DETAILED CORRESPONDENCE
This Office action is in response to the amendment received June 24, 2026.
Any new language to the previous OA is in bold.
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 7 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 7 recites that the solvent in claim 1 contains water, however the most recent amendment to claim 1 added a limitation for in an amount of 30% by mass or less relative to the total mass of the solvent.
Applicants 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
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 14-16, 18-21, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over KIMURA et al (KR-20130111396A) equivalent to US Patent Publication No. (2013/0256264) (TANAKA et al).
The claimed invention now recites the following:
PNG
media_image1.png
134
664
media_image1.png
Greyscale
PNG
media_image2.png
488
676
media_image2.png
Greyscale
KIMURA et al report an underlayer for resist compositions which comprise a polysiloxane, and a solvent of the following formula (B1) which meets the claimed formula (1), see para. [0096] below with the English translation of the compound:
PNG
media_image3.png
30
552
media_image3.png
Greyscale
PNG
media_image4.png
36
566
media_image4.png
Greyscale
Applicants are directed to page 11, para. [0107] wherein the content of solvent [B1] is disclosed to be 1% by mass or more and 50% by mass or less, see the text below:
PNG
media_image5.png
84
978
media_image5.png
Greyscale
It is noted in KIMURA et al that the content of solvent (B1) is based on the content of only the solvents. Once the solid components are added, the content of a 1% by mass of a solvent such as tripropylene glycol monomethyl ether of para. [0096] in KIMURA et al would be less than 1% by mass relative to the total mass of the silicon-containing composition, thus meeting the claimed invention as recited in claim 1.
Claims 15 is met by the (B2) solvents above from para. [0109].
Claim 16 recites a polysiloxane which is reported in para. [0040] of KIMURA et al.
Claim 18 is met wherein TANAKA et al fail to disclose a curing catalyst in their underlayer.
Claims 19-21 are found in para. [0113] for water, para. [0118] for the pH adjuster/acid diffusion control agent which is a basic compound and para. [0132] for the surfactant.
Claim 23 is met by para. [0153] for exposure to the extreme uv (13 nm).
Claims 24 and 25 are met by paras. [0142] to [0159] for the photolithographic method steps.
It would have been prima facie obvious to one of ordinary skill in the art of underlayer compositions to replace tripropylene glycol monomethyl ether in place of the (B1) solvent of Examples 1, (B1) and reasonably expect of same or similar results for improved coating defect suppression properties and storage stability.
The content of the tripropylene glycol monomethyl ether in KIMURA et al can be in a content of 1% by mass of the solvents and when combined with the solids, would meet the claimed range of less than 1% of the total mass of the composition.
Claims 17 and 22 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.
None of the prior art references of record disclose nitric acid in the underlayer or the metal oxide in the underlayer.
Claims 1, and 3-6, and 8-13 are seen as allowable over the prior art of record.
None of the prior art references disclose the claimed content of the glycol component of Formula (1) in an amount of less than 0.5% by mass relative to the total mass of the silicon-containing resist underlayer film forming composition and wherein water is contained in an amount of 30% by mass or less relative to the total mass of the solvent.
The amendment is not seen to be new matter as the range for the glycol component is implied to be in a range of 0.01% to less than 1%, with lower range disclosed in para. [0107] of the specification.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
TANAKA et al (2013/0256264 a1) is the U. S. Patent Publication Application English language equivalent to KIMURA et al (KR-20130111396A) above.
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 JOHN S. CHU whose telephone number is (571)272-1329. The examiner can normally be reached on 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.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
September 2, 2026
Prosecution Insights