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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. The most pertinent of these references have been applied below.
Election/Restrictions
The applicant has elected Species I (claims 1-5, 8, and 14, formula I) without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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(s) 1-5, 8, and 14 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakamoto et al. (US 20140235059) listed on IDS and ISR.
As to claims 1-5 and 14, Sakamoto (abs., claims, examples) discloses a composition for producing resist underlayer films comprising a high boiling point solvent (109-110) and an exemplary polymer (69) of
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The formula corresponds to the claimed n1=n2=0; Ar1=Ar2=benzene; R3=benzene; R5=H; R4=pyrene on the claimed formula 1 of claim 1-5 and 14.
As to claim 8, butyl lactate (out of 6 candidates, 110) is a preferable high boiling point solvent having a boiling point of 188 °C. In light of this, one of ordinary skill would at once envisage selecting the aforementioned butyl lactate to anticipate claim 8, because a genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because “one skilled in [the] art would... envisage each member ” of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962).
Claim(s) 1-5, 8, and 14 is(are) rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Choi et al. (US 20190309183) listed on IDS and ISR.
As to claims 1-5, 8, and 14, Choi (abs., claims, Prep. Ex.1) discloses a composition comprising pyrenol (boiling point= 437.4 °C) and a polymer (37, 41) of
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The formula corresponds to the claimed n1=n2=0; Ar1=Ar2=benzene and forming a bond; R3=benzene; R5=H; R4=benzene on the claimed formula 1 of claim 1-5 and 14.
Choi is silent on the intended use of "resist underlayer film” of claim 1. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). In this particular case, no compositional difference between the claimed and disclosed compositions, and the disclosed composition would inherently be capable of performed the claimed intended use.
Claim(s) 1-5, 8, and 14 is(are) rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Tsuchiya et al. (US 20200041904).
As to claims 1-5, 8, and 14, Tsuchiya (abs., claims, 438-440) discloses a composition comprising pyrenol (boiling point= 437.4 °C) and a polymer (108) of
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The formula corresponds to the claimed n1=n2=0; Ar1=Ar2=benzene and forming a bond; R3=naphthalene; R5=H; R4=benzene on the claimed formula 1 of claim 1-5 and 14.
Tsuchiya is silent on the intended use of "resist underlayer film” of claim 1. The limitation is met by the rationale in above ¶2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. 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://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766