DETAILED ACTION
This Office action is in response to the RCE filed April 13, 2026.
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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13, and 15-26 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 ambiguity is found in claim 13 below with the boxed variables:
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The amendment to claim 1 inserting a new formula (A-1) finds no description in the specification as originally filed. Example 1 on page 12, para. [0132] disclose that “one of the two R is methyl.” however that structure does not define the other R group. This does not support the current formula (A-1) in claim 1, which recites that “one of the two R is methyl and the other is H.” It is not clear that the other R is H as R could signify an additional organic group like an alkyl group such as ethyl, propyl, butyl, etc. It is not clear that the other R is H based on Example 1.
Page 3, para. [0034] in the specification disclose that Ar is a substituted or unsubstituted aryl preferably C6-10 substituted or unsubstituted phenyl where a substitution group is hydroxy or a C1-8 alkyl and cite possible examples shown below. None of these structures fall in the scope of the amended formula (A-1) where one of the two R is methyl and the other R is H on the same benzene ring:
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In essence, it is ambiguous as to what the other R group would be as there is no clear indication in the specification that the other R would be hydrogen (H). It is just as likely the R group could be another alkyl group besides methyl.
Correction or indication in the specification as to the description that the other R in formula (A-1) is hydrogen is necessary to clarify the ambiguity.
Claim 26 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 13 has been amended to remove the group Ar, thus claim 26 no longer further limits claim 13 because Ar has been canceled.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 13 and 15-25 would be allowed upon clarification of the scope of the repeating unit of formula (A-1).
None of the prior art references of record disclose a methyl group at the 3-position and a second R group at the 5-position of a bisphenol A unit in a novolak resin with a substituted phenol repeat unit formulated in a negative type composition comprising an alkali-soluble resin, a reflectance modifier, a polymerization initiator, and a solvent.
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 on 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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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
May 1, 2026
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