DETAILED CORRESPONDENCE
This Office action is in response to the RCE received February 25, 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.
Claims 1-7 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 amendment to claim 1 wherein RR1 is now defined as “ wherein the heterocyclic group is other than a monocyclic ring” . The underlined language finds no support in the specification as originally filed. The recited definition for RR1 found on page 93, para. [0135] of the US Patent Application Publication 2023/0116120 is to “The heterocyclic group may be either monocyclic or fused ring…” see below:
PNG
media_image1.png
98
398
media_image1.png
Greyscale
Correction to the claim 1 is necessary to remove unsupported language.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over HATAKEYAMA et al (2002/0098443).) in view of HATAKEYAMA et al (2017/0108775) .
The claimed invention now recites the following:
PNG
media_image2.png
724
670
media_image2.png
Greyscale
PNG
media_image3.png
416
678
media_image3.png
Greyscale
PNG
media_image4.png
904
652
media_image4.png
Greyscale
PNG
media_image5.png
266
686
media_image5.png
Greyscale
HATAKEYAMA et al ‘443 report a positive photosensitive resin composition comprising a quencher ingredient formulation in the composition of the following structure on pages 3, 5 and 6:
PNG
media_image6.png
84
348
media_image6.png
Greyscale
R2 is defined in para. [0030], shown below:
PNG
media_image7.png
110
442
media_image7.png
Greyscale
PNG
media_image8.png
140
464
media_image8.png
Greyscale
PNG
media_image9.png
138
420
media_image9.png
Greyscale
PNG
media_image10.png
232
432
media_image10.png
Greyscale
R10 is disclosed as those groups in para. [0036] above with specific groups as bonded to the nitrogen as seen in (B3)-17, (B3)-19 and (B3)-20) above from pages 5 and 6.
HATAKEYAMA et al ‘443 lack the claimed photoacid generator of formula (1a) or (1b).
HATAKEYAMA et al “775 report chemically amplified photoresist composition comprising conventional photoacid generators that meet (1a) and (1b), see page 47-49 for a compound meeting (1a):
PNG
media_image11.png
78
222
media_image11.png
Greyscale
and a compound meeting (1b) by having both an anion and a cation in the same molecule, see starting on page 51-54, one example below:
PNG
media_image12.png
286
424
media_image12.png
Greyscale
The quenchers disclosed lack those as recited in claim 1, however HATAKEYAMA et al ‘443 disclose known quencher compounds which provide improved results for thinning of the resist, enhanced resolution and focus margin.
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition to use quenchers reported in KOBAYASHI et al et al containing a fused heterocyclic ring (B)-15 and ‘443 in the composition of HATAKEYAMA et al ‘775 with the reasonable expectation of same or similar results improved results for thinning of the resist, enhanced resolution and focus margin.
The rejection is repeated wherein the definition for R2 in formula (1) can be an C1 to C10 alkyl group (see below), meeting the current amendment to XL having the alkylene groups of XL -0, XL -2 to XL -5 shown above.
PNG
media_image13.png
63
358
media_image13.png
Greyscale
Thus, the prior art teaches the claimed amine based on formula (1).
This rejection is repeated wherein the amendment to claim 1 finds no support in the specification as filed and if deleted, this rejection would remain.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KOBAYASHI et al (2009/0011365) is cited to disclose heterocyclic fused rings in the quencher, see page 49, para [0188] for a 7-oxanorbornane-2-carboxylic ester structure below:
PNG
media_image14.png
362
384
media_image14.png
Greyscale
OHASHI et al (2023/116120) is cited as the US PG Pub to the current application and reference for the original filed specification.
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 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
March 13, 2026