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 .
Response to Amendment
Applicant’s amendment and remarks, filed 12/23/2025, are noted with appreciation.
Claims 17-23 and 24-36 remain pending, claims 1-16 having been previously canceled.
Election/Restriction
Claims 31-36 remain withdrawn from further consideration pursuant to 37 C.F.R. 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/23/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/06/2025 was filed after the mailing date of the non-final Office action on 09/24/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Primary Examiner.
Response to Arguments
Applicant’s arguments in traverse of the non-final Office action mailed 09/24/2025 (non-final action) are noted with appreciation.
Specification
The objection to the abstract in the non-final Office action is withdrawn in view of the amendment.
Claim Objections
The objection to claim 20 in the non-final Office action is withdrawn in view of the amendment.
Claim Rejections – 35 USC § 112
The rejection of claims 17-30 under 35 U.S.C. § 112(a) in the non-final Office action is withdrawn in view of the amendment. Applicant has amended claim 17 to recite “a carbon layer equivalent to a spin-on-carbon coating” as supported by the instant specification at 4:3-5. See the non-final action at ¶12.
The rejection of claims 17-30 under 35 U.S.C. § 112(b) in the non-final Office action is withdrawn in view of the amendment. With specific respect to independent claim 17, Applicant has (i) specified the high-carbon material (C), (ii) specified the order of layers (see non-final action, ¶19, structure X).
Claim Rejections – 35 USC § 102/103
The rejections of claims 17-19, 21, and 24-30 as either anticipated by or obvious in view of US 2010/0009132 A1 in the non-final Office action is/are withdrawn in view of the amendment. The prior art neither teaches nor suggests the claimed process wherein the high-carbon material (C) comprises at least one of C2, C3, or C4.
Rejoinder
Independent claim 17 is allowable over the prior art. Since lack of unity was held a posteriori in the Office action mailed 04/24/2025, rejoinder of claims 31-36 must now be reconsidered. Here, the special technical feature making a contribution over the prior art is the method of claim 17. But, claims 31-36 do not require the method of claim 17. Specifically, claim 31 recites “segregated layers manufactured by claim 17”, claim 32 recites “photoresist layer manufactured by the method of claim 31”, claim 33 recites “a mask, manufactured by claim 32”, and claim 34 recites “substrate manufacture by claim 33”, which are “nested” product-by-process limitations. The Federal Circuit has held that such a nested product-by-process limitations are interpreted according to the conventional product-by-process analysis. Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334 (Fed. Cir. 2020) (citing Perdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345 (Fed. Cir. 2016)).
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). If the process limitation connotes specific structure and may be considered a structural limitation, however, that structure should be considered. In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). See also In re Nordt Dev. Co., 881 F.3d 1371, 1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018). Once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the Applicant to show a non-obvious difference. MPEP § 2113(II). It is the Primary Examiner’s position that the structure implied by the process steps of claim 17 is merely a substrate | SOC-equivalent coating | antireflective layer.
Here, since claims 31-35 require only the substrate | SOC-equivalent coating | antireflective layer structure, regardless of the steps used to form those layers, these claims do not include the special technical feature making a contribution over the prior art and unity is still lacking. Claim 36 does not incorporate any of the allowable features of claim 17 making a contribution over the prior art and continues to lack unity as well.
Allowable Subject Matter
Claims 17-22 and 24-30 are allowed.
The following is an examiner’s statement of reasons for allowance: The prior art neither teaches nor suggests the claimed process wherein the high-carbon material comprises at least one of C2, C3, or C4.
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.”
Primary Examiner’s Suggestion
The Primary Examiner makes the following suggestions for Applicant’s consideration and simply to improve the readability of independent claim 17. It is a suggestion only and does not constitute a new ground of objection or rejection:
- - (2) heating said substrate to form segregated layers of antireflective coating made from siloxane polymer (B) and a carbon layer equivalent to a spin-on-carbon coating made from high-carbon material (C), wherein -equivalent coating, and substrate are arranged in this order, from top to bottom, - -
Conclusion
This application is in condition for allowance except for the presence of claims 31-36, directed to an invention non-elected with traverse in the reply filed on 06/23/2025. Applicant is given TWO (2) MONTHS from the date of this letter to cancel the noted claims or take other appropriate action (37 CFR 1.144). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner’s Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.
The prosecution of this case is closed except for consideration of the above matter.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2019/0027369 A1, cited in the IDS filed 10/06/2025, is distinct from the instant claim in that the polysiloxane antireflective resist underlayer is formed in a separate step [0191] and does not self-segregate from a single composition also containing material that forms a carbon layer equivalent to a spin-on-carbon coating.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571) 272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
22 January 2026