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 .
Amendment to the claims was submitted with corrections on 06/22/2026, claims 2-4 are canceled, objections claim 5 are withdrawn.
Claim Status
Claims 1 and 5-16 are under consideration
Claims 2-4 are canceled
Claims 17-18 are withdrawn
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claims 1, 5-9, and 14-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shimada (US20020025489A1, published 2002).
Regarding claims 1, 6, 8-9, and 14-16,
Shimada teaches a composition and photosensitive layer (resist film) [abstract, 0018] comprising of a compound of general formula (B) [0031, 0034-0037, 0048], where R3 and R4 are preferably H or an C1-C6 alkyl group,
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bY may be the following, where R1 may be H, a C1-C10 alkyl group, or a thioether group,
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bM+ may preferably be one of the following, where each of R1-R25 may be H [0041-0042], reading on instant claims 1, 6, and 8.
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Alternatively, given that Shimada discloses the compound that encompasses the presently claimed onium salt, including the claimed anion and cation, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, to use the onium acid compound, which is both disclosed by Shimada and encompassed within the scope of the present claims and thereby arrive at the claimed invention, reading on instant claims 1, 6, and 8.
Shimada teaches including an organic solvent [0210], reading on instant claim 9.
Shimada teaches including additional known polymerization initiators such as onium salts (photoacid generators) [0109] as well as including alkylamine compounds (amine compounds) [0194], reading on instant claims 14-15.
Shimada teaches including a fluorine-based nonionic surfactant [0257], reading on instant claim 16.
Regarding claim 5,
The instant claims do not actually affirmatively require the addition of an acid labile group. As these claims only add further limitations to the acid labile group, the examiner maintains that Shimada has rendered said claim obvious and/or anticipated, reading on instant claim 5.
Regarding claim 7,
While silent to their compound functioning as a quencher, the compound of Shimada aligns with that of the instant claims, and would be expected to have the same inherent properties, such as functioning as a quencher, reading on instant claim 7.
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Shimada (US20020025489A1, published 2002) as applied to claim 1 and 7-8 above, and further in view of Hatakeyama (US 20180024435 A1, published 2018).
Regarding claims 10-13,
Shimada teaches a binder polymer, including methacrylic acid copolymers and acrylic acid copolymers [0176].
However, Shimada fails to explicitly teach a polymer with the repeat units of instant claims 10-13.
Hatakeyama, analogous art, teaches a base resin (polymer) for use in a resist composition comprising of a repeat unit having a carboxyl group in which a hydrogen atom is substituted with an acid-labile group [abstract].
Hatakeyama teaches their polymer may have both of a carboxyl group in which a hydrogen atom is substituted with an acid-labile group and a phenolic hydroxyl group in which a hydrogen atom is substituted with an acid-labile group [abstract], including the following examples [0062-0063], where R3 and R5 each represent a hydrogen atom or a methyl group; R4 and R8 each represent an acid-labile group.
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Hatakeyama teaches their polymer preferably further comprises one or more repeating units “d” selected from repeating units d1 to d3 shown by the following general formulae (3-1) to (3-3) having a sulfonium salt [0036].
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Hatakeyama teaches an example polymer 2 as shown below [0143], reading on instant claims 10-13.
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As both Shimada and Hatakeyama teach photosensitive resist compositions, it would have been obvious to a person of ordinary skill in the art that using the polymer of Hatakeyama as the polymer of Shimada would result in a comparable and expected resist composition.
That is, the substitution of the polymer of Hatakeyama for the polymer of Shimada, absent unexpected results, would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application with the predictable result of forming a resist composition. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (See MPEP § 2143, B).
Response to Arguments
Applicant’s arguments filed 06/22/2026 with respect to the 102 rejections over Nishikori have been fully considered and are persuasive, particularly in view of the new claim amendments. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Shimada.
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 Alexander Lee whose telephone number is (571)272-2261. The examiner can normally be reached M-Th 7:30-5:30 EST.
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/A.N.L./Examiner, Art Unit 1737
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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