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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/6/2026 has been entered.
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.
Claim(s) 1, 2, 7, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moon et al (JP 2020-21071 and its machine translation) in view of Nakagawa et al (JP 2018-116160 and its machine translation).
Moon et al disclose a radiation-sensitive composition comprising an organometallic compound and a solvent, wherein the organometallic compound includes a compound having a structure falling within the scope of the instant General Formula 1.
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R1 is alkyl, cycloalkyl, alkenyl, aryl,, and arylalkyl, and R2 to R4 are each -ORa or -OC(=O)O-Rb, similar to that of general formula 1, wherein ,-(L)n-(R1) with Ra being a substituted or unsubstituted alkyl group having 1 to 20 carbon atoms, a substituted or unsubstituted cycloalkyl group having 3 to 20 carbon atoms, a substituted or unsubstituted alkenyl group having 2 to 20 carbon atoms, A substituted or unsubstituted alkynyl group having 2 to 20 carbon atoms, a substituted or unsubstituted aryl group having 6 to 30 carbon atoms, a substituted or unsubstituted arylalkyl group having 7 to 30 carbon atoms, or a combination thereof, and
Rb being a hydrogen atom, a substituted or unsubstituted alkyl group having 1 to 20 carbon atoms, a substituted or unsubstituted cycloalkyl group having 3 to 20 carbon atoms, a substituted or unsubstituted alkenyl group having 2 to 20 carbon atoms, It is a substituted or unsubstituted alkynyl group having 2 to 20 carbon atoms, a substituted or unsubstituted aryl group having 6 to 30 carbon atoms, a substituted or unsubstituted arylalkyl group having 7 to 30 carbon atoms, or a combination thereof.
The exemplified compounds fall within the scope of the instant formula:
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For the examples, instant L is -O- or -COO-, n is 1 or 0 (0 for R1 groups), and Ra and Rb are alkyl or alkenyl. These compounds and monodentate ligands meet the limitations of the instant claims 1 and 2.
The reference teaches that known additives such as cross-linkers, surfactants, and other non-limiting examples may be added, but fails to specifically teach a PAG or a surfactant.
Nakagawa et al disclose a resist composition disclose an organometallic oxide sol-containing composition, wherein the composition comprises the organometallic additive and additional known additives including an acid generator ([0111];instant claim 7), a solvent ([0101]), surfactant ([0102]), acid-diffusion controller (quencher; [0103]; instant claim 8).
Given that the primary reference teaches a resist composition, and that the secondary reference Nakagawa et al teach a resist composition comprising known and conventional resist additives, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare the organometallic resist of Moon et al, choosing as the resist additives, those as taught by Nakagawa et al as known and conventional including a PAG.
Claim(s) 1, 2, 7, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moon et al in view of Kobayashi et al (2021/0063871).
Moon et al has been discussed above. The reference teaches that known additives such as cross-linkers, surfactants, and other non-limiting examples may be added, but fails to specifically teach a PAG or a quencher.
Kobayashi et al disclose a resist material comprising a metal compound having at least a metal core with at least one organic ligand bonded to the core. The composition further comprises a photoacid generator ([0062]; instant claim 7 a), a basic compound as known additives ([0073; instant claim 8).
Given that the primary reference teaches a resist composition, and that the secondary reference Kobayashi et al teach a resist composition comprising known and conventional resist additives, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare the organometallic resist of Moon et al, choosing as the resist additives, those as taught by Kobayashi et al as known and conventional including a PAG.
Claim(s) 7, 8, 9, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moon et al in view of Kudo et al (2020/0257195).
Moon et al has been discussed above. The reference teaches that known additives such as cross-linkers, surfactants, and other non-limiting examples may be added, but fails to specifically teach a PAG, initiator, or a quencher.
Kudo et al disclose a photoresist composition comprising an initiator, a solvent, a photoacid generator, a quencher (claims 7-11; instant claims 1, 7-9), and an organometallic compound. The composition further teaches the addition of initiators, including acylphosphine oxides. Specific examples include commercially available IRGACURE 1173, 651, and 184 ([0072], [0073]), all taught as preferred initiators by the instant specification ([0059]) and meet the limitations of the instant claims 7, 8, 9, and 10.
Given that the primary reference teaches a resist composition, and that the secondary reference Kudo et al teach a resist composition comprising known and conventional resist additives, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare the organometallic resist of Moon et al, choosing as the resist additives, those as taught by Kudo et al as known and conventional including a PAG, quencher, and initiator.
Claim(s) 1-3, 5, 7, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Freedman et al (2015/0079393).
Freedman et al disclose an organometallic resist comprising a complex, a solvent, and may include a PAG ([0047], [0049]), wherein the complex comprises an organic polydentate ligand, and additional ligands including polydentate or monodentate ligands, wherein metals include Cr, Mn, Co, Ni, Cu, Zn, Sn, Bi, Fe and other various transition metals ([0019], Table 1, [0023]), and
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Ligands meet the limitations of claim 1 wherein n is 1 or 0, and monodentate ligands include those wherein n is 0 and R1 is alkyl, aryl, and wherein n is 1 such as alkoxy (-O-R) ([0030]; instant claims 1 and 2), and as seen in examples the complex must comprisse at least one polydentate ligand, which includes quinolines ([0032], [0045]; instant claims 5, 11).
Given the teachings of the reference, it would have been obvious to one of ordinary skill in the art priro top the effective filing date of the instant invention to prepare the material of Freedman et al, choosing to prepare the material including a PAG, wherein the resultant compositons and complex would meet the the limitations of the instant claims.
Claim(s) 9-11, 14, 16, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Freedman et al in view of Kudo et al.
Each reference has been discussed above. Freedman et al teaches that additional known additives may be incldues, inclduign PAGs, but fails to specifically teach a quencher or inititator.
Kudo et al disclose a photoresist composition comprising an initiator, a solvent, a photoacid generator, a quencher (claims 7-11; instant claims 1, 7-9, and 16), and an organometallic compound. The composition further teaches the addition of initiators, including acylphosphine oxides. Specific examples include commercially available IRGACURE 1173, 651, and 184 ([0072], [0073]), all taught as preferred initiators by the instant specification ([0059]) and meet the limitations of the instant claims 9-11, 14, and 21.
Given that the primary reference teaches a resist composition, and that the secondary reference Kudo et al teach a resist composition comprising known and conventional resist additives, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare the organometallic resist of Freedman et al, choosing as the resist additives, those as taught by Kudo et al as known and conventional including a quencher, and initiator.
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.
Claim1, 2, 7, 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-9 of U.S. Patent No. 12,158,699. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘699 patent claims a composition wherein there is a metal-ligand bond, and where R is alkyl (n is 0) and X-Z are -OC(=O)O-R2 with R2 falling within the scope of the instant claims and meeting –(L)n-R1, and includes a quencher and PAG. Therefore, it would have been obvious to one of ordinary skill in the art prior to prepare the material of the ‘699 patent, wherein the resultant compound also meets the limitations of the instant claims.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1/6/2026 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.
In light of applicant’s amendments, new rejections reflecting the claims as currently written have been formulated above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA C WALKE whose telephone number is (571)272-1337. The examiner can normally be reached Monday to Thursday 5:30am to 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niki Bakhtiari can be reached at 571-272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA C. WALKE/ Primary Examiner, Art Unit 1722
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