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 12/02/2025, the following rejections have been updated accordingly.
Claim Status
Claims 1-7, 10-15, and 17-23 are under consideration
Claims 8-9 and 16 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.
Claim 17 is 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.
Claim 17 depends on claim 23, further disclosing the metal nanoparticles to have an average particle size between 1 nm and 20 nm. However, claim 23 has been amended to further limit the metal nanoparticles to having an average particle size between 1 nm and 20 nm.
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 § 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.
Claims 10, 14, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi (US20080241736A1, published 2008).
Regarding claims 10, 14, and 22,
Kobayashi teaches a resist composition comprising of a copolymer with formula (1) [0022], where R0, R3, R5, and R8 are each independently H or methyl, a polymer chain consisting of acrylates or methacrylates reading on instant claim 10,
PNG
media_image1.png
279
290
media_image1.png
Greyscale
comprising recurring units containing a carboxylic acid ammonium salt [abstract], including the following recurring unit (a-1) [0038] where the carboxylic acid anion may be a mono-anion of a dicarboxylic acid such as succinic acid [0039],
PNG
media_image2.png
155
81
media_image2.png
Greyscale
aligning with the instant polymer chain with a pendant TBG group include the following, reading on instant claim 22.
PNG
media_image3.png
86
165
media_image3.png
Greyscale
Kobayashi teaches their copolymer may be compounded in a total amount of 0.01 to 50 parts by weight, and preferably 0.1 to 10 parts by weight per 100 parts by weight of a base resin [0174], which is less than 50 wt.% based on a total weight of the composition, reading on instant claim 14.
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.
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 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (US20080241736A1, published 2008) as applied to claim 22 above.
Regarding claims 11-13,
Kobayashi teaches the above limitations set forth.
Kobayashi teaches X1 in their recurring unit (a-1) may contain a phenylene group (instant sensitizer core), and R1 and R2 may each contain aryl groups (instant sensitizer core), halogen atoms (readily envisioned by a person of ordinary skill in the art to include I, F, Cl, and Br), and/or hydroxy groups [0022], reading on instant claims 11-13.
Given that Kobayashi discloses the copolymer that encompasses the presently claimed polymer, including the components of instant claims 11-13, 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 copolymer, which is both disclosed by Kobayashi and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Claims 17-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Katayama (US20120183751A1, published 2012) in view of Zi (US20190384171A1, published 2019).
Regarding claims 17-21 and 23,
Katayama teaches photosensitive resin composition comprising a polymer having a repeating unit represented by the following general formula (2-4) [0033], a base generator that generates a base by exposure to radiation and heating (reading on the instant PBG and TBG, and functioning as a quencher) [abstract], reading on instant claim 20.
PNG
media_image4.png
149
289
media_image4.png
Greyscale
The formula also contains a benzene ring (sensitizer) and an OH group (proton source functional group), reading on instant claim 19.
Katayama teaches the polymerized group X in their formula (2-4) above may be siloxane or silane (resulting in an inorganic polymer) [0060], reading on instant claim 18.
Given that Katayama discloses the group X may be siloxane or silane resulting in an inorganic polymer, encompassing the presently claimed inorganic polymer, 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 siloxane or silane as group X, which is both disclosed by Katayama and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Katayama teaches at least one of their R1 and R2 groups is an organic group (implying both R1 and R2 may be organic groups) [0023, 0027], where the organic group may be a saturated or unsaturated alkyl group (such as a methyl) which may contain a substituent other than a hydrocarbon group [0089], where the substituent may preferably be a carboxyl group [0096], resulting in a formula containing the following instantly claimed structure below.
PNG
media_image5.png
66
85
media_image5.png
Greyscale
Given that Katayama discloses a polymer that encompasses the presently claimed polymer, including the above mentioned R2 and R2 groups, 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 above R1 and R2 groups, which is both disclosed by Katayama and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Katayama teaches an example where the base generator is 100 parts by weight with a solvent at 300 parts by weight [0331-0333], where the concentration of the base generator is 25 wt. % of the composition, in which case the concentration of the PBG group or TBG group would be less than 25 wt.%.
