DETAILED CORRESPONDENCE
This Office action is in response to the election received June 18, 2026.
Applicant's election with traverse of Group I, claims 1-10 in the reply filed on June 18, 2026 is acknowledged. The traversal is on the ground(s) that the invention would appear to be part of an overlapping search area. Applicants submit there is no undue burden on the Examiner to search all the claims under MPEP §803. This is not found persuasive because the composition could be used in a materially different method not involving semiconductor manufacture such as used in a lubricant, used as a method for forming parts or structures by injection molding, thus the search for alternative method for the composition would place a serious burden on the Examiner for consideration of those applications as well. Upon claims to the elected composition being seen as allowable, the method claims would be rejoined in view of In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) which sets precedent that the method of use of allowable products is also seen as an allowable method. As a results restricted methods of use and methods of making would be rejoined.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 18, 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The examples in the application do not meet the described precursors that are described in the specification.
In claim 1 compound (2-1) discloses a silane compound having R1 wherein it is defined by h to be either 1 or 2, however none of the working examples demonstrate this structure, see page 48 for M-1 to M-4 wherein there are three methoxy group failing to match the claimed formula (2-1).
Clarification or correction is necessary.
Claim Rejections - 35 USC § 102
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over NAGAKAWA et al (2020/0354575 A1).
The claimed invention recites the following:
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896
680
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436
652
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NAGAKAWA et al disclose silicon containing resin for underlayers. The precursors for forming the polymer include the following as seen in Synthesis Example 1 and Example 2.
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314
372
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The Synthesis Example 3 disclose precursors methyltrichlorosilane reacted with dibromo methane to form a polymer . The example lacks the claimed silane compound of formula (1-1) having the X group being other than an alkoxy group, the monovalent organic group having 1 to 30 carbon atoms and having at least one fluorine atom. Applicants are directed to para. [0032] on page 4 wherein the following silane compounds such as gamma-trifluoropropyltrimethoxysilane and gamma-trifluoropropyltriethoxysilane are seen as equivalent to methyltrichlorosilane used in Synthesis Example 1, see below:
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312
378
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1056
382
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782
384
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Next NAGAKAWA et al disclose the polymer obtained in the Synthesis Examples, such as Synthesis Example 1 reacted with methyltrimethoxysilane as seen in Example 1 in para. [0336] meet formula (1-1) and Example 1 discloses the reaction of a polymer (1) from Synthesis Example 1 reacted with methyltrimethoxysilane to arrive their final polymer, this precursor meets claimed formula (2-1).
Claim 2 is met by either gamma-trifluoropropyltrimethoxysilane and gamma-trifluoropropyltriethoxysilane of para. [0032].
Claims 3 and 4 for the methanediyl are optional group from claim 1.
Claims 5 to 8 are met by the precursor methyltrimethoxysilane in NAGAKAWA et al.
Claims 9 is met by Example 1, see below:
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358
380
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Claim 10 is met by the disclosure in para. [0007].
It would have been prima facie obvious to one of ordinary skill in the art of underlayer for semiconductor manufacture to use any of the listed silane precursors in the Examples of NAGAKAWA et al with the reasonable expectation of same or similar results for low relative dielectric constant, excellent mechanical strength and adhesion and uniform quality.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
SEKO et al (2020/0354575 A1) disclose film forming composition to the same assignee, JSR Corporation. The precursors used include an orthoester compound and a compound having a Si-H bond.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S CHU whose telephone number is (571)272-1329. The examiner can normally be reached M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached at telephone number 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
August 22, 2026
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