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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/06/2026 is being considered by the examiner.
Response to Amendment
Applicant’s Amendment filed 06/12/2026 has been entered and is considered with this office action. Claims 1,2, and 8 have been amended. Claims 3 and 4 have been canceled. No new matter appears to have been added.
Response to Arguments
Applicant’s amendments and arguments based thereon are considered to change the scope of the claims so as to overcome the rejections made in the prior office action.
Applicant’s arguments regarding unexpected results and data proffered are once again considered but still deemed to not cover the scope of the claims.
Applicant’s supporting data for these arguments are directed to polymer-bound salt embodiments, but the scope of claims 1, 2, and 8, as well as dependent claims 5-7, are directed to a salt that is not polymer-bound. Applicant claims a polymer bearing a structural unit meeting the limitations of claim 1 (and not claims 2 or 8) in claim 9.
The examples pointed to use polymer-bound salts, where the acid generated stays in relatively close proximity to the polymer to be degraded, versus an unbound salt that is left to diffuse around the polymer matrix and whose acid may further diffuse into unwanted areas of the resist after exposure, which will degrade the final pattern and raise CDU. As such, the performance in patterning is result of the polymer-bound nature of the sulfonium salt - said polymer-bound nature is not reflected in the independent claims.
After further search and consideration, the examiner makes a new grounds over art as set forth in the body of the action below. These new grounds were necessitated by the applicant’s amendments.
After further search and consideration, the examiner makes a new grounds of rejection over Copending US Patent Application 18/124,180. As this grounds were not necessitated by applicant’s amendments, this action is Non-final.
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 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.
Claim(s) 1 and 5-20 rejected under 35 U.S.C. 103 as being unpatentable over Ohashi et al (US 20100055608 A1) and Komuro et al (JP2020015713A, published 01/30/2020).
Regarding Claim 1 and 5-7, Ohashi discloses a polymerizable anion-containing sulfonium salt and a resist composition comprising a polymer derived from the sulfonium salt (Abstract).
The salt of Ohashi is disclosed from [0067]-[0073] and the polymerized form is discussed from [0074]-[0081] as bounded by Formula 1:
PNG
media_image1.png
256
270
media_image1.png
Greyscale
where:
R1 is H, F, Me, or CF3
R2-R4 are each independently a substituted or unsubstituted straight/cyclic/branched C1-C10 alkyl, alkenyl, or oxoalkyl group group or a C6-C18 aryl or alkylaryl or oxoaryl group. Two of the R groups may bond to form a ring with the sulfur atom they are attached to.
A is a divalent C1-C20 organic group
Subscript n is 0 or 1
. Examples of the anion of the salt are provided in [0071]:
PNG
media_image2.png
156
310
media_image2.png
Greyscale
PNG
media_image3.png
186
266
media_image3.png
Greyscale
PNG
media_image4.png
236
274
media_image4.png
Greyscale
The exemplary anions meet the limitations of the claim 1 for where:
Q1 and Q2 are a fluorine atom
Lb1 is a divalent C4 alkyl group where one carbon is trifluoro-substituted and two CH2 groups have been replaced with a CO-O group
Yb1 is a norbornane (C7 ring), adamantane (C10 ring), norbornanelactone (C8 ring with 2x O heteroatoms), or cyclohexane (C6 ring) group (corresponding to an alicyclic hydrocarbon having 3-24 carbon atoms which may have a substituent such as lactone, where the embodiments overlap with the claimed range of carbons)
These groups meet the limitations of claim 5 for where Yb1 is a norbornanediyl , adamantanediyl, or norbornanelactonediyl or cyclohexanediyl group
L10 is a single bond
X10 is a carboxyl group *-(CO)-O-**
This group meets the limitations of claim 6 and 7 for where claimed X10 corresponds further formula (X1-1)
Rbb1 is a hydrogen or methyl group
The anion is paired with a sulfonium cation such as a substituted triphenylsulfonium.
Ohashi does not disclose a cation that conforms to the limitations of claim 1.
This limitation is met by Komuro.
Komuro discloses a salt represented by formula (I) at [0005]-[0006] and [0008]-[0053], where the salt is a sulfonium salt comprising a triaryl sulfonium cation and a substituted sulfonic acid anion.
