DETAILED ACTION
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 .
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.
Claims 21 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hamazaki (JP 2018-199765A, attached with English translation).
Regarding claims 21 and 24, Hamazaki teaches a block copolymer comprising a hydrophobic silicone block and a hydrophilic polyethylene glycol (PEG)-containing block (Abstract).
The hydrophobic block is formed from a monomer represented by general formula (I):
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where R1 is hydrogen or methyl; R2 is an alkylene group having 1-10 carbon atoms (i.e., a divalent organic linking group); and R3 is an alkyl group having 1-4 carbon atoms (p. 1-2, [0007]-[0008]). The terminus of this monomer reads on the claimed formula where R is methyl or C1-C4 alkyl; n=1; and R’ is methyl.
The hydrophilic PEG-containing block is formed from monomers according to formula (II) and (III):
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101
508
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102
532
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where R4 and R6 are hydrogen or methyl; R5 is an alkyl group having 1-12 carbon atoms; R7 is an alkyl group having 1-18 carbon atoms; and m is an integer of 1-50 (p. 2, [0008]-[0010]). Formulas (II) and (III) read on the claimed monomers (a2-1) and (a2-2), respectively.
Additionally, Manufacturing Example 4 illustrates a method in which a first block of ethyl acrylate (corresponding to the claimed monomer a2-1) and methoxy polyethylene glycol monomethacrylate (corresponding to monomer a2-2) is formed via ATRP; and a second block is subsequently formed from a silicone-containing monomer X-22-174BX containing a functional group corresponding to the claimed formula where n=1 and R and R’=methyl.
Both Hamazaki’s broader disclosure as described above and the product of Manufacturing Example 4 anticipate the structure and composition claimed in claims 21 and 24.
Regarding claim 21, Hamazaki further teaches that the polymer may be used in a coating as a leveling agent, in amounts ranging from 0.01 to 5% by weight (p. 4-5, [0023] and [0025]). This range overlaps the claimed range of 0.0001 to 10 parts by mass relative to 100 total parts of coating with sufficient specificity to anticipate the claimed range. A prima facie case of anticipation exists where the prior art discloses a range which overlaps the claimed range. See MPEP 2131.03.
Regarding claim 24, Hamazaki further teaches synthesis of the claimed composition using ATRP (p. 4, [0022]).
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Hamazaki, and further in view of Kimiyuki (CN 101910945 A, attached with English translation). All references have been cited in a prior Office Action.
However, Hamazaki is silent as to use of a monomer of formula a1-1. In the same field of endeavor, Kimiyuki teaches use of the below monomer (pages 5 and 62, [0033]), which satisfies the limitations of claims 15-16:
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It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Hamazaki with the monomer of Kimiyuki to arrive at the claimed invention, and to control the monomer’s susceptibility to hydrolysis, as taught by Kimiyuki (p. 5, [0033]).
However, Hamazaki is silent as to use of the composition in conjunction with an alkali-soluble resin for a resist composition. In the same field of endeavor, Kimiyuki teaches use of a similar composition (of the structure of claims 15-16) in a resist coating that contains an alkali developer solution (p. 39, [0234]) and a polymeric surfactant (p. 40, [0238]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Hamazaki with the resist coating of Kimiyuki to arrive at the claimed invention, and to provide a photosensitive resist layer that contains almost no volatile components, as taught by Kimiyuki (p. 39, [0232]).
Allowable Subject Matter
Claims 14-20, 23, and 25-33 are allowable.
The following is an examiner’s statement of reasons for allowance: The closest prior art is Hamazaki and Kimiyuki. The combined references teach structures very similar to the claimed structure. However, in light of the recent amendment to the claims, wherein n is an integer from 3-4, Hamazaki and Kimiyuki no longer teach structures which read on the structure of claim 14 and its dependents. No further prior art has been located that teaches the structure as claimed in the amended claim set. The affidavit filed 02 February 2026 further supports the allowability of claims 14-20, 23, and 25-33. As such, the instant claims contain a limitation not found in the prior art, and are allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see page 10, filed 02 February 2026, with respect to the rejections of claims 14-20, 23, and 25-33 under 35 U.S.C. 102 and 103 have been fully considered and are persuasive in light of the recent amendments to the claims. All rejections of claims 14-20, 23, and 25-33 under 35 U.S.C. 102 and 103 have been withdrawn.
Regarding claims 21, 22, and 24, the affidavit filed 02 February 2026 differentiates the claimed composition in cases where n=3 or 4. Claims 21, 22, and 24 continue to include the embodiment where n=2. Further, claims 21, 22, and 24 have not been modified in any way, and Applicant’s arguments refer solely to the amended structure of monomer (a2-2), which is amended in claim 14, but not present in claims 21, 22, or 24. As such, the claims and arguments fail to overcome the rejection of record.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762