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 .
Amendment to the claims was submitted on 01/23/2026.
Claim Status
Claims 1-14 are under consideration
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima (US20100330505A1, published 2010).
Regarding claims 1-4 and 6-14,
Nakajima teaches a resist underlayer film forming composition for lithography comprising of a hydrolyzable organosilane, a hydrolysis product thereof, or a hydrolysis-condensation product thereof as a silane [abstract], reading on instant claims 12-13.
Nakajima teaches including a solvent [0041].
Teaches the hydrolysable organosilane with a formula (1),
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Where R1 is a cyclic amino group or an organic group containing a cyclic amino group, with a N atom or a C atom at a terminal of the group being bonded to a Si atom to form a Si—N bond or a Si—C bond, R2 is an alkyl group, an aryl group, a halogenated alkyl group, a halogenated aryl group, an alkenyl group, or an organic group having an epoxy group, an acryloyl group, a methacryloyl group, a mercapto group, or a cyano group, with a C atom at a terminal of the group being bonded to a Si atom to form a Si—C bond, R3 is an alkoxy group, an acyloxy group, or a halogen atom, a may be 2, b may be 0, and a+b is an integer of 2 [0016].
Teaches that the hydrolysable organosilane having a cyclic amino group, when hydrolyzed (to form a hydrolysis condensate) forms an ammonium salt (amine salt structure) [0032].
Nakajima teaches during the hydrolysis and the condensation, a catalyst can be used. Examples of the catalyst for the hydrolysis include metal chelate compounds, organic acids, inorganic acids, organic bases, and inorganic bases. Nakajima further teaches several examples of catalysts [0095-0098], such as sulfuric acid and nitric acid [0098], where among these catalysts, metal chelate compounds, organic acids, and inorganic acids are preferred and these catalysts may be used individually or in combination of two or more types thereof. [0099], reading on instant claims 1-4.
While Nakajima fails to explicitly teach using two catalysts such as sulfuric acid and nitric acid, it would have been obvious to a person of ordinary skill in the art that using these two organic acid catalysts would provide for a known and expected silicon containing film forming composition.
Given that Nakajima discloses the inorganic acid catalysts that encompasses the presently claimed acidic compounds, including sulfuric acid and nitric acid, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, to use the inorganic acid catalysts, which are both disclosed by Nakajima and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Nakajima teaches the organic group containing a cyclic amino group is a divalent linking group between a cyclic amino group and a silicon atom and examples thereof include an alkylene group [0062], overlapping the alkylene group of instant claim 11, where linear alkylene groups such as methylene and ethylene would be obvious to a person of ordinary skill in the art. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
The cyclic amino group of Nakajima overlaps the instant organic group containing an amino group with formula (A1), where L is an alkylene group and R101 and R102 may be hydrocarbon groups, reading on instant claims 10-11. The instant claims do not disclose that the R101 and R102 groups must not form a ring.
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Nakajima teaches a production method of a semiconductor device including forming an organic underlayer film on a semiconductor substrate, forming a resist underlayer film using their resist film forming composition, and forming a resist film [0026], reading on instant claim 14.
Nakajima also teaches organic acid catalysts including formic acid, oleic acid (unsaturated aliphatic carboxylic acid), and benzene sulfonic acid [0097], reading on instant claims 6-9.
Regarding claims 5-9,
The instant claims do not affirmatively require the addition of an oxocarbonic acid or an organic acid. As these claims only add further limitations to an oxocarbonic acid or an organic acid, the examiner maintains that Nakajima has rendered said claims obvious.
Regarding claims 2-9,
The instant “hydrolysis condensate prepared through hydrolysis and condensation of a hydrolyzable silane compound by using two or more acidic compounds” may be considered a product-by-process, where the number of and types of acidic compounds may not be given patentable weight, as long as the hydrolysis condensate is comparably formed, therefore the examiner maintains that Nakajima has rendered said claims obvious.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP2010113328A, published 2010, references made to the provided translation) in view of Nakajima (US20100330505A1, published 2010).
Regarding claims 1-4 and 6-14,
Tanaka teaches a film forming composition comprising of a solvent and a polysiloxane derived from compounds including a compound (a2) (a hydrolysable silane) represented by formula (2) [0009], where R3 may be a C1-C4 alkyl group, “a” may be 2, and R2 is a monovalent organic group.
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Tanaka teaches R2 may be an alkyl group with 1-15 carbon atoms, which may be substituted with an amino group [0022].
