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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/27/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/27/2026 is being considered by the examiner.
Response to Amendment
Applicant’s Amendment filed 07/27/2026 has been entered and is considered with this action. Claim 1 has been amended. Claim 6 has been amended with regards to claim 1.
Response to Arguments
Applicant’s Amendments and arguments have changed the scope of the claims so as to render the prior rejection(s) made in the previous Final Rejection moot. As such, all rejections are withdrawn.
After further search and consideration, the Examiner makes a new grounds of rejection based on the doctrine of Non-Statutory Double Patenting in view of U.S. Patent No. 12572071 as set forth below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 7-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,3-4,6-10,12-20 of U.S. Patent No. 12572071. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Instant Claim 1 and Patented Claim 1, the claim scopes overlap explicitly where:
R4-R9 each independently represent a halogen atom, haloalkyl group having 1-2 carbon atoms or a hydrocarbon group having 1-18 carbon atoms, the hydrocarbon may have a substituent, and and-CH2- in the hydrocarbon group may be replaced by -O-, -CO-, -S-, or -SO2-
A1-A3 are each independently a hydrocarbon group having 1-20 carbon atoms, and where the hydrocarbon group may be substituted, and -CH2- in the hydrocarbon group may be replaced by -O-, -CO-, -S-, or -SO2-
Subscript m1 and m7 each represent an integer of 0-5, and when m1 is 2 or more a plurality of groups in parentheses may be the same or different from each other
Subscripts m2 through m6 and m8-m9 each represent an integer of 0-4 and when each m is 2 or more a plurality of groups in parentheses may be the same or different from each other
At least one of m1, m2, and m3 represents an integer of 1
X4 represents a single bond, -O-, -CH2-, -SO2, -SO-, or -S-
The sums of m1 and m7 is equal to or greater than 0 and less than or equal to 5
The sums of m2 and m8, and separately m3 and m9, are equal to or greater than 0 and less than or equal to 4
X0 represents a single bond or a hydrocarbon group having 1-72 carbon atoms that may be substituted and -CH2- in the hydrocarbon group may be replaced by -O-, -CO-, -S-, or -SO2-
Rbb1 represents H, halogen, or an alkyl group having 1-6 carbon atoms which may have a halogen atom
X10 represents a single bond, oxy linkage, -CO-O-, -O-CO-O, or *-Ax-Ph-Ay**
Ph is a phenylene that may be substituted
Ax is a single bond, ether bond, ester bond, or carbonic acid ester bond
Ay is a single bond, ether bond, ester bond, or carbonic acid ester bond
* is a bonding site to carbon atoms to which Rbb1 is bonded
** is a bonding site to L10
L10 is a single bond or hydrocarbon group having 1-36 carbon atoms which may have a substituent and -CH2- included in the hydrocarbon group may be replaced by -O-, -CO-, -S-, or -SO2-
The scope of the Instant claim 1 further includes the provision of R1-R3, where R1 represents OR-10, O-CO-O-R10, or O-L1-CO-O-R10, and where R2 and R3 each represent a group discussed prior regarding R1 or a hydroxyl group. Patented Claim 1 provides that R4-R9 may each independently be a group as discussed above, or a hydroxyl group. As per the scope of the instant and patented claims both describe that at least one of subscripts m1, m2, and/or m3 are at least one 1, when Patented m2 and/or m3 are at least one and the corresponding m5 and/or m6 is at least 1, there is overlap in the claim scope when Instant Claim 1’s R2 and R3 and Patented Claim 1’s R5 and R6 are Hydroxyl groups. A person having ordinary skill in the art would find it obvious to arrive at the scope of the instantly claimed invention from the scope of the patented claims.
Regarding Instant Claim 2, the subject matter of this claim is present in the Patented Claim 1 where A1-A3 are further delimited by X01-L01, to X01-L03, where
Regarding Instant Claim 3 and Patented claim 3 - these claims are verbatim
Regarding Instant Claim 4 and Patented claim 4 – these claims have overlapping scope where L01-L93 are each independently a single bond or an alkanediyl group having 1-6 carbons
Regarding Instant Claim 5, the subject matter of this claim is present in the Patented claim 1 as discussed above for where Instantly Claimed R1-R3 may be a hydroxyl group.
