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 .
The amendment dated 02/18/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
Claim Rejections - 35 USC § 102/103
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.
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 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 1 – 20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Ishikawa et al. (JP 2018/084783A) or, in the alternative, under 35 U.S.C. 103 as obvious over Ishikawa et al. (JP 2018/084783A)
In regards to claim 1, Ishikawa teaches film deposition material for resist process that can form a silicon-containing film and which comprises an organic solvent and a silicon polymer of a formula (1) having repeat unit(s) which is/are analogous to the structure of formula (1) of the claim [abstract, 0001]. In Example 1-7, the polymer comprises 14% repeat unit {M-2} with an aryl group, 66% repeat unit {M-1} with an alkoxy group, and 20% repeat unit {M-10} with an ester group [0125, 0130, Table 1].
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The repeat units M-6 and M-10 are analogous to the structure of formula 1 of the claim, when b is 2, R1 is a monovalent organic group such as O-Et, a is 1 and X is an organic group such as an ester. Thus, since the composition having the solvent and silicone polymer are provided, the claim is anticipated or at least obvious.
In regards to claims 2, 3, Ishikawa teaches the composition having ester group (M-10) which is analogous to formula (1-4) of the claim, when in the claimed structure L4 is a single bond, R7 and R8 are each hydrogen, and R9 is a C2 hydrocarbon group, or is a hetero-containing group (M-6) which is analogous to the claimed structure when in the claimed structure L4 is a single bond, R7 is hydrogen and R8 and R9 combined form a C4 bonded heterocyclic ring comprising a hetero group.
In regards to claim 4, Ishikawa teaches the composition wherein the ester repeat unit which provides the limitation of the first structural unit of the claim can be present at 20% as discussed above.
In regards to claims 5, 6, Ishikawa teaches the composition wherein the structure M-1 meets the limitations of the structure of formula (2) of the claims and comprise alkyloxy groups (O-Et) analogous to R12 and are present in the exemplified composition at 66% as previously discussed.
In regards to claims 7, 8, Ishikawa teaches the composition wherein the structure M-2 is present at 14% and which meets the limitation of formula (3) of the claim and teaches the aryl group equivalent to R11 of the claim as previously discussed.
In regards to claim 9, Ishikawa teaches the composition which is suitable for forming a resist underlayer film as claimed [0095].
In regards to claim 10, Ishikawa teaches composition for film-forming material for use in semiconductor devices [0009]. The material is formed by applying a silicon composition to a substrate to form a film, a composition for forming a resist film is also added to the substrate, the resist film which contains a radiation sensitive acid generator is exposed to radiation, and developed to form a resist pattern [0007, 0009].
In regards to claim 11, Ishikawa teaches the step of forming an organic resist underlayer prior to applying the silicon film thereon [0089].
In regards to claim 12, Ishikawa teaches the method wherein developing of the exposed resist film is conducted with an alkali (i.e., alkaline) developer [0102].
In regards to claims 13, 14, 20, Ishikawa teaches the method having the claimed limitations as previously discussed. The claims do not require the presence of formulas 1-1 or 1-2 but merely recites what R4 is in those structures.
In regards to claim 15, Ishikawa teaches the method wherein the M-6 or M-10 units are present at 20% in the composition of the examples (Table 1).
In regards to claims 16, 17, Ishikawa teaches the method comprising repeat units M-1 at 66% in the examples and which provides the claimed limitations.
In regards to claims 17 – 19, Ishikawa teaches the method comprising repeat units Uy wherein b can be 0 and R3 can be aryl group and the repeat unit Uy is present at a mol ratio of from 0 to 0.55 or from 0.05 to 0.4 (i.e., 5 to 40%) which provides the claimed limitation [0006]
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argued that the cyclic oxygen containing group of Ishikawa does not meet the limitation of monovalent heterocyclic organic group of R9 of the claim, because the heterocyclic ring is not monovalent. The argument is erroneous.
The cyclic ring was a monovalent structure and (cyclo-alkyl) group that is attached to one group alone, and not a bivalent (cyclo-alkylene group) that is attached to two different groups. Even applicant’s disclosure recites that cyclic groups meet the limitations of monovalent hydrocarbons (see 0026 of applicant’s disclosure as originally filed).
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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