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 on 12/11/2025, claims 5-8 and 12-14 are canceled, claims 21-27 are added.
Claim Status
Claims 1-4, 8-11, and 15-27 are under consideration.
Claims 5-8 and 12-14 are canceled
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 21-22 and 25-26 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claims 21 and 25,
The instant first solvents are a finite list of solvents, as disclosed by independent claims 1 and 10, wherein none of the listed solvents contain alcohol, carboxyl, amine, or amide groups. Therefore, claims 21 and 25 fail to further limit the subject matter of the claims upon which they depend.
Regarding claims 22 and 26,
The instant first solvents are a finite list of solvents, as disclosed by independent claims 1 and 10, wherein none of the listed solvents contain a halogen. Therefore, claims 22 and 26 fail to include all the limitations of the claims upon which they depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 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 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 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama (US 20120208127 A1, published 2012) (as further evidenced by US5534312A having been incorporated by Hatakeyama) in view of Iwato (US 20120077122 A1, published 2012).
Regarding claims 1, 5-14, and 16-20,
Hatakeyama teaches a resist (photoresist) composition comprising of a solvent such as methanol or 2,3-dimethyl-2-butanol, a C6 tertiary alcohol which has the following structure [0046].
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Hatakeyama teaches a metal salt of a carboxylic acid with 1-20 carbon atoms (organometallic compound with a metal and a ligand) [abstract, claim 1, 0021, 0063]. Hatakeyama teaches their metal salt carboxylic acid ligands may contain an a straight, branched or cyclic C2-C5 alkyl group, which may contain an amino group [0021], aligning with the ligands of the instant organometallic compound MaRbXc, where a is 1, b may be 1-2, c may be 1-2, R is a C3-C6 carboxylate group, and X is an amino group.
Hatakeyama discloses a prior art Patent Document 2 (U.S. Pat. No. 5,534.312), which discloses a method for forming a pattern using salts of copper, chromium, cerium, yttrium, barium, and aluminum with carboxyl and amino-containing ligands [0012]. As Hatakeyama clearly discloses both metal salts for use in pattern forming compositions, it would have been obvious to a person of ordinary skill in the art to try using a metal such as aluminum as the metal of their resist composition, as Hatakeyama clearly discloses a method for forming a pattern using salts of metals such as aluminum with carboxyl and amino-containing ligands.
However, Hatakeyama does not teach a tertiary alcohol disclosed by instant claim 16.
Iwato, analogous art, teaches a photoresist composition comprising of a tertiary alcohol with the following formula where R1 to R3 is each preferably an alkyl group having 1 to 8 carbon atoms and examples thereof include a methyl group, an ethyl group, a propyl group, an n-butyl group, a sec-butyl group, a hexyl group, and an octyl group [0074-0079], which would include 2,3-dimethyl-2-butanol (as taught by Hatakeyama), as well as overlapping each of the instantly claimed tertiary alcohols. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
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For example, a tertiary alcohol where R1 is propyl, R2 is propyl, and R3 is n-butyl would result in the following tertiary alcohol 4-propyl-4-octanol, with a boiling point of about 218 °C. While information regarding the melting point of the following compound is sparce, the melting point of 4-octanol is about -41 °C. Further, as 4-propyl-4-octanol is able to function as a solvent, the melting point would be expected to be below room temperature, 23 °C.
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Iwato also teaches that when a resist composition containing a tertiary alcohol is employed, the sensitivity is increased, the development defect can be reduced, and an excellent pattern profile is obtained [0054], and may also increase the dissolution or diffusion rate of a polymer chain or increase the permeation speed of the developer through the resist film [0055].
As both Hatakeyama and Iwato teach photoresist compositions which may comprise of tertiary alcohols, it would be obvious to a person of ordinary skill in the art that using the tertiary alcohol of Iwato as a solvent in the composition of Hatakeyama would result in a forming a comparable and functional photoresist layer.
That is, the substitution of the tertiary alcohol of Iwato for the solvent of Hatakeyama, 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 photoresist 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).
It would also be obvious to a person of ordinary skill in the art to include the tertiary alcohol of Iwato in the composition of Hatakeyama for the benefits taught by Iwato, reading on instant claims 16-17.
Hatakeyama teaches the solvent may be used alone or in a mixture [0046], in which case the concentration of the solvent would be 100 wt.% based on a total weight of the solvent if using just 2,4-dimethyl-2-pentanol as the solvent, reading on instant claim 19.
Hatakeyama teaches the solvent may be used in a mixture with another solvent such as 4-Methyl-2-pentanol (methyl isobutyl carbinol) [0046], reading on instant claim 18.
Response to Arguments
Applicant's arguments filed 12/11/2025 regarding independent claim 16 have been fully considered but they are not fully persuasive. The above rejections have been updated accordingly.
Applicant's arguments filed 12/11/2025 regarding independent claims 1 and 10 have been fully considered and are persuasive, particularly in view of the new claim amendments. The previous rejections to claims 1 and 10 are withdrawn.
Allowable Subject Matter
Claims 2-4 and 15 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.
Claims 1-4, 9-11, 15, 23-24, and 27 are allowed.
Claim 20 is 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:
Independent claims 1 and 10 have been amended to further require the composition comprising of a first and second solvent, where the first solvent is selected from a group consisting of a propanal, a butanal, a pentanal, a hexanal, a 3-methylbutanal, a 2-methylbutanal, a 2- methylpentanal, and a 2-ethylpentanal, and the second solvent different from the first, incorporating the allowable subject matter of dependent claims 2-4 and 15, as noted in the office action filed 09/11/2025.
A search did not find the claimed invention.
The closest prior art, Hatakeyama, teaches a similar composition as disclosed above.
However, Hatakeyama fails to teach a first solvent that is one of those list above.
Neither Hatakeyama nor the prior art in general provide sufficient motivation to make it obvious to modify the composition to arrive at the instantly claimed invention.
Claims 2-4, 9, 11, 15, 23-24, and 27 depend on allowable independent claims 1 and 10.
Dependent claim 20 has been amended to require the M of the instant organometallic compound to be Bi or Te.
A search did not find the claimed invention.
The closest prior art, Hatakeyama, teaches a similar composition as disclosed above.
However, Hatakeyama fails to teach a composition where the metal is specifically Bi or Te.
Neither Hatakeyama nor the prior art in general provide sufficient motivation to make it obvious to modify the composition to arrive at the instantly claimed invention.
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 /JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734