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 .
Claim Status
Claims 1-16 are under consideration
Claims 17-18 are withdrawn
Election/Restrictions
Claims 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/06/2026.
Claim Objections
Claim 5 is objected to because of the following informalities:
In claim 5, at line 7, “any two of 4, R5 and R6 may bond together” should be rewritten as “any two of R4, R5 and R6 may bond together”.
Appropriate correction is required.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 6-10, 12, and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishikori (US20180329298A1, published 2021).
Regarding claims 1-3, 6-10, 12, and 14-16,
Nishikori teaches a radiation-sensitive resin composition [abstract] comprising of a compound (A) as an onium salt compound serving as an acid diffusion control agent (quencher) with the following formula [0017].
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Nishikori teaches their compound (A) may be the following [0071], reading on instant claims 1-3 and 6-8.
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Nishikori teaches their solvent may one of several organic solvents such as alcohols, ethers, ketones, esters, and hydrocarbons [0222], reading on instant claim 9.
Nishikori teaches their polymer may have the following structural units [0109, 115], where R4 and RL1 each represent a hydrogen atom, a fluorine atom, a methyl group or a trifluoromethyl group, reading on instant claims 10 and 12.
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Nishikori teaches including a radiation-sensitive acid generator (photoacid generator) other than the above compound (A) [abstract], reading on instant claim 14.
Nishikori teaches further including an amine compound as another acid diffusion controller [0252-0257], reading on instant claim 15.
Nishikori teaches including a surfactant [0251], reading on instant claim 16.
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 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 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Nishikori (US20180329298A1, published 2021) as applied to claims 1-3 above, and further in view of Hatakeyama (US 20180024435 A1, published 2018).
Regarding claims 11 and 13,
Nishikori teaches the above limitations set forth.
Nishikori fails to teach a polymer with repeat units disclosed in instant claims 11 and 13.
Hatakeyama, analogous art, teaches a base resin 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 by 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 11 and 13.
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As both Nishikori and Hatakeyama teach polymers comprising of pendant acid labile groups for use in 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 Nishikori would result in a comparable and expected resist composition.
That is, the substitution of the polymer of Hatakeyama for the polymer of Nishikori, 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).
Allowable Subject Matter
Claims 4-5 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 following is a statement of reasons for the indication of allowable subject matter:
Claim 4 discloses that the R3 group of formula (2) of instant claim 2 is an acid labile group.
Claim 5 then further discloses that the acid labile group of claim 4 has the formulae (AL-1) or (AL-2).
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A search did not find the claimed invention.
The closest prior art Nishikori teaches a similar onium salt and composition as shown above.
However, Nishikori fails to teach an onium salt compound aligning with the instant formula (1) where the R3 group is an acid labile group when the X group is -O-.
Neither Nishikori nor the prior art in general provide sufficient motivation to make it obvious to modify their compound to arrive at the instantly claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO2015025859A1, US4540781A, and WO2021199789A1 each teach similar onium salt compounds, however they each fails to teach a compound which aligns with instant formula (1) where X is -O- and R3 is an acid labile group.
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/A.N.L./Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734