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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-13 in the reply filed on 12/11/2025 is acknowledged. The traversal is on the ground(s) that there is no serious burden to search the groups together. This is not found persuasive because as set forth in the requirement for restriction, the claim is to a polymer, which simply includes a monomer of formula 1 or 2, no specific use is claimed, and the search for the polymer structure would not overlap that of a specific composition comprising specific components nor a patterning method comprising specific steps. There would be a burden on the office to search for the separate invention which is not required in the search for monomer 1 and/ or monomer 2, which are distinct inventions not limited to the specific uses of group II.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
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 1-13 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.
The claims present limitations to a polymer comprising at least one of Formula 1 and/or Formula 2. Formula 2 requires “Y” which is defined as being at least one of a halogen, R18SO3, R18CO2, R18PO4, or NO3. However, the definitions of Y aside from a halogen atom are confusing and it is unclear as to what structure applicant is claiming.
The only example of the structure includes a halogen atom ([0065], [0151]), and it is unclear ad to how the remaining structures are formed. As written, it appears as though R18 (a hydrocarbon group, [0060]) is bonded to the main structure, however that would leave the end group (SO3, CO2, PO4, and the group without R18, NO3) as charged, and the specification does not teach that the structure is charged monomer (see claim1 and specification [0009], [0041]).
The examples of the structures are drawn below (R1 is the instantly claimed R18), but the specification and claims do not provide definitions which are clear and for one of skill in the art to prepare the polymer.
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Should the applicant intend for the group to attach at the other end, an example appears below (however the NO3 would be the same).
Or does applicant intend and acidic group:
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For purposes of examination, the claim will be interpreted in the broadest reasonable interpretation, which includes any of the above structures for Formula 2.
Claim 9 is 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.
The substituents R11-R16, b12, X, R21-R24, Y, and b22 are undefined.
It appears from the specification that the substituents are defined as the same as those in claim 1, and should be claimed accordingly. For purposes of examination, the substituents will be defined in this interpretation.
Claim 13 is 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.
The substituents R41, L41, a41, X41, R42, and b42 are undefined.
It appears from the specification that the substituents are defined as the same as those in claim 10, and should be claimed accordingly. For purposes of examination, the substituents will be defined in this interpretation.
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 (i.e., changing from AIA to pre-AIA ) 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.
(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(s) 1-7 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Endo et al (JP 62-192412 and its machine translation).
Endo et al disclose a resin comprising a vinyl aromatic monomer comprising a unit meeting the limitations of the instant formula 1, wherein R (the instant R11) is H or methyl, the instant R13 and R14 are each H, the instant R12 is H with b12 is 4, and the instant R15 and R16 are joined to form a saturated ring (abstract, examples, page 101, column 1; instant claims 1 and 2-6, 9):
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The ring meets the limitations of the instant claim 6, wherein R15 and R16 join to form a ring of formula 3-1, with X31 being H and L31 being CRR’, Rs being H, b31 being 4. Examples include a PF6- anion (Table 1(b), abstract) as required by the instant claim 7.
The additional monomers include a spiro-orthoester which is not acid-labile but crosslinks under action of light, and an additional monomer such as a methyl(meth)acrylate and other (meth)acrylates without tertiary carbon atoms or other acid-labile groups which are known to change under action of acid.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claim(s) 10, 11, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo et al.
Endo et al has been discussed above and disclose a resin comprising a vinyl aromatic monomer comprising a unit meeting the limitations of the instant formula 1,
The reference further teaches that the additional monomers those including a methyl(meth)acrylate and other (meth)acrylates without tertiary carbon atoms or other acid-labile groups which are known to change under action of acid. Such compounds fall within the scope of the instant formula 4, wherein the instant R41 is H or methyl, L41is -COO- (a41 is 1), and X41 is alkyl, a non-labile labile group. Additional compounds include (meth)acrylamides, wherein L41 is -CONH, and X41 is H, and N-methylolmethacylamide wherein L41 is-CONH- and X41 is -CH2-OH (having a polar -OH group and an alkyl) which meet the limitations of the instant claims 10 and 11.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare the material of Endo et al, choosing as the third monomer, those as taught by the reference and discussed above which have structures falling within the scope of the instant claims.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo et al in view of Aoyagi et al (WO 2006/070824 and its machine translation).
Endo et al has been discussed above. The reference teaches that various additional known monomers are included, but fails to specifically teach a lactone-containing monomer.
Aoyagi et al disclose a curable composition comprising an alkyl (meth)acrylate, fluorinated styrenes (broadly similar to formula 2 when Y is halogen), and (meth)acrylamides, all taught by the primary reference, in combination with a lactone monomer wherein R41 is hydrogen, L41 is a single bond, a41 is 1, and X41 is formula 5-1, wherein each of R51 to R53 is H or alkyl (see page 10). The inclusion of the monomer to the curable composition improves the heat resistance of the material, which the material of Endo would benefit from.
Therefore, given the teachings of the references, it would have been obvious to one of ordinary skill in the art to prepare the polymer material of Endo et al, choosing as an additional monomer, that taught by Aoyagi et al to be known and useful in combination with the monomers taught by Endo et al to achieve improved heat resistance.
Claim(s) 1-3, 8, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al (2005/026018).
Mori et al disclose a polymer comprising a monomer falling within the scope of the instant Formula 2, wherein the polymer does not comprise a unit which is acid-labile.
In the exemplified compounds, R21 is H, R22 is H, R23 and R24 are H, and Y is Cl or
-CO2R18, with R18 being aryl or methyl (instant claims 1-3, 8, 9).
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Furthermore, the reference teaches that the -CH2- group may have a -OCO-hydrocarbon or hlaogen substituent, but teaches more broadly that other substituents are equivalent to those and may be repalced for the -OCO- and halogen groups. These includecarboxylic acid and sulfonic acid groups, which meet R18CO2H and R18SO3H ([0047]-[0052]).
Given the teachings of the reference, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare the material of Mori et al, choosing as the polymer, that comprising one of the units of the 21 examples above, wherein the monomers meet the limitations of the instant formula 2.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsui et al (JP 64-9207[ 01-009207] and its machine translation).
Matsui et al disclose a crosslinkable fluorinated styrene polymer comprising no group having the property of structure change by action of acid, having a monomer of strcuture falling within the scope of the instant formula 2.
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The examples of the monomers include those wherein R21 is hydrogen or methyl, R23 and R24 are hydrogen, and Y is -CH2-O-CO-“R”, wherein “R” is an alkyl group. The structure is of -R18-OCO-R, meeting the limitations of the instant claims 1-3, 8, 9.
The co-monomer includes a group falling within the scope of the instant formula 4, wherein a fluorinated styrene, wherein R41 is hydrogen or methyl, L41 is phenylene, and X41 is a group such as -CH2-O-CH2CH2(CF2)4CF3 and others seen below which comprise a polar group -O-, also falling within the scope of instant formula 4-2 wherein R42 is hydrogen (instant claims 10, 11, and 13).
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(used in examples)
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Given the teachings of the reference, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare the material of Matsui et al, choosing as the polymer, that comprising a unit as described above, which also falls within the scope of the instant formula 2.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA C WALKE whose telephone number is (571)272-1337. The examiner can normally be reached Monday to Thursday 5:30am to 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niki Bakhtiari can be reached at 571-272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA C. WALKE/ Primary Examiner, Art Unit 1722