Specific embodiments presented by the reference are depicted below:
PNG
media_image5.png
312
620
media_image5.png
Greyscale
PNG
media_image6.png
438
720
media_image6.png
Greyscale
PNG
media_image7.png
174
368
media_image7.png
Greyscale
The disclosed embodiments meet the limitations of the claims for where:
Subscript m1 is 1-2, claimed A1 is a -CH2- that has been replaced for an -O-
Subscript m2 is 0-1, claimed A2 is a -CH2- that has been replaced for an -O-
Subscript m3 is 0-1, claimed A3 is a -CH2- that has been replaced for an -O-
Subscript m4 is 1-5, where claimed R4 is a halogen atom, specifically I and/or F, and at least one R4 is an iodine atom
Subscript m5 is 1, when the corresponding m2 is 1, and R5 is I (halogen)
Subscript m6 is 1, when the corresponding m3 is 1, and R6 is I
Subscript m8 is 0-1, and R8 is I when m8 is 1
Subscript m7 and m9 are 0
The anions of Komuro are disclosed from [0011]-[0051], and may be, for example, a fluorinated sulfonic acid anion.
The anions of Komuro and Ohashi are both directed to fluorinated sulfonic acid embodiments – a person having ordinary skill in the art would consider it obvious to substitute the cation of Komuro into the salt of Ohashi using Ohashi’s anion to arrive at a new species embodiment with the intent to use it as an acid generator in a similar fashion to the salts of Komuro and Ohashi individually (See MPEP 2144.06). Komuro further ascribes improved Critical Dimension Uniformity (CDU) to resist compositions using the salt as disclosed ([0237]).
A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the effective filing date through the use of a mixed salt comprising the taught anion of Ohashi and the taught cation of Komuro to arrive at a salt and resist composition comprising such having improved CDU.
Regarding Claim 8, Ohashi discloses a polymerizable anion-containing sulfonium salt and a resist composition comprising a polymer derived from the sulfonium salt (Abstract).
The salt of Ohashi is disclosed from [0067]-[0073 and the polymerized form is discussed from [0074]-[0081]. Examples of the anion of the salt are provided in [0071]:
PNG
media_image2.png
156
310
media_image2.png
Greyscale
PNG
media_image2.png
156
310
media_image2.png
Greyscale
PNG
media_image3.png
186
266
media_image3.png
Greyscale
PNG
media_image4.png
236
274
media_image4.png
Greyscale
The exemplary anions meet the limitations of the claim for where:
Q1 and Q2 are a fluorine atom
Lb1 is a divalent C4 alkyl group where one carbon is trifluoro-substituted and two CH2 groups have been replaced with a CO-O group
Yb1 is a norbornane (C7 ring), adamantane (C10 ring), norbornanelactone (C8 ring with 2x O heteroatoms), or cyclohexane (C6 ring) group (corresponding to an alicyclic hydrocarbon having 3-24 carbon atoms which may have a substituent such as lactone, where the embodiments overlap with the claimed range of carbons)
L10 is a single bond
X10 is a carboxyl group
While not explicitly a formula assigned to one of X1-2 through X1-8, the chemical structure of X10 as defined here is similar to that of X1-8, where both structures bear carboxyl group functionalities and the linkages of each are cleavable by acid – a person having ordinary skill in the art would consider the additional oxygen to be obvious by way of expecting similar acid lability, as such chemical structural similarity begets similar properties. See MPEP 2144.09
Rbb1 is a hydrogen
The anion is paired with a sulfonium cation such as a substituted triphenylsulfonium.
Ohashi does not disclose a cation that conforms to the limitations of claim 1.
This limitation is met by Komuro.
Komuro discloses a salt represented by formula (I) at [0005]-[0006] and [0008]-[0053], where the salt is a sulfonium salt comprising a triaryl sulfonium cation and a substituted sulfonic acid anion.
