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 .
DETAILED ACTION
Response to Amendment
Applicant's amendments filed on 08/03/2026 have been entered. Claims 1-2, 4-13, 15-22 and 24-31 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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 1-2, 4-13, 15-22 and 24-31 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. Newly added limitation in claims 1 and 12 requires that the derivatives of nitrobenzyl alcohol is a ring-substituted derivative, which is generally directed a compound having one of the groups being replaced by a group having a ring-like structure; however, none of the compounds as disclosed in the present specification having one of group in the nitrobenzyl alcohol being replaced by a ring. The onium salt may provide counter ions for nitrobenzyl alcohol, but it does not provide substitute group to the nitrobenzyl alcohol (See page 11 and 12 of present specification). Claims 2, 4-11, 13, 15-22 and 24-31 are also rejected for depending from claims 1 and 12, thus inclusion of indefinite features.
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 1-2, 4-13, 15-22 and 24-31 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 pre-AIA the applicant regards as the invention.
Claims 1 and 12 are rejected as being vague and indefinite when these claims recite "nitrobenzyl alcohol or ring-substituted derivatives thereof”, because the definition of ring-substituted derivative of nitrobenzyl alcohol is not clear. It is not clear which group in nitrobenzyl alcohol being substituted by a ring, and it is also not clear what is the “ring’ as recited. Claims 2, 4-11, 13, 15-22 and 24-31 are also rejected for depending from claims 1 and 12, thus inclusion of indefinite features.
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 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.
Claims 1-2, 4-10, 12-13 and 15-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (US 2021/0364922, of record, ‘922 hereafter).
Regarding claims 1-2, 4-10, 12-13 and 15-22, ‘922 discloses a polymer composition ([0045]-[0077]) comprising a polymer being a matrix forming species; a photo-acid generator having nitrobenzyl ester group being a nitrobenzyl functional group covalently bonded to the polymer chain, reading upon derivative of nitrobenzyl alcohol (Fig. 10, [0067], [0116]) and/or an photo-base generator with aromatic group bond to amine group through a carbamate linkage ([0075]), which are capable of generating small molecules, such as H2O, CO2 or alcohols by radiation or heat which are metal ligand forming molecules ([Fig. 7, 8, [0045]-[0047, Fig 14A-14C]), reading upon reactive gas releasing entity; a solvent being alcohol, ketone, ether or ester, which can be used to prepare a flowable polymer composition to facilitate application of the polymer composition on a substrate ([0066], [0076]); and a thermal acid generator or a photo-base generator as needed ([0046], [0051], [0060]-[0062]) reading upon activating agent, which may include sulfonate, iodonium salt, onium salt, N-sulfonic imide or a combination thereof ([0060], Fig. 11, [0068]) satisfying present claims 9-10 and 19-20; wherein the polymer can be a styrene resin ([0065]).
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.
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 11 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 2021/0364922, of record, ‘922 hereafter).
Regarding claims 11 and 24, ‘922 teaches all the limitations of claims 1 and 12, ‘922 also teaches the photo-acid generator content is generally in a range of 0.1 wt% to 20 wt% based on the total polymer in the polymer composition ([0062]), but does not expressly set forth the polymer composition or flowable polymer composition having a content of polymer matrix and solvent in the presently claimed range. However, it is known in the art that the polymer matrix content and solvent content control the polymer concentration of the polymer composition which directly affects the thickness of the film formed from the polymer composition; thus, the polymer concentration in the polymer composition of ‘922 is an effective variable in terms of thickness of the photoresist layer. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to adjust the content of polymer matrix and solvent in the polymer composition of ‘922 within the scope of the present claims, so as to produce a photoresist layer having desired thickness.
Allowable Subject Matter
Claims 25-31 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The reason for the allowance is that the prior art of record does not specifically disclose or fairly suggest a film-forming composition as recited in the present claims 1 and 12, wherein the matrix or polymer matrix comprises polycarbosilane or a specific reactive gas releasing entity as recited in the claims 26-31
Response to Arguments
Applicant's arguments filed on 02/10/2026 have been fully considered but they are not persuasive.
Applicant argues that the paragraph [0075] of Chen '922 refers to a photobase generator that is a quaternary ammonium dithiocarbamate, which is different from a carbamate group. However, this paragraph also discloses that the photobase generator can be N-(2-nitrobenzyloxycarbonyl) cyclic amines, which is a photobase generator with aromatic group bonded to an amine group through a carbamate linkage.
For the reasons set forth above and of record, the claims 1-2, 4-10, 12-13 and 15-22 stand properly rejected.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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