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 .
Election/Restriction
Applicant's election with traverse of Group I, claim(s) 1-6 in the reply filed on 02/18/2026 is acknowledged. The traversal is on the ground(s) that the finding of lack of unity of invention is premature as a full search of the prior art has yet to have been conducted and that will become moot upon confirmation of allowable subject matter. This is not found persuasive because an examiner may make a lack of unity requirement “before any action on the merits…” or “may be made at any time before the final action at the discretion of the examiner…” See MPEP 1893.03(d). Furthermore, “[t]he examiner may make a lack of unity requirement in a national stage application even if no such requirement was made by the ISA or IPEA.” See MPEP 1893.03(d). For the reasons cited above, the Applicant’s arguments that are found unpersuasive because there is no time requirement for finding a lack of unity.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/18/2026.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites parenthesis “( )” around “where the broken line represents…” in line 3-4. This appears to make the limitations within the parenthesis as exemplary. It is suggested for the parenthesis be deleted. Furthermore, it appears that the figure of formula (A-1) overlaps and cuts off a part of the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites the limitation "the hydroxyl group" in line 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 and 6, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2017/154921 A1 in which US 2019/0079397 A1 to Endo et al. is used below as the US English equivalent. (hereinafter Endo) as cited in the Applicant’s IDS file dated 05/26/2023.
Regarding claims 1, 2, 4, and 6, Endo teaches a stepped coating composition comprising a compound (E), a solvent (F), (para 60), wherein compound (E) can form a crosslinked structure by photoreaction, (para 71), and is crosslinked by exposure to light such as actinic rays or ultraviolet rays (para 150-151), which meets the claimed crosslinking agent. Endo further teaches compound (E) has the formula (E-18),
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, (para 142-143 and Example 20, para 191), or which meets the claimed formula (A-1) wherein the aromatic ring is a monomer. The above (E-18) mixed in a solution with a surfactant and an organic solvent of propylene glycol monomethyl ether and propylene glycol monomethyl ether acetate (para 222).
Regarding claim 3, Endo above teaches the monomer compound (E-18), which meets the claim because wherein the aromatic ring forms a polymer skeleton is an optional component.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo as applied to claim 1 above, and further in view of US 2017/0097568 A1 to Endo et al. (hereinafter Endo’568).
Regarding claim 5, as cited above and incorporated herein, Endo teaches the claimed coating composition of claim 1.
Endo further teaches that it is known in the art that an acid generator may be added to the composition containing a cationically polymerizable epoxy and vinyl group (para 14-15).
Endo’568 also teaches a resist underlayer film forming composition comprising a solvent and a novolac resin having a vinyl group (See abstract), which is in the same field of resist-underlayer film forming of the Applicant’s invention. Endo’568 further teaches that an acid generator may be added as a catalyst for promoting the crosslinking reaction (para 80), i.e. to accelerate.
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to further include the acid generator of Endo’568 in the coating composition of Endo because Endo’568 teaches the same field of resist-underlayer film forming of the Applicant’s invention, and Endo’568 further teaches that an acid generator may be added as a catalyst for promoting the crosslinking reaction (para 80), i.e. to accelerate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HA S NGUYEN/ Primary Examiner, Art Unit 1766
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