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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 7, 2026, has been entered.
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, 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,
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disclosed as formula (11) of Shimizu, wherein Q is defined in formula (9) as the following,
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and the other hydantoin-containing compound disclosed as formula (10) of Shimizu , see below,
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wherein Y1 and Y2 can be represented by formula (4) , see below,
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and each of the R4 and R5 can be a hydrogen or an alkyl group having 1 to 6 carbon atoms, alkenyl group having 3 to 6 carbon atoms or benzyl group or a phenyl group or a phenyl group that may be substituted with a hydroxy group, R4 and R5 may be bonded to each other to form a ring of 6 carbon atoms and includes the structures newly recited on page 2, of claim 1 as compound (A) group and structures newly recited on page 3 of claim 1 as compound (B) group, and the reactions products of the two hydantoin products listed above form the structural unit of the polymer in the resist underlayer film-forming composition disclosed by Shimizu (see [0018]-[0020]) and is the structural unit of the polymer as recited in claim 1. 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. 4, 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,
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or
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and wherein the functional group contains an aliphatic ring, and can include the following structures, see below,
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or
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or
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or
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.
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, 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 of U.S. Patent No. 12,072,631, 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,
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or
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and wherein the functional group contains an aliphatic ring, and can include the following structures, see below,
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or
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or
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or
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.
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 in an RCE filed August 7, 2026, with respect to the rejection(s) of claim(s) 1-2,4-5, 8-13, and the rejection of claims 6-7, under 35 U.S.C. 102(a)(1), and 35 U.S.C. 103, respectively, and the nonstatutory double patenting (NSDP) rejections of the US Patent No. 12,072,631 (Shimizu, the issued US Patent of the USPGPub. No. 2021/0397090[Wingdings font/0xE0]Shimizu) have been fully considered and are not persuasive. Therefore, the rejections have been maintained. With respect to applicant’s arguments that Shimizu does not disclose the repeating units of the reaction product of the hydantoin-containing compound (A) and hydantoin-containing compound (B), Shimizu teaches in [0019], that the repeating unit of the polymer is the reaction product of formula (10) and formula (11) and discloses the repeating unit structure as formula (3) (the product of formula (10) and formula (11)) wherein formula (10) of Shimizu is the same as the claimed hydantoin-containing compound (B) that has the second amino group and formula (11) of Shimizu is the same as the hydantoin-containing compound (A) that has the epoxy groups, and is addressed in paragraph no. 4, above. With respect to applicant’s argument that Shimizu does not disclose the claimed terminal capped group recited in claim 7, and that Shimizu teaches Structures (1) and Structure (2) as the end groups (terminal groups), Sakaida is dependent upon to disclose the same claimed terminal group of the polymer chain. Shimizu is dependent upon to disclose the structural repeat unit of the polymer of the resist underlayer composition, and Shimizu does not limit the argued formula (1) and formula (2) as the only possible end groups of the polymer chain, and Shimizu in [0059] teaches that the polymer is not limited to the argued structures (1) and (2) as long the structural repeating unit is the formula (3) (the reaction product of the two hydantoin compounds discussed in paragraph no. 4, above) and as the long the polymer can be used in a resist underlayer film-forming composition. U.S. Patent No. 12,072,631, discloses in claim 6 that the structural unit of formula (3) that is the reaction product of formula (10) and formula (11) of claim 7, and is the same claimed hydantoin compound (B) and hydantoin compound (A) respectively, and Shimizu does not limit the polymer to the argued end group, as discussed in the preceding sentence, and Sakaida is dependent upon to disclose the same claimed terminal cap of the polymer. Sakaida is not dependent upon to disclose the structural unit repeat of the polymer chain or the reaction product of the hydantoin compounds (A) and (B).
Conclusion
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, Sally A. Merkling can be reached on (571) 272-6297. 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 September 5, 2026.
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