DETAILED CORRESPONDENCE
This Office action is in response to the RCE received May 26, 2026.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over HATAKEYAMA et al (2020/0393760) in view of AQAD et al (12,140,866) and/or LABEAUME et al (2015/00093709).
The claimed invention continues to now recite the following:
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HATAKEYAMA et al discloses photoresist composition comprising the use of acid generating units in the base polymer used in photoresist compositions, see Polymer 2 on page 120 below:
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348
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HATAKEYAMA et al lack a working example using the claimed photoacids of formula (1).
AQAD et al discloses a similar compound at column 70, lines 45-63 shown here lacking the tertiary carbon bonded to the iodine-substitute phenyl group shown below:
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Example 28 and 33 in Tables 2 and 3, respectively is shown in a working example the claimed resist composition comprising a base resin and a solvent, see below:
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Claims 2 and 3 are met by the compound above.
Claim 4 and 5 are met by Example 28 and 33 above.
Claim 6 and 7 are is met by P1 and the Examples 28 and 33:
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No claims above are allowed.
Claims 10 and 11 are met by the disclosure in column 79, line 60- column 82, line 82, line 50.
LABEAUME et al report acid generators of the following formula meeting the claimed structure of Formula (1), meeting claims 1, 2, 4-7 as seen on page 6,8 and 16 respectively.
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The closest working example in LABEAUME is found in Example 7 on page 21, para. [0140] having a tertiary bond connected to the aromatic ring, see below:
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Claims 4-8 are met by the resin in HATAKEYAMA et al
Claim 9 to a surfactant is met by page 18, para. [0116] in LABEAUME as suitable additives in the composition.
Claims 10 and 11 to the method are met by in LABEAUME in Example 13, page 22, para. [0149], below:
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition to use any of the disclose photoacids of AQAD such as PAG A7 wherein LABEAUME also show that tertiary carbon groups may be bonded to the Ar ring in place of the secondary carbon atom in PAG A7 with the reasonable expectation of same or similar results for high sensitivity, resolution and improved CDU in a photoresist composition.
The rejection is repeated wherein the evidence submitted under Rule 132 has been considered, however the evidence not of proper scope, weight and character wherein the closest prior art compounds not compared would be the sulfonium cation of PAG-A7 from AQAD et al having an iodine substituted phenyl group on the end bonded to a secondary carbon atom shown below which is very close to the claimed tertiary carbon at the same location:
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Claims 12-15 are met by the disclosure in para. [0100] of HATAKEYAMA et al wherein the anions disclosed meet the compounds recited in claim 13 and would be seen as conventional anion groups that can be paired with the cations of those known in AQAD with a tertiary carbon atom.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S. CHU whose telephone number is (571)272-1329. The examiner can normally be reached on M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached at telephone number 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
June 13, 2026
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