DETAILED CORRESPONDENCE
This Office action is in response to the amendment received August 28, 2025.
The rejection under 35 U.S.C. 103 as being unpatentable over SAKAIDA et al (2017/0045820) or UMEZAKI et al (2016/0347965) is withdrawn in view of the amendment to claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL. —The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The amendment and definition for L6 is not clearly supported by the amendment as now recited in claim 2. The structures in the specification for L6 only show support for a C1 alkylene group, as shown below in Synthesis Examples A1 to A3 on page 16:
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Claims 2, 3, and 5-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In Claim 2, there is no definition for L6 for Chemical Formula (5) in the claim or in the specification.
Correction is necessary to remove the indefiniteness.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, and 5-17 are rejected under 35 U.S.C. 103 as being unpatentable over ENDO et al (2016/0222248).
The claimed invention now recites the following:
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718
648
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466
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ENDO et al report a resist underlayer in Example 12 on page 15 report a polymer of Formula (5-1) meeting the polymer recited in claim 1 wherein the main chain of the polymer comprising a main chain comprising a heterocycle comprising two or more nitrogen atoms in the ring of the heterocycle, see below:
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ENDO et al lacks a working example comprising a compound of Chemical Formula 1, however do report a second polymer in Example 12 to a novolac resin of Formula (3-7) providing motivation to the skilled artisan to use any of the listed novolac resins disclosed in the U.S. patent, such as those of Formula (1-13), (1-15) and (1-17) from page 4:
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Each of these polymers above meet Ar1 from Group 1 and B1 as recited in claim 1.
Claim 3 is met by Example 12.
Claim 5 is an optional variable when n=0.
Claim 6 and 7 are met by Formula (1-13).
Claim 8 and 9 are an optional variable when n=0.
Claim 10 and 11 is optional when l=0.
Claims 12-17 are met by Example 12 for the weight ratio of the two polymers, para. [0055] for the Mw, para [0070] for a crosslinker melamine-based polymer and para. [0074] for a thermal acid generator,
It would have been prima facie obvious to one of ordinary skill in the art of resist underlayer to use any of the novolac resins on pages 3-7 which are seen as functionally equivalent resins in Example 12 in place of polymer of Formula (3-7) with the reasonable expectation of same or similar results for microphase separation of a self-assembling polymers, no intermixing of the layers and allows a vertical pattern to be formed in the self-assemble film.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S CHU whose telephone number is (571)272-1329. The examiner can normally be reached M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff, can be reached at telephone number 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
November 25, 2025