Specific embodiments presented by the reference are depicted below:
PNG
media_image5.png
312
620
media_image5.png
Greyscale
PNG
media_image6.png
438
720
media_image6.png
Greyscale
PNG
media_image7.png
174
368
media_image7.png
Greyscale
The disclosed embodiments meet the limitations of the claims for where:
Subscript m1 is 1-2, claimed A1 is a -CH2- that has been replaced for an -O-
Subscript m2 is 0-1, claimed A2 is a -CH2- that has been replaced for an -O-
Subscript m3 is 0-1, claimed A3 is a -CH2- that has been replaced for an -O-
Subscript m4 is 1-5, where claimed R4 is a halogen atom, specifically I and/or F, and at least one R4 is an iodine atom
Subscript m5 is 1, when the corresponding m2 is 1, and R5 is I (halogen)
Subscript m6 is 1, when the corresponding m3 is 1, and R6 is I
Subscript m8 is 0-1, and R8 is I when m8 is 1
Subscript m7 and m9 are 0
The anions of Komuro are disclosed from [0011]-[0051], and may be, for example, a fluorinated sulfonic acid anion.
The anions of Komuro and Ohashi are both directed to fluorinated sulfonic acid embodiments – a person having ordinary skill in the art would consider it obvious to substitute the cation of Komuro into the salt of Ohashi using Ohashi’s anion to arrive at a new species embodiment with the intent to use it as an acid generator in a similar fashion to the salts of Komuro and Ohashi individually (See MPEP 2144.06). Komuro further ascribes improved Critical Dimension Uniformity (CDU) to resist compositions using the salt as disclosed ([0237]).
A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the effective filing date through the use of a mixed salt comprising the taught anion of Ohashi and the taught cation of Komuro to arrive at a salt and resist composition comprising such having improved CDU.
Regarding Claims 9-11, Ohashi and Hatakeyama disclose the limitations of the claim as discussed above regarding claim 1, but do not teach an experimental example of a resin comprising a structural unit meeting the limitations of claim 1. As such, the references do not teach experimental embodiments of the dependent claims.
These limitations are met by the general disclosure of Ohashi, where in [0081] the resin contained in the resist composition of the reference is a resin having a structural unit derived from the salt (I), also described as structural unit (Ib) (claim 9). The resin may also comprise further structural units such as units comprising an acid labile group ([0082]-[0164]) (claim 10).
The resist composition (see [0168]-[0180]) comprises the base polymer (herein referred to as (A)), and further comprises a second acid generator (C), where (C) may be a known acid generator in the art (claim 11). Further components include a solvent (B), a quencher (D), and a surfactant (E). When the composition is a negative resist, a crosslinker (F) is present. Ohashi ascribes high resolution and improved pattern density dependency to the photoresist comprising the components at [0049]. It further describes the polymer as advantageously used in precise patterning.
A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the filing date from the disclosures of Ohashi and Komuro by incorporating these components to form a resist composition having high resolution and exhibiting improved pattern density
Regarding Claim 12, Ohashi and Komuro teach the limitations of the claim as discussed above regarding claim 11, but do not teach an experimental example of a resin comprising a structural unit meeting the limitations of claim 12.
This limitation is met by the general disclosure of Ohashi.
The polymer of Ohashi is presented from [0082]-[0164] and comprises at least one type of subunit selected from formulas (2)-(6) presented at [0082]. Specific examples have been selected from the disclosure for clarity
PNG
media_image8.png
156
142
media_image8.png
Greyscale
The above meets the limitations of claimed (a1-0) for where:
Ra01 is methyl
La01 is an oxygen -O- linkage
Ra02 and Ra03 are each methyl (C1 alkyl group)
Ra04 is a cyclohexyl group (C6 alicyclic hydrocarbon)
PNG
media_image9.png
146
334
media_image9.png
Greyscale
The above meet the limitations of claimed (a1-1) for where:
Ra4 is methyl
La1 is oxygen -O- linkage
Ra6 is an ethyl group (C2 alkyl), butyl group (C4 alkyl), or (methyl group (C1 alkyl)
Subscript m1 is 0
PNG
media_image10.png
284
274
media_image10.png
Greyscale
The above meets the limitations of claimed (a1-2) for where:
Ra5 is H
La2 is an oxygen -O-
Ra7 is an n-butyl, t-butyl (C4) , methyl (C1), or pentyl group (C5)
Subscripts n1 and n1’ are 0, or where n1’ may also be 1
Ohashi ascribes high resolution and improved pattern density dependency to the photoresist comprising the components at [0049]. It further describes the polymer as advantageously used in precise patterning.
