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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/02/2026 has been entered.
Claims 1-9 and 11-14 are currently pending. Claim 10 has been canceled.
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 1-9 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 17/916,431 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and copending application ‘431 have claims drawn to a film-forming composition comprising a solvent and a condensate of a hydrolysable silane compound containing an acidic compound containing two or more acidic groups and amino group containing silane of formula (1), which the formula (1) compounds are obvious variants of each other.
The present claims indicated above also cover the resist underlayer film as well as method of producing a semiconductor device which overlap the claims of copending Application No. 17/916,431 (reference application), and thus , render the present claims prima facie obvious.
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 02/02/2026 have been fully considered but they are not persuasive. Applicants respectfully traverses the provisional obviousness-type double patenting rejection. Claim 1 of the present application recite,” [a} film-forming composition comprising a solvent and a condensate of a hydrolysable silane compound, wherein: the condensate of the hydrolysable silane compound contains an acidic compound containing two or more acidic groups and an amino group-containing silane.” The claims of the 431 Application do not recite at least these claim features, but rather recite product-by-process features. For at least the foregoing reasons, claim 1 of the present application differs from the claims of the 431 application and would not have been obvious variant of the claims of the 431 Application.
Applicants respectfully disagrees. Although the ‘431 application recite “product-by-process” claim language, applicants have failed to show why the product “ a film-forming composition” are not the same. Applicants have failed to identify any functional or structural differences that would distinguish the claimed product from the structures made using another process. Nonetheless, the ‘431 application teach a solvent and a condensate of a hydrolysable silane compound containing an acidic compound containing two or more acidic groups and amino group containing silane of formula (1), which the formula (1) compounds are obvious variants of the formula 1 of the present invention.
Therefore, the rejection is maintained.
Conclusion
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/CHANCEITY N ROBINSON/Primary Examiner, Art Unit 1737