DETAILED ACTION
Response to Arguments
Applicant's arguments filed February 12, 2026 have been fully considered but they are not persuasive.
A) The 35 U.S.C. 112(b) rejections are overcome by amendment.
B) Applicant’s argument that Naruse does not teach the claimed amounts of claimed resin (A), claimed crosslinking agent (B), claimed surfactant (C), and the limitation that the amount of resin (A) is 10-75% of the total weight of resin (A) and crosslinking agent (B) is not pervasive. The examiner agrees that Naruse teaches 80% by mass or more of the reference’s compound (B)/claimed compound (A) (middle of page 12) based on the solids content/all the components other than the solvent. However, in the claims, the limitation for the amount of (A) is based on the total weight of the resin composition, whereas in the reference, the amount is based only on the solids content. The total weight of the composition would include the weight of the solvent and any other liquid components, whereas when the amount is based only on the solids content, the solvent is not included. Therefore, the rejection below includes calculations to put the amounts of the components disclosed in the reference on the same basis as the claim limitations by adjusting the denominator to include the weight of the solvent. Naruse teaches the solids content is 0.1-10% by mass (middle of page 15) (90-99.9% by mass solvent), meaning there is 0.08-8% by weight of claimed compound (A) (assume 80% of (A) as disclosed) in the whole composition disclosed in Naruse. Calculations are included in the rejection below to convert the reference’s disclosure of amounts to either the “total weight of the resin composition” basis or the “total weight of the resin (A) and the crosslinking agent (B)” basis based on each claim limitation. Since the amounts of Naruse overlap with the claimed ranges, the chemical properties of the composition, such as chemical resistance and flatness, would also be the same since a chemical composition and its properties are inseparable (MPEP 2112.01 II).
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.
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 1-7, 9, 11-13, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Naruse (WO 2016/208518) using the English language machine translation for the citations below.
Regarding claims 1, 2, 9, and 11: Naruse teaches a resin composition (abstract) comprising a polyhydroxystyrene resin (pg. 10, styrene resin) which is labeled as compound (B) (pg. 9). A polyhydroxystyrene resin has the structure of claimed formula (A-1). Naruse teaches the Mw of the compound is preferably 5,000-30,000 (middle of page 11). An “n” value of 103 is a molecular weight of about 12,360 and an “n” value of 160 is a molecular weight of about 19,200, which indicates the value of “n” in Naruse overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Naruse also discloses a crosslinking agent such as a novolac epoxy resin (bottom of page 13 and top of page 14), a surfactant (translation pg. 5, and original document structures (s-1-1)-(s-1-3) on pg. 9) and a solvent (pg. 12). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping molecular weight of the polyhydroxystyrene and would have been motivated to do so since Naruse teaches the overlapping range would be appropriate as a solution to the problem affecting Naruse. Naruse teaches 80% by mass or more of the reference’s compound (B)/claimed compound (A) (middle of page 12) based on the solids content/all the components other than the solvent. The solids content is taught to be 0.1-10% by mass (middle of page 15), meaning there is 0.08-8% by weight of claimed compound (A) in the whole composition disclosed in Naruse. Naruse teaches the crosslinking agent/claimed compound (B) is used in an amount of 0.1-100 parts by mass per 100 parts by mass of (B)/claimed compound (A) (middle of pg. 12). Based on the calculations of claimed compound (A) above, the amount of claimed compound (B) is 0.008-8% by weight, which overlaps the claimed ranges. Naruse teaches the surfactant/compound (A) is 0.01-1.5 parts per 100 parts compound (B)/claimed compound (A) (top of pg. 9). There is 0.08-8% by weight of claimed compound (A) disclosed in Naruse (see above), so there is 8 x 10-6 wt% (0.01/100*0.08%) to 0.12 wt% (1.5/100*8%) surfactant. Naruse teaches the crosslinking agent/claimed compound (B) is used in an amount of 0.1-100 parts by mass per 100 parts by mass of (B)/claimed compound (A) (middle of pg. 12), meaning that for the total of claimed (A) + (B) there is 0.09 (0.1/100.1) to 50 wt% (100/200) of claimed compound (A).
Regarding claim 3: Naruse discloses a novolac epoxy resin (bottom of page 13 and top of page 14).
Regarding claim 4: Naruse teaches a novolac resin is a bisphenol A novolac (bottom of page 9-top of page 10), which has the claimed structure of (B-1). The Mw is preferably 5,000-30,000 (middle of page 11), and when the claimed “n” is 10, the molecular weight is 2,868 and when “n” is 45 the molecular weight is 11,268, meaning that Naruse teaches overlapping n values. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping molecular weight of the bisphenol A novolac resin and would have been motivated to do so since Naruse teaches the overlapping range would be appropriate as a solution to the problem affecting Naruse.
Regarding claim 5: Since Naruse teaches the structure of (B-1), compound (B-2) is optional.
Regarding claim 6: Since Naruse teaches the structure of (B-1), compound (B-3) is optional.
Regarding claim 7: Since Naruse teaches the structure of (B-1), compound (B-4) is optional.
Regarding claims 12 and 13: Naruse teaches a surfactant (translation pg. 5, and original document structures (s-1-1)-(s-1-3) on pg. 9) such as
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, which is an acid having fluorine functional groups and is the claimed structure (C-1) where x2+y2 is 5-25 (translation bottom of page 5).
Regarding claim 16: Naruse teaches propylene glycol monomethyl ether (bottom of page 12).
Regarding claim 17: Naruse teaches an anti-etching layer/resist underlayer film (bottom of pg. 15).
Regarding claim 18: Naruse teaches soaking the anti-etching layer in an etching solution/wet etching (middle of pg. 18). While Naruse does not explicitly teach the property of the film thickness loss after soaking for 10 minutes is less than 10 Å, mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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