A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the filing date from the disclosures of Ohashi and Komuro by incorporating these components to form a resist composition having high resolution and exhibiting improved pattern density
Regarding Claim 13 and 17, Ohashi and Komuro teach the limitations of the claim as discussed above regarding claim 11, but do not teach an experimental example of a resin comprising a structural unit meeting the limitations of claim 13 and 17.
This limitation is met by the general disclosure of Ohashi.
The polymer of Ohashi is presented from [0082]-[0164] and comprises at least one type of subunit selected from formulas (2)-(6) presented at [0082]. Further subunits (7-11) may also be included, where specific examples have been selected from the disclosure for clarity
PNG
media_image11.png
140
298
media_image11.png
Greyscale
The above reads upon the claimed formula (a2-A) for where:
Ra50 represents a methyl group
Aa50 is a single bond
Subscript mb is 0
As mb is 0, Ra51 is not present
Ohashi ascribes high resolution and improved pattern density dependency to the photoresist comprising the components at [0049]. It further describes the polymer as advantageously used in precise patterning.
A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the filing date from the disclosures of Ohashi and Komuro by incorporating these components to form a resist composition having high resolution and exhibiting improved pattern density
Regarding Claim 14, Ohashi and Komuro teach the limitations of the claim as discussed above regarding claim 11, but do not teach an experimental example of a resin comprising a structural unit meeting the limitations of claim 14 wherein a salt generating an acid having a lower acidity than the salt of formula I is present.
This limitation is met by the general disclosure of Komuro.
Komuro teaches a quencher at [0210]-[0214], where the quencher may be a basic nitrogen compound or a salt that generates an acid weaker in acidity than that of the acid generated from the acid generator. Ohashi also teaches quenchers such as a basic nitrogen compound, but does not teach the acid-generating salt – and further asserts that the inclusion of the quencher improves pattern profile and resolution (Ohashi, [0207]).
A person having ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the effective filing date by including the weak-acid generating quencher of Komuro into the composition so as to improve the pattern profile of the resultant resist.
Regarding Claims 15, 18, and 19, these claims all claim embodiments using “comprising” transitional phrases, wherein unrecited components may be present in the composition.
Ohashi and Komuro teach the limitations of the claim as discussed above regarding claim 1, but do not teach an experimental example of a resin comprising a structural unit meeting the limitations of the claim and thus do not teach an embodiment meeting the limitations of claims 15, 18, and 19.
These limitations are met by Ohashi.
Ohashi describes a further acid generator may be used in the composition at [0189]-[0205], in addition to the polymer-bound acid generator, where the acid generator may be “any compound capable of generating an acid upon exposure to high-energy radiation”, and may be used in admixture or alone. The unpolymerized salt of Komuro and Ohashi described above regarding claims 1 and 11 has been established to function as a photoacid generator. Further, as it would bear substantial structural similarity to the polymeric embodiment of the acid generator, it would be expected to behave in a similar manner in terms of exposure requirements and reactivity. The resultant resist composition comprising the polymer with a bound acid generator and acid-labile group, and unpolymerized acid generator meets the limitations of the claims.
A person having ordinary skill in the art would have fond it obvious to arrive at the claimed invention by incorporating the salt of claim 1 in a form unpolymerized into the composition of Ohashi and Komuro to arrive at a salt acid generator and resist composition comprising such having improved CDU.
Regarding Claim 16, Ohashi and Komuro teach the limitations of the claim as discussed above regarding claim 1, but do not teach an experimental example of a resin comprising a structural unit meeting the limitations of the claim and thus do not teach an embodiment meeting the limitations of claim 16.
These limitations are met by the disclosure of Komuro.
Komuro teaches a polymer embodiment as part of the photoresist composition, wherein subunits present thereon are described from [0088]-[0204], where the resin may comprise a subunit (a3-4) as described at [0130]-[0131]:
PNG
media_image12.png
200
188
media_image12.png
Greyscale
Where:
La7 represents a group represented by -O- or *-O-La8-O-, *-O-La8-CO-O-*, * -O-La8 - CO -O - La9 - CO -O -, or * -O-La8 -O - CO -La9.