Katayama teaches their generated base may be an amine compound such as cyclohexylamine [0097-0098], which has a pKb less than 13.
Katayama teaches R3 and R4 may each be a halogen in their formula (2-4) [0023, 0033].
PNG
media_image4.png
149
289
media_image4.png
Greyscale
Katayama further teaches that in the case where at least one of R3 and R4 is a halogen such as a fluorine, there is an increase in the affinity for polymer precursors containing a halogen such as a fluorine [0111].
Given that Katayama discloses the groups R3 and R4 may include halogens such as fluorine, encompassing the presently claimed PBG and/or TBG including an element such as F, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, to include fluorine in R3 and/or R4, which is both disclosed by Katayama and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Katayama fails to teach including metal nanoparticles to their composition.
Zi, analogous art, teaches a photoresist composition comprising metal oxide nanoparticles [abstract].
Zi teaches increased actinic radiation absorption improves photolithographic patterning processes. Metal oxides absorb a greater amount of radiation, such as extreme ultraviolet radiation, than organic molecules. Metal oxide nanoparticles are added to photoresists to improve absorption of actinic radiation, such as extreme ultraviolet radiation. To prevent the metal oxides from separating from the photoresist composition, the metal oxides are complexed by ligands forming a ligand/metal complex. [0023].
Zi further teaches their metal oxide nanoparticles improve actinic radiation absorption, are particles having an average particle size between about 1 nm and about 20 nm, where the metal oxide nanoparticles may be selected from the group consisting of titanium dioxide, zinc oxide, zirconium dioxide, nickel oxide, cobalt oxide, manganese oxide, copper oxides, iron oxides, strontium titanate, tungsten oxides, vanadium oxides, chromium oxides, tin oxides, hafnium oxide, indium oxide, cadmium oxide, molybdenum oxide, tantalum oxides, niobium oxide, aluminum oxide, and combinations thereof [0072], reading on instant claims 17 and 21.
It would be obvious to a person of ordinary skill in the art to add the metal oxide nanoparticles of Zi to the photosensitive resin composition of Katayama in order to increase actinic radiation absorption to improve photolithographic patterning processes as taught by Zi, reading on instant claim 23.
Response to Arguments
Applicant’s arguments filed 12/02/2025 with respect to the 102/103 rejections to claims 1-7, 10-15, and 22 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However regarding claims 10-14 and 22, upon further consideration, a new ground(s) of rejection is made in view of Kobayashi.
Applicant’s arguments filed 12/02/2025 with respect to the 103 rejections to claims 17-21 and 23 have been fully considered and are not persuasive.
The above rejections have been updated accordingly.
Allowable Subject Matter
Claims 1-7 are allowed.
Claim 15 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 claim 1 has been amended to disclose a polymer composition comprising of pendant PBG group and optionally pendant TBG groups, where the PBG and TBG groups include those selected from the groups listed in instant claim 1.
Claim 15 discloses the polymer chain of instant independent claim 22 is an inorganic polymer, where instant claim 22 has been amended to further remove a formula from the list of TBG groups.
A search did not find the claimed inventions.
The closest prior arts Kobayashi and Katayama et al., as shown above, each teach similar polymer compositions.
However, regarding instant claim 1, neither Kobayashi nor Katayama et al. teach a polymer composition including a PBG that is one of those listed in instant claim 1.
Regarding instant claim 15, Kobayashi fails to teach a polymer with pendant moieties that are one of those listed in instant claim 22 where the polymer chain is inorganic, and Katayama et al. fails to teach an inorganic polymer chain where a pendant TBG that is one of those listed in instant claim 22.
Neither Kobayashi, Katayama, nor the prior art in general provide sufficient motivation to make it obvious to modify their compositions to arrive at the instantly claimed invention.
Claims 2-7 depend on allowable independent claim 1.
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.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.N.L.//JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734