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 .
Amendment to the claims was submitted on 01/21/2026, claims 2-4, 6, and 8 are canceled.
Claim Status
Claims 1, 5, 7, and 9-11 are under consideration
Claims 2-4, 6, and 8 are canceled
Claims 12-13 are withdrawn
Election/Restrictions
Claims 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/31/2025.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 5, 7, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tachibana (US20130171569A1, published 2013) in view of Hashimoto (US20160139509A1, published 2016).
Regarding Claims 1, 5, 7, and 9-11,
Tachibana teaches a resist underlayer film composition comprising of a polymer obtained by condensation of a condensed body, the body being obtained by condensation of one or more kinds of a compound shown by the following general formula (1-1) with one or more kinds of a compound shown by the following general formula (2-3) and an equivalent body thereof [abstract], and an organic solvent [0029].
Tachibana teaches the compound with formula (1-1) may be fluorene, phenol, or 9,9-bis(4-hydroxyphenyl)fluorene (a bisphenol) [0077] and the compound with formula (2-3) may be adamantane carboaldehyde (adamantane carbaldehyde, containing a tricyclic aliphatic ring) [0089], where a terminal of the polymer would be expected to contain a recurring unit formed by the adamantane carbaldehyde.
Tachibana fails to teach a compound aligning with instant compound (B).
Hashimoto, analogous art, teaches a resist underlayer film forming composition comprising of a novolak resin formed by reacting an aromatic ring-containing compound with an aldehyde compound, where the aromatic ring containing compound may be fluorene, a bisphenol, phenol, or bisphenol S [abstract, 0077-0078], where bisphenol S aligns with the structure of instant compound (B) where n1 and n2 are 0, and Y1 is sulfonyl.
As both teach a resin formed from an aromatic ring containing compound which may be fluorene, phenol, or a bisphenol, it would have been obvious to a person of ordinary skill in the art that using the bisphenol S of Hashimoto in the polymer of Tachibana would result in a comparable and expected polymer.
That is, the substitution of the bisphenol S of Hashimoto for the bisphenol of Tachibana, absent unexpected results, would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application with the predictable result of forming a polymer, reading on instant claim 1. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (See MPEP § 2143, B).
Tachibana teaches alicyclic substituents may be further introduced to their polymer, including the following examples containing aliphatic rings which are bicyclic, tricyclic, and/or heterocyclic, including a bicyclic ring substituted with a C1 alkyl group [0119-0120], reading on instant claims 5 and 7.
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Tachibana teaches including a crosslinking agent and an acid generator [0029], reading on instant claims 9-10.
Tachibana teaches performing a post application bake after spin coating their resist underlayer film composition [0138-0139, reading on instant claim 11.
Response to Arguments
Applicant’s arguments filed 01/21/2026 with respect to the 102/103 rejections have been fully considered and are persuasive in view of the new claim amendments. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hashimoto.
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.
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/A.N.L./ Examiner, Art Unit 1737 /JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734