La8 and La9 each independently represent an alkanediyl group having 1 to 6 carbon atoms.
Ra24 is an alkyl group having 1-6 carbon atoms and may be halogen-substituted, or a halogen atom,
Ra25 each independently represent a carboxy group, cyano group, or aliphatic hydrocarbyl group having 1-4 carbon atoms
Subscript w1 is an integer of 0-8
When w2 is 2 or more, a plurality of Ra25 may be the same or different from each other
These limitations are verbatim to the limitations of the claim.
A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the effective filing date from the disclosures of Ohashi and Komuro by incorporating these components to form a resist composition having high resolution and exhibiting improved pattern density
Regarding Claim 20, Ohashi and Komuro disclose the limitations of the claim as discussed above regarding claim 11, but do not disclose an experimental procedure using the composition of claim 11 to form a patterned resist.
This limitation is met by the general disclosure of the reference.
Ohashi teaches a method for producing a resist pattern in [0244], wherein the resist pattern is formed by 1) applying the resist composition to a substrate, 2) drying the applied composition to form a resist film layer, 3) exposing the composition layer, 4) heating the exposed composition layer, and 5) developing the heated composition layer such as with an alkaline developer.
A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the effective filing date from the general disclosure of Ohashi, such disclosure amounting to a known product (a taught resist composition) used in a known process (a taught patterning method) to achieve a predictable result - a patterned resist having high resolution.
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Nishimura et al (US 20180113382 A1, published 04/26/2018), and Hatakeyama et al (US 20200089112 A1)
Regarding Claim 2, Nishimura discloses a salt, acid generator, resin, resist composition made therefrom, and a method for producing a resist pattern using the resist composition and components thereof.
Nishimura does not specifically disclose a single experimental embodiment that encompasses the limitations of the claim.
These limitations are met by the general disclosure of the reference.
The reference discloses a salt (I) represented by the formula (1) as presented in [0054], wherein the formula’s limitations are delimited in [0054]-[0084], and specific examples of the anion are disclosed in [0085]. Specific examples are reproduced below – it should be noted these examples are some of many and should not be taken as the sum total of the teachings of the reference relevant to the claims:
PNG
media_image13.png
102
350
media_image13.png
Greyscale
Anion Ia-13 meets the limitations of the claimed anion for where, in the claim:
Q1 and Q2 are fluorines
Lb1 is a C4 hydrocarbyl group wherein two of the CH2 linkages have been substituted with a successive -O- and -CO- group
Yb1 is an adamantyl group (alicyclic hydrocarbon having 10 atoms)
X10 represents a -CO-O- group
L10 represents a C9 hydrocarbon group having 2 separate replacements of -CH2- groups for -O- linkages
Regarding the cation, the cation may be a triphenylsulfonium cation of the salt provided as described from [0086] to [0122], where the cation is a sulfonium that may conform to formula (b2-4).
Nishimura does not disclose a cation that conforms to the limitations of claim 1.
This limitation is met by Hatakeyama.
Hatakeyama discloses a resist composition comprising a base polymer and an acid generator capable of generating an acid upon exposure to light (abstract).
The composition of Hatakeyama comprises a salt conforming to formula (I) ([0045]-[0064]:
PNG
media_image14.png
150
504
media_image14.png
Greyscale
Where:
X- is an anion such as a sulfonic acid anion
R1 and R2 are each independently a single bond or a C1-C20 hydrocarbon group that may be substituted with an ether bond, ester bond, or hydroxyl. Exemplary hydrocarbon groups include those stated at [0047] such as methylene, ethylene, cyclopentyl, and decanyl.
L1 is an ether bond, ester bond, or amide bond
L2 and L3 are each independently a single bond, ester bond, ether bond, or amide bond
R3 is a hydroxyl, carboxyl, nitro, cyano, fluorine, chlorine, bromine, amino, or other group described at [0049].
R4 is a hydroxyl, carboxyl, fluorine, chlorine, bromine, amino, iodine, C1-C20 alkyl or alkoxy, or other group described at [0050]
R5 is are a C11-C20 monovalent hydrocarbon group that may comprise a heteroatom, such as those described at [0058], including phenylene rings as described at [0057].
