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 .
Election/Restrictions
1. Newly submitted Claim 27 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: it is a copy of a previously withdrawn Claim 17 due to said Claim 17 being directed to an invention independent of the invention elected by Applicant, save for being dependent of Claim 4, instead of Claim 1.
2. Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, Claim 27 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
3. To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
4. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
5. Applicant’s arguments, see page 8, line 9, filed 26 November 2025, with respect to the rejection of Claims 1-6 and 10-16 under 35 U.S.C. 103 as being unpatentable over Oshida et al. (Japanese Patent Publication No. JP-H11286464 A), hereinafter Oshida; have been fully considered but they are not persuasive. Applicant argues Oshida fails to teach the limitation of the composition of the present application comprising “a reaction product of a C6-C120 aromatic compound (A) with a compound represented by formula (1)” of the present application, wherein “the reaction product is such that one carbon atom in ring Y is linked to one molecule of aromatic compound (A), and one carbon atom in Ar1 or Ar2 is linked to another molecule of aromatic compound (A).” Applicant argues that due to Oshida teaching the possibility of crosslinking that this limitation is not met. Firstly, it is important to note the language of the claim: a composition comprising “a reaction product of a C6-C120 aromatic compound (A) with a compound represented by formula (1)” of the present application, wherein “the reaction product is such that one carbon atom in ring Y is linked to one molecule of aromatic compound (A), and one carbon atom in Ar1 or Ar2 is linked to another molecule of aromatic compound (A).” Thus, if even one molecule of reaction product of a reaction between just one molecule of the compound represented by formula (1) wherein that one molecule of the compound represented by formula (1) reacts to form a bond between one carbon atom of ring Y with an aromatic compound and one carbon of Ar1 or Ar2 is bonded with an aromatic compound, the limitation is met. Applicant has failed to show that this is the case. Firstly, while Oshida teaches “[t]he crosslinking agent is represented by the chemical formulae (4-1) to (4-16) of FIGS. 13 to 15” (Paragraph [0032]) a number of said compounds are not traditional crosslinkers in the usual sense of the word, i.e. multi-functional compounds which react to form a bridge from compound to another. Indeed, crosslinking agents represented by the chemical formulae (4-1) to (4-3) of Oshida are monofunctional. This means that functional groups of the “compound represented by formula (1)” of the present application react with said monofunctional compounds and no crosslinking occurs, but yet still the limitations of the present application are met. Furthermore, there is nothing in the limitation that the composition of the present application comprising “a reaction product of a C6-C120 aromatic compound (A) with a compound represented by formula (1)” of the present application, wherein “the reaction product is such that one carbon atom in ring Y is linked to one molecule of aromatic compound (A), and one carbon atom in Ar1 or Ar2 is linked to another molecule of aromatic compound (A)” would disallow use of traditional crosslinking agents, i.e. multi-functional compounds that form a bridge from one compound to another. In that situation, the functional group of ring Y of the compound represented by formula (1) of the present application would be bonded to an aromatic compound (the crosslinking agent) and the functional group of Ar1 or Ar2 of the compound represented by formula (1) of the present application would be bonded to an aromatic compound (the crosslinking agent). There is no limitation on the aromatic compound, in this case the crosslinking agent, being bonded to another compound represented by formula (1) of the present application. Thus, given that all limitations of the claims of the present application are taught by the prior art, the Applicant’s arguments are not persuasive.
Rejections - 35 USC § 103
6. 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:
7. 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.
8. Claims 2-6, 10-16 and 19-26 are rejected under 35 U.S.C. 103 as being unpatentable over Oshida et al. (Japanese Patent Publication No. JP-H11286464 A), hereinafter Oshida.
9. Regarding Claims 2-6, 10-16 and 19-26, Oshida teaches (Paragraph [0007]) a resist underlayer film-forming composition, therein photosensitive composition. Oshida teaches (Paragraph [0045]) a solvent. Oshida teaches (Claim 8, Paragraphs [0019-0030 and 0035-0037], particularly Compounds 2-2 and 2-4) a reaction product of a C6-C120 aromatic compound and a compound represented by formula (1) of the present application. Oshida teaches (Claim 8, Paragraphs [0019-0030 and 0035-0037], particularly Compounds 2-2 and 2-4) the reaction product is such that one carbon atom in ring Y is linked to one molecule of aromatic compound and one carbon atom in Ar1 or Ar2 of the compound represented by formula (1) of the present application is linked to another molecule of aromatic compound. Oshida teaches (Claim 8, Paragraphs [0019-0030 and 0035-0037], particularly Compounds 2-2 and 2-4) the compound represented by formula (1) of the present application is represented by formula (1a) of the present application. Oshida teaches (Claim 8, Paragraphs [0019-0030 and 0035-0037], particularly Compounds 2-2 and 2-4) the reaction product is such that one carbon atom in ring Y of the compound represented by formula (1) of the present application is linked to two molecules of aromatic compound. Oshida teaches (Claim 8, Paragraphs [0019-0030 and 0035-0037], particularly Compounds 2-2 and 2-4) that ring Y of the compound represented by formula (1a) of the present application is a fused ring structure containing a cyclohexene ring. Oshida teaches (Claim 8, Paragraphs [0019-0030 and 0035-0037], particularly Compounds 2-2 and 2-4) ring Y of the compound represented by formula (1a) of the present application denotes a cyclic aliphatic-aromatic fused ring. Oshida teaches (Claim 8, Paragraphs [0019-0030 and 0035-0037], particularly Compounds 2-2 and 2-4) Ar1 and Ar2 of the compound represented by formula (1) of the present application each independently denote an optionally hydroxy-substituted phenyl or naphthyl group. Oshida teaches (Claim 8, Paragraphs [0019-0030 and 0035-0037], particularly Compounds 2-2 and 2-4) the aromatic compound comprises at least one benzene ring, at least one naphthalene ring, at least one anthracene ring, at least one pyrene ring, or a combination thereof. Oshida teaches (Claim 8, Paragraphs [0019-0030 and 0035-0037], particularly Compounds 2-2 and 2-4) the aromatic compound comprises at least two benzene rings, at least two naphthalene rings, at least two anthracene rings, at least two pyrene rings, or a combination thereof. Oshida teaches (Paragraphs [0030-0034]) a crosslinking agent. Oshida teaches (Paragraphs [0035-0037]) an acid generator. Oshida teaches (Paragraph [0045]) the solvent has a boiling point of 160° C or above. Oshida teaches (Paragraph [0031]) a resist underlayer film is a baked product of a coating film comprising the resist underlayer film-forming composition.
10. While all limitations of the present claims are not present in a single experimental example of the prior art, all limitations are claimed in the prior art and a person having ordinary skill in the art would simply combine prior art elements according to known methods to yield predictable results.
Conclusion
11. 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).
12. 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 extension fee 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 date of this final action.
13. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
14. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARK F 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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16. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/R.D.C./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737