Tanaka further teaches an example of compound (a2) may be γ-aminopropyltrimethoxysilane [0029], aligning with the instant formulae (1) and (A1), where a is 1, b is 0, R3 is methoxy, R1 is a propyl group with an amino group, L is a propylene group, and R101 and R102 are each H, reading on instant claims 10-11.
Tanaka teaches a catalyst used for forming the polysiloxane may be inorganic acids such as nitric acid and sulfuric acid which may be used alone or in combination of two or more thereof [0009, 0051, 0055, 0057], reading on instant claims 2-4.
While Tanaka fails to explicitly teach using two catalysts such as sulfuric acid and nitric acid, it would have been obvious to a person of ordinary skill in the art that using these two organic acid catalysts would provide for a known and expected silicon containing film forming composition.
Given that Tanaka discloses the acid catalysts that encompasses the presently claimed acidic compounds, including sulfuric acid and nitric acid, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, to use the acid catalysts, which are both disclosed by Tanaka and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Tanaka teaches the polysiloxane is obtained by hydrolyzing and / or condensing a silicon-containing compound as a starting material in an organic solvent in the presence of water and a catalyst [0009], where the catalyst may be for example organic acids or inorganic acids [0051].
However, Tanaka is silent to the hydrolysis condensate containing two or more amino salt structures.
Nakajima, analogous art as disclosed above, teaches that the hydrolysable organosilane having an amino group, when hydrolyzed (to form a hydrolysis condensate) forms an ammonium salt (amine salt structure) [0032], reading on instant claim 1.
As both Nakajima and Tanaka teach similar compositions comprising of hydrolysis condensates of a hydrolysable organosilane having an amino group and an acid catalyst, it would have obvious to a person of ordinary skill in the art that the hydrolysis condensate of Tanaka may similarly form ammonium (amine) salt structures from each of the pendant amino groups.
Tanaka teaches their invention in the field of manufacture of semiconductor devices and the like [0002].
Tanaka teaches a method of forming an underlayer film different from the silicon-containing film on a substrate, forming a silicon-containing film (underlayer), and forming a resist layer [0092-0093, 0129], where the first underlayer film is different from the silicon-containing film, provided with predetermined functions (for example, antireflection functions, coating film flatness, and high etching resistance to a fluorine-based gas such as CF4) required for further supplementing the functions of the silicon-containing film and / or the resist coating film or obtaining functions not possessed by the silicon-containing film and / or the resist coating film in the formation of a resist pattern, reading on instant claims 12-13. While silent to the first underlayer as an organic film, it would be obvious to a person of ordinary skill in the art to try using an organic underlayer film (rather than an inorganic film), which would be different from the silicon-containing film, reading on instant claim 14.
Tanaka also teaches organic acid catalysts including formic acid, oleic acid (unsaturated aliphatic carboxylic acid), and benzene sulfonic acid [0055], reading on instant claims 6-9.
Regarding claims 5-9,
The instant claims do not affirmatively require the addition of an oxocarbonic acid or an organic acid. As these claims only add further limitations to an oxocarbonic acid or an organic acid, the examiner maintains that Tanaka has rendered said claims obvious.
Regarding claims 2-9,
The instant “hydrolysis condensate prepared through hydrolysis and condensation of a hydrolyzable silane compound by using two or more acidic compounds” may be considered a product-by-process, where the number of and types of acidic compounds may not be given patentable weight, as long as the hydrolysis condensate is comparably formed, therefore the examiner maintains that Tanaka has rendered said claims obvious.
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 17/916,512 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the reference application claims are drawn to a film-forming composition comprising of a solvent and a condensate of a hydrolysable silane compound formed by using acidic compounds, where the hydrolysable silane contains an organic group containing an amino group. Both applications further disclose forming a resist underlayer film using the film-forming compositions. The reference application further discloses that hydrolysis condensate can contain two or more amine salt structures [0058]. It would have been obvious to a person of ordinary skill in the art that the condensate of the reference application could similarly containing two or more amine salt structures.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed 01/23/2026 with respect to the 103 rejection in view of Tanaka have been fully considered and are persuasive. The rejection has been withdrawn. However, upon further search and consideration, a new ground(s) of rejection is made in view of Nakajima.
Applicant's arguments filed 01/23/2026 regarding the 103 rejection in view of Nakajima and the obviousness-type double patenting rejection have been fully considered but they are not persuasive. The above rejections have been updated accordingly.
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 Alexander Lee whose telephone number is (571)272-2261. The examiner can normally be reached M-Th 7:30-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at (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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/A.N.L./Examiner, Art Unit 1737 /MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
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