Subscript m is1-5
Subscript n is 0-3
Subscript p is 0 or 1
Subscript q is 0-4
Subscript r is 1-3
Exemplary cations for the acid generator include those depicted at [0063]:
The disclosed formula meets the limitations of the claimed cation for where:
Subscript m1 is 1, claimed A1 is an X01-L01 group, where X01 is -O- and L01 is a C10C6 alkanediyl group that has had a terminal -CH2- connecting it to the phenylene ring replaced for an -O- (Reference L2 is a single bond, Reference R1 is a single bond, Reference L1 is an ether bond, Reference R2 is a C1-C20 alkyl group, Reference L3 is a single bond)
Reference R2 overlaps with the scope of claimed L01 at C1-C6 alkanediyl (alkane) groups, see MPEP 2144.05
Claimed Subscript m4 is 1-3, where claimed R4 is a halogen atom, specifically I, and at least one R4 is an iodine atom (reference subscript n is 0-3, overlapping the claimed range)
Claimed Subscript m2 and m3 are each independently 0 or 1 (where reference R5 are each unsubstituted phenyl rings when reference subscript r is 1, or where when reference subscript is 2 or 3, the moeity corresponding to claimed subscript m1 is duplicated)
Claimed Subscripts m5 and m6 are each 0 or 1-3 (these values are 0 when m2 and m3 are 0, and the corresponding moeity for claimed m4 is duplicated when m2 and m3 are each independently 1)
Claimed R5 and R6 may be the same as Claimed R4 when m5 and m6 are nonzero
Claimed Subscripts m7-m9 are each 0 or 1-3 (these values are 0 reference R5s are unsubstituted, and the corresponding moeity for claimed m4 is duplicated when m2 and m3 are each independently 1)
Claimed R7-R9 each independently represent a halogen atom or a C1-C18 hydrocarbon group that may be substituted with ether, and/or carbonyl groups, when present (Reference R4 may be a halogen or C1-20 alkyl or alkoxy group or C2-C20 alkoxycarbonyl
Hatakeyama ascribes improved absorptivity to EUV radiation and a high decomposition efficiency to the salt because of the high iodine content – the cation is more sensitive. A person having ordinary skill in the art would have found it obvious to incorporate the cation of Hatakeyama into the salt of Nishimura so as to improve the EUV absorptivity of the resultant acid generator. Further, Hatakeyama and Nishimura are each directed to salt compounds that generate an acid upon exposure to radiation – a person having ordinary skill in the art would consider the substitution of one cation of an acid generator for another a matter of substitution with the expectation that the resultant compound would still function as an acid generator.
A person of ordinary skill in the art would have found it obvious to arrive at the claimed invention prior to the effective filing date by incorporating the cation of Hatakeyama into the salt of Nishimura so as to arrive at an acid generator having improved EUV absorptivity.
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, 5-7, 9-15, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 8-10, 12-15, 18, 19, and 21-22 of copending Application No. 18124180 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding Instant Claim 1 and Reference claim 1:
Both claims are directed to sulfonium sulfonate salts wherein:
in formula (I),
R4, R', R6, R7, R' and R9 each independently represent a halogen atom, a haloalkyl group having I to 12 carbon atoms or a hydrocarbon group having 1 to 18 carbon atoms, the hydrocarbon group may have a substituent, and -CH2 - included in the haloalkyl group and the hydrocarbon group may be replaced by -0-
,Al , A2 and A3 each independently represent a hydrocarbon group having 1 to 20 carbon atoms, the hydrocarbon group may have a substituent, and -CH2 - included in the hydrocarbon group may be replaced by -0-, -CO-, -S- or -SO2-,
ml represents an integer of 1 to 5, and when ml is 2 or more, a plurality of groups in parentheses may be the same or different from each other,
m2 represents an integer of 0 to 5, and when m2 is 2 or more, a plurality of groups in parentheses may be the same or different from each other,
m3 represents an integer of 0 to 5, and when m3 is 2 or more, a plurality of groups in parentheses may be the same or different from each other,
m4 represents an integer of 0 to 4, and when m4 is 2 or more, a plurality of R4 may be the same or different from each other,
