the ratio of X and Y is defined as Z = X/(X+Y)×100 and satisfies the relationship 5 mol% ≤ Z ≤ 95 mol%.
In response to Applicant’s arguments, please consider the following comments:
Applicant’s arguments are moot because they do not refer to the newly cited Sue et al. reference which does teach the claimed general formula M6O4(OH)4XnY12-n and the relationship is 5 mol% ≤ X/(X+Y)×100 ≤ 95 mol%. See Examples 1-3 of Sue et al.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
