DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 3/13/2026. In particular, claim 1 has been amended to specify that R3 is a hydrogen and to further define Y. Additionally, new claims 15-16 are added. This presents the claims in a manner with a scope not previously examined. Thus, the following action is properly made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-8, 15-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 6, and 16 recite “an amino group (-NH2)”. There is no support for “(-NH2)”. Therefore, claims 1, 6, 16, and all dependent claims contain new matter. It is noted that ‘amino’ is not limited to -NH2 groups but also includes amines which are substituted such as -NMe2. Applicant directs attention to ¶120 and previous claims 1 and 2. However, none of these teach “(-NH2)”.
As the specific species of -NH2 is not described with any specificity in the specification, it is new matter.
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.
Claims 1, 3-8, 15-16 are 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.
Claims 1, 6, and 16 recite “an amino group (-NH2)”. It is unclear whether the portion in parenthesis “(-NH2)” is intended to limit the claim or not. The genus ‘amino group’ is not limited to -NH2 groups, but also includes amines which are substituted such as -NMe2. Thus, claims 1, 6, 16, and all dependent claims are indefinite. For the purpose of this Office Action, the term “amino group” is interpreted to mean a -NH2 group consistent with pg. 13 of the Remarks filed on 3/13/2026.
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.
Claim(s) 1, 3-4, 7-8, 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kato (US 5,021,311).
Kato teaches an example where 75 g benzyl methacrylate is polymerized in toluene with 25g of a macromonomer 29 using 4,4’-azobis(4-cyanovaleric acid) to give a polymer with a Mw of 3.7 x 104 (37,000) (Table 7, col. 33, ln. 33-67). The polymerization using the initiator 4,4’-azobis(4-cyanovaleric acid) results in an end group having a cyano group. Benzyl methacrylate meets claimed formula (1) when X is methyl, Z is oxygen, R1-R3 are hydrogen atoms and m is 0. Macromonomer 29 has a Mw of 4600 (Table 3) and benzyl methacrylate has a molecular weight of 176.21. Thus, 25 g of macromonomer 29 is about 0.0054 moles and 75 g of benzyl methacrylate is about 0.4256 moles which gives a molar ratio of macromonomer 29 : benzyl methacrylate of about 1:78 or a mol% of about 98%. This gives about 156 repeat units of benzyl methacrylate corresponding to claimed variable ‘n’ which falls in the claimed range of 10 to 500.
Benzyl methacrylate meets the limitation of claimed structure (2) in claim 3.
Regarding claim 4, Kato does not explicitly that the polymer is obtained by anionic polymerization. However, anionic polymerization is a description of how the polymer is formed and is treated as a product-by-process format. Case law holds that:
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. In this case, a polymer having the same monomeric units (benzyl methacrylate) is formed. No distinct structural information is provided by the claimed process limitation.
Claims 7-8 recite the composition is suitable for underlayer film formation onto a silicon (claim 7) or metal (claim 8) in a directed self assembly lithography process. As Kato teaches a polymer in the scope of claim 1 with a solvent, the compositions of Kato are suitable for the intended uses of claims 7-8. 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).
Allowable Subject Matter
No prior art rejections are presented over claims 5-6 and 16.
Claims 5 and 16 recite an Mw/Mn of 1.10 or less. Claim 6 recites specific species of endgroups of Y.
Relevant prior art includes Chae, Macromolecules 2019, 52, 4828−4838, Vamvakaki, Polymer Vo. 39, No. 11, pp 2331-2337, 1998, Feldman, Macromolecules 2008, 41, 4694-4700, Noy, Macromolecules, 2017, 50, 7028-7040, Jesson, Macromolecules, 2017, 50, 182-191.
Chae teaches polybenzyl methacrylate formed by anionic polymerization (scheme 1) with a molecular weight of 1021 and 1016 kDa (Table 2). This corresponds to a molecular weight of 1,021,000 and 1,016,000. As benzyl methacrylate has a molecular weight of 176.21, these molecular weights correspond to about 5794 and 5765 repeat units which are outside the scope of the claimed variable “n” in claim 1.
Vamvakaki teaches polymers of benzyl methacrylate (Table 1) which are formed by polymerization in THF (pg. 2332) which is a solvent. The benzyl methacrylate polymers have the claimed structure (1) when X is an alkyl group having 1 carbon atom, Z is an oxygen atom, R1 and R2 are hydrogen atoms, m is 0, R3 is a hydrogen atom, and L is 5. The polymerization is quenched by addition of methanol (pg. 2332) which results in an endgroup having an -OMe group which is a monovalent organic group having 1 carbon atom and a hetero atom. The -OMe group is not in the claimed list of endgroups.
Feldman teaches a polybenzyl methacrylate (Scheme 3) in THF (pg. 4699) having a molecular weight of 8900 (Table 1). Polybenzyl methacrylate meets the claimed formula (1) when X is an alkyl group having 1 carbon atom, Z is an oxygen atom, R1 and R2 are hydrogen atoms, m is 0, R3 is a hydrogen atom, and L is 5. Polyenzyl methacrylate also meets formula (2) of claim 3. A molecular weight of 8900 corresponds to about 50 repeat units. THF is a solvent. The polybenzyl methacrylate structure
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120
254
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contains an endgroup -Cl which is a halogen and the other endgroup includes an amino group. However, the amino group of Feldman is not a -NH2 group and falls outside the scope of the claimed -NH2 group.
Noy teaches the polymerization of pentafluorobenzyl methacrylate using 2-cyano-2-propyl benzodithioate as a RAFT agent in anisole (a solvent) (pg. 7029). This gives a polymer with the structure
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146
190
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(Scheme 1). Pentafluorobenzyl methacrylate has a molecular weight of about 266, therefore there are about 32 repeat units which meets ‘n’ of claimed formula (1). The structure of Noy falls outside the scope of the claims which require R3 to be H.
Jesson teaches a diblock copolymer in water (solvent) of benzyl methacrylate and glycerol methacrylate where the degree of polymerization of the benzyl methacrylate is 100 (pg. 184). Benzyl methacrylate meets the limitations of formula (1) of claim 1 and formula (2) of claim 3. Jesson teaches cleavage of the RAFT end groups using H2O2 to form hydroxyl end groups (pg. 184, 188, Scheme 2). Jesson fails to teach the claimed endgroups.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
It is noted that the argument with respect to Feldman rely on the interpretation of amino group being limited to “-NH2” as discussed in the Remarks. A potential amendment deleting “-NH2” and not ‘amino’ would result in applying the Feldman reference.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764