m5 represents an integer of 0 to 4, and when m5 is 2 or more, a plurality of R5 may be the same or different from each other,
m6 represents an integer of 0 to 4, and when m6 is 2 or more, a plurality of R6 may be the same or different from each other,
m7 represents an integer of 0 to 4, and when m7 is 2 or more, a plurality of R7 may be the same or different from each other,
m8 represents an integer of 0 to 5, and when m8 is 2 or more, a plurality of R' may be the same or different from each other,
m9 represents an integer of 0 to 5, and when m9 is 2 or more, a plurality of R9 may be the same or different from each other,
the sum of m1 and m7 is at least 1 and less than 5, the sum of m2 and m8 is between 0 and 5, and the sum of m3 and m9 is between 0 and 5
QbI and Qb2 each independently represent a hydrogen atom, a fluorine atom, a perfluoroalkyl group having 1 to 6 carbon atoms or an alkyl group having 1 to 6 carbon atoms,
Lb1 represents a divalent saturated hydrocarbon group having 1 to 24 carbon atoms, -CH2 - included in the divalent saturated hydrocarbon group may be replaced by - 0- or -CO-, and a hydrogen atom included in the divalent saturated hydrocarbon group may be substituted with a fluorine atom or a hydroxy group,
YbI represents a single bond or an alicyclic hydrocarbon group having 3 to 24 carbon atoms which may have a substituent, and -CH2 - included in the alicyclic hydrocarbon group may be replaced by -0-, -CO-, -S- or -S02 -,
RbbI represents a hydrogen atom, a halogen atom or an alkyl group having 1 to 6 carbon atoms which may have a halogen atom,
X10 represents a single bond, *-0-**, *-CO-O-**, *-O-CO-O-** or *-Ax-Ph-Ay-
Ph represents a phenylene group which may have a substituent,
Ax represents one bond species selected from the group consisting of a single bond, an ether bond, a thioether bond, an ester bond and a carbonic acid ester bond,
Ay represents one bond species selected from the group consisting of a single bond, an ether bond, a thioether bond, an ester bond and a carbonic acid ester bond,
* and ** represent bonding sites, and * represents a bonding site to carbon atoms to which -Rbbi is bonded, and
L10 represents a single bond
The reference claim further recites R1-R3, where when these groups may independently represent -O-R10, and R10 is an acid-labile group, the scope of the Instantly Claimed R4-R6 overlaps with these groups when Claimed R4-R6 are each a C1-C12 haloalkyl or C1-C18 hydrocarbon group having an -O- substituent therein as the -O-Alkyl group is acid-labile.
A person having ordinary skill in the art implementing the limitations of the Instant claim 1 where at least one of Claimed R4-R6 is a C1-C12 halo-alkoxy group or a C1-C18 alkoxy group would necessarily arrive at the claimed invention of the Reference claim 1.
Instant Claim 5 and reference claim 8 are verbatim.
Instant claim 6 and reference claim 9 are verbatim.
instant claim 7 and reference claim 10 present the same formula under different labels, where claimed X1-1, X1-4 and X1-5 are represented by reference claim’s X10-1, X10-5, and X10-6.
Instant Claim 9 and reference claim 12 are verbatim.
Instant claim 10 and reference claim 13 are verbatim.
Instant claims 11 and 14 have overlapping scope where the salt of instant claim 11 is an acid generator.
Instant claim 12 and reference claim 18 are verbatim and present the same formulas
Instant claim 13 and reference claim 19 are verbatim
instant claim 14 and reference claim 21 are verbatim
Instant claim 15 and reference claim 15 are nearly verbatim, covering the same functional scope of the salt corresponding to the formulas of claim 1 and a resin having an acid-labile group.
Instant claim 20 and reference claim 22 are verbatim.
A person having ordinary skill in the art would have found it obvious to arrive at the reference application’s invention from the claimed invention of the Instant Application for the above dependent claims when the claim scope of Instant and Reference Claims 1 overlap as described above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW PRESTON TRAYWICK whose telephone number is (571)272-2982. The examiner can normally be reached Monday - Friday 8-5.
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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.P.T./Examiner, Art Unit 1737
/SALLY A MERKLING/SPE, Art Unit 1738
Prosecution Insights