Regarding Instant Claim 7 and Patented Claim 6 - these claims have overlapping scope where X0 is a single bond or includes an aliphatic hydrocarbon group having 1-72 carbon atoms which may have a substituent included and where -CH2- included in the aliphatic hydrocarbon group may be replaced by -O-, -S-, -CO-, or -SO2-, or an aromatic hydrocarbon group having 6-36 carbon atoms which may have a substituent.
Regarding Instant Claim 8 and Patented Claim 7 – the claims have overlapping scope where X0 includes an alicyclic hydrocarbon group having 3-36 carbon atoms which may have a fluorine atom, a perfluoroalkyl group having 1-4 carbon atoms or a hydroxy group, and a -CH2- included in the alicyclic hydrocarbon group may be replaced by -O-, -S-, -CO-, or -SO2-, a group obtained by combining an alicyclic hydrocarbon group having 3-36 carbon atoms wherein a -CH2- included in the alicyclic hydrocarbon group may be replaced by -O-, -S-, -CO-, or -SO2-, and a chain hydrocarbon group having 1-18 carbon atoms, or an aromatic hydrocarbon group having 6-36 carbon atoms which may have a fluorine atom or a perfluoroalkyl group having 1-4 carbon atoms or a hydroxy group.
Regarding Instant Claim 9 and Patented claim 8 – these claims overlap in scope for where X0 includes an alicyclic hydrocarbon group including a cycloalkanediyl group having 5-6 carbons where a -CH2- therein may be replaced by -O- or -CO-, an adamantanediyl group, a norbornanediyl group, and a group made by the spiro-bonding of an adamantanediyl group and a cycloalkanediyl group having 5-6 carbons.
Regarding Instant Claim 10-11 and Patented Claim 9, the claim scope of the two claims overlap for instantly claimed formulas X10-1, X10-3 through X10-8, and X10-2, which correspond to the Patented claims’ X1-1, X1-2 through X1-7, and X1-8, respectively. The scope of Instant claim 11 is reflected for where Instantly claimed X10-1, X10-5, and X10-6 correspond to Patented Claims’ X1-1 and non-variable bonded embodiments of X1-4 and X1-5.
Regarding Instant Claim 14 and Patented Claim 12 – these claims are verbatim
Regarding Instant Claims 12,13 and 15-18, and Patented Claims 13 and 17-19, these dependent claims are concerned with the scope of the resist compositions, the ingredients of which are all disclosed as part of claim 1 as a carboxylate salt.
Regarding Instant claim 19 and Patented Claim 14 – these claims are verbatim
Regarding Instant Claim 20 and Patented Claim 15 – these claims are verbatim
Regarding Instant Claim 21 and Patented Claim 16 – these claims are verbatim
Regarding Instant Claim 22 and Patented Claim 20 – these claims are verbatim
Allowable Subject Matter
Claim 6 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 following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is as follows:
Thackeray et al (US 20120141939 A1)
Ichikawa et al (US 20110014566 A1)
Hatakeyama et al (US 20200089112 A1)
Hatakeyama et al (US 20200089111 A1)
All of the above references generally disclose sulfonic acid generators, where Ichikawa teaches similar cations; however, no one reference specifically teaches the fused-ring heterocyclic cation of the claims in an embodiment alongside a polymerizable carboxylic acid anion, nor do any teach a polymerized resin comprising an acid-generating subunit formed from the salt. Ichikawa’s cations lack the further structure required by the claims for where at least one of m1-m3 is at least 1 and the corresponding structures of at least one of R1-R3 are present – and claim 6 requires that the structure conforming to formula 1a in claim 1 is present when at least one of R1-R3 is present and represented by a structure -O-R10 . There is no readily-apparent locus between the references that would enable a person having ordinary skill in the art to arrive at the claimed invention from the teachings therein. Claim 1 is currently rejected on the basis of a non-statutory double patenting rejection over U.S. Patent No. 12572071. Claim 6 is not rejected but is objected to by nature of dependency from a rejected claim. .
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW PRESTON TRAYWICK whose telephone number is (571)272-2982. The examiner can normally be reached Monday - Friday 8-5.
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/A.P.T./Examiner, Art Unit 1737
/SALLY A MERKLING/SPE, Art Unit 1738
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