DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 18-19, and 24-27, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-7, 9-15 of now allowed U. S. Patent Application No. 17/924,521 (USPGPub. No. 2023/0174688). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and the reference application i.e., allowed U. S. Patent Application No. 17/924,521 (USPGPub. No. 2023/0174688) recite substantially similar iodine-containing methacrylate monomers wherein the group A is the same claimed adamantly group (optionally substituted). The instant claims 18-19 recites a methacrylate compound represented by formula AM1 and the allowed U. S. Patent Application No. 17/924,521 (USPGPub. No. 2023/0174688) shows a methacrylate compound of the same claimed structure. In the instant application “A” can be an optionally substituted adamantyl group and in the reference application “A” can be adamantane or a substituted adamantane. While the instant application does not specify that A contains an acetoxy group, the instant application claims recite that A represents an optionally substituted adamantly group and would fall within the claims of the allowed U. S. Patent Application No. 17/924,521 (USPGPub. No. 2023/0174688). Although the reference application does not explicitly claim an iodine mass content in the monomer, however, the iodine mass content of the allowed U. S. Patent Application No. 17/924,521 (USPGPub. No. 2023/0174688) would be within the claimed range when A is adamantane substituted with acetoxy or unsubstituted. Claims 11-15, of the allowed U. S. Patent Application No. 17/924,521 (USPGPub. No. 2023/0174688) discloses the same claimed composition for lithography and includes the claimed solvent and acid generating agent and acid diffusion controlling agent. Therefore, claims 1-2, 5-7, 9-15 of the now allowed U. S. Patent Application No. 17/924,521 (USPGPub. No. 2023/0174688) fully encompasses claims 18-19, and 24-27 of the instant application.
Response to Arguments
Applicant’s arguments, see Amendment and Remarks, filed January 6, 2026, with respect to the 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) and the 35 U.S.C. 103 rejections made in the previous office action have been fully considered and are persuasive. The 35 U.S.C. 102 and 103 rejections of claims 18-19, and 24-27, has been withdrawn. With respect to the nonstatutory double patenting rejection of the pending claims, A terminal disclaimer has not been received yet, and thereby the nonstatutory double patenting rejection of claims 18-19, and 24-27, has been maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daborah Chacko-Davis whose telephone number is (571) 272-1380. The examiner can normally be reached on 9:30AM-6:00PM EST Mon-Fri. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling, can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-272-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DABORAH CHACKO-DAVIS/Primary Examiner, Art Unit 1737 September 16, 2026.
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