DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim(s) 1-2, 4-5, 8-13, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2020/071361 (hereinafter referred to as Shimizu) and using U. S. Patent Application Publication No. 2021/0397090 as its English Translation equivalent.
Shimizu, in the abstract, and in paragraph nos. [0013], [0018]-[0020], discloses a resist underlayer film forming composition that contains an organic solvent and a reaction product of two hydantoin-containing compound wherein one of the hydantoin-containing compound has two epoxy groups and the following formula,
PNG
media_image1.png
95
261
media_image1.png
Greyscale
disclosed as formula (11) of Shimizu, wherein Q is defined in formula (9) as the following,
PNG
media_image2.png
137
181
media_image2.png
Greyscale
and the other hydantoin-containing compound disclosed as formula (10) of Shimizu , see below,
PNG
media_image3.png
130
168
media_image3.png
Greyscale
and the reactions products disclosed by Shimizu for the resist underlayer film forming composition as disclosed in paragraph nos. [0018]-[0020], do not contain any structural units derived from either barbituric acid or isocyanuric acid and is the same claimed product as recited in claims 1-2. Shimizu, in [0037], and [0054], discloses that the reaction product has a terminal capped with a compound having a functional groups such as hydroxyl group or carboxy group (claims 4-5). Shimizu, in [0085], discloses that the resist underlayer film forming composition includes an acid generator (claim 8). Shimizu, in [0086], discloses that the resist underlayer composition also includes a crosslinking agent (claim 9). Shimizu, in [0008], discloses that the resist underlayer can be used for EUV exposure (i.e., the resist underlayer composition is the claimed EUV resist underlayer film forming composition) (claim 10). Shimizu, in [0091], discloses that the resist underlayer film forming composition is coated onto a substrate and baked to form a resist underlayer film (claimed baked product of a coating film). Shimizu, in [0094], discloses that a photoresist film is formed on the resist underlayer film, and Shimizu, in [0095], discloses that the photoresist film is subjected to a selective exposure (through a mask) to either an electron beam or EUV light, followed by development. Shimizu, in [0096], discloses that the resist pattern (formed by the development) is used as a mask to dry etch the resist underlayer film (forming the patterned resist underlayer, and processing the underlying inorganic film or the semiconductor substrate using the patterned resist underlayer (claims 11-13).
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.
Claim(s) 6-7, is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2020/071361 (hereinafter referred to as Shimizu) and using U. S. Patent Application Publication No. 2021/0397090 as its English Translation equivalent in view of U. S. Patent Application Publication No. 2017/0045820 (hereinafter referred to as Sakaida).
Shimizu is discussed in paragraph no. 3, above.
The difference between the claims and Shimizu is that Shimizu does not disclose the claimed functional group recited in claim 6 or the terminal capped with the structures recited in claim 7.
Sakaida, in [0013], [0019], and [0020], discloses that the resist underlayer film-forming composition includes a reaction product that has a terminal group (terminal capped) with a hydroxyl or carboxy functional group, and can have the following structures, see below,
PNG
media_image4.png
112
269
media_image4.png
Greyscale
or
PNG
media_image5.png
93
244
media_image5.png
Greyscale
and wherein the functional group contain an aliphatic ring, and can include the following structures, see below,
PNG
media_image6.png
245
273
media_image6.png
Greyscale
or
PNG
media_image7.png
160
251
media_image7.png
Greyscale
or
PNG
media_image8.png
195
277
media_image8.png
Greyscale
or
PNG
media_image9.png
144
275
media_image9.png
Greyscale
.
Therefore, it would be obvious to a skilled artisan to modify Shimizu by using the terminal group taught by Sakaida because Shimizu teaches that the terminal is capped with a compound having functional groups, and Sakaida, in [0016], discloses that using the claimed terminal structure in the polymer of the resist underlayer composition enables an improvement in the adhesion of the overlying resist pattern during development, and improves the resist pattern roughness.
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 1-2, 4-5, 8-13, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12,072,631. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-25 of U.S. Patent No. 12,072,631 discloses a resist underlayer composition the comprises a reaction product of two hydantoin containing compound that are different from each other and disclosed in claims 6-8, 14, 19-20, and discloses a terminal structure with the same claimed functional groups as disclosed in claims 1, 6, and 14. Claims 1-25 of U.S. Patent No. 12,072,631 discloses that the resist underlayer composition can be used an underlayer film underlying a photoresist film and is subjected to photolithography in the same claimed manner,, and thereby fully encompasses claims 1-2, 4-5, and 8-13 of the instant application.
Claims 6-7, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12,072,631 in view of U. S. Patent Application Publication No. 2017/0045820 (hereinafter referred to as Sakaida).
Claims 1-25 of U. S. Patent No. 12,072,631 is discussed in paragraph no. 7, above.
The difference between the claims and Claims 1-25 of U. S. Patent No. 12,072,631 is that Claims 1-25 of U. S. Patent No. 12,072,631 does not disclose the claimed functional group recited in claim 6 or the terminal capped with the structures recited in claim 7.
Sakaida, in [0013], [0019], and [0020], discloses that the resist underlayer film-forming composition includes a reaction product that has a terminal group (terminal capped) with a hydroxyl or carboxy functional group, and can have the following structures, see below,
PNG
media_image4.png
112
269
media_image4.png
Greyscale
or
PNG
media_image5.png
93
244
media_image5.png
Greyscale
and wherein the functional group contain an aliphatic ring, and can include the following structures, see below,
PNG
media_image6.png
245
273
media_image6.png
Greyscale
or
PNG
media_image7.png
160
251
media_image7.png
Greyscale
or
PNG
media_image8.png
195
277
media_image8.png
Greyscale
or
PNG
media_image9.png
144
275
media_image9.png
Greyscale
.
Therefore, it would be obvious to a skilled artisan to modify Claims 1-25 of U. S. Patent No. 12,072,631 by using the terminal structure taught by Sakaida because Claims 1-25 of U. S. Patent No. 12,072,631 teaches that the terminal is capped with a compound having functional groups, and Sakaida, in [0016], discloses that using the claimed terminal structure in the polymer of the resist underlayer composition enables an improvement in the adhesion of the overlying resist pattern during development, and improves the resist pattern roughness.
Response to Arguments
Applicant’s arguments, see Amendment and Remarks, filed December 2, 2025, with respect to the rejection(s) of claim(s) 1-13, under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over pending claims 1-2, 4-13. With respect to applicant’s argument that Sakaida’s reaction product include structural units derived from barbituric acid or isocyanuric acid and that the amended claims require that the reaction product of the two hydantoin-containing compounds do not have any structural units derived from barbituric acid or isocyanuric acid, Sakaida is no longer dependent upon to disclose the reaction product recited in claim 1, and Shimizu is dependent upon to disclose the claimed reaction product that does not contain any structural units derived from either barbituric acid or isocyanuric acid. See paragraph nos. 3, 5, and 7-8, above.
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 Daborah Chacko-Davis whose telephone number is (571) 272-1380. The examiner can normally be reached on 9:30AM-6:00PM EST Mon-Fri. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark F. Huff can be reached on (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-272-8300. 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.
/DABORAH CHACKO-DAVIS/Primary Examiner, Art Unit 1737 March 4, 2026.