DETAILED CORRESPONDENCE
This Office action is in response to the amendment received March 17, 2026.
Bolded text is new to the previous office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention:
a) Amended claim 1 recite General Formula (a4) represented by any one of (a4-1) to (a4-8), however these formula is not found in the claims anywhere.
b) Claim 1, line 15 to the solid concentration is 20% to 50% by mass is indefinite as there is no recitation of any solvent in the composition.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over YAMAGUCHI et al (2004/0152009) in view of TAKEMOTO et al (2010/0028807).
The claimed invention now recites the following:
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YAMAGUCHI et al report a positive photosensitive resin composition comprising an acid generator and a polymer wherein the some of the copolymer have the following structures on page 18:
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Page 19, para. [0132] report the content of the having polyhydroxystyrene with an acid-labile group in a ratio of 10% to 80%, which translates to the hydroxystyrene unit in an amount of 20% to 90% thus teaching the claimed range of formula (a10-1) of 5% to less than 45%.
TAKEMOTO et al disclose conventional and known acid generators of the following structure on page 1 meeting component (b0-1):
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W1 is defined in para. [0005] meets the claimed ester bond and the hydrocarbon as claimed with Q1 and Q2 .
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Claims 3 is met by the solvent reported in para. [0173] below:
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Claims 4 and 5 are met by the disclosed method in para. [0204] shown here:
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It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition to use any of the disclose copolymers in YAMAGUCHI et al of page 18 wherein the hydroxstyrene content in the copolymer in a range of 20% to 45% wherein the photoacid compound is the naphthalimide from Example 5 of TAKEMOTO et al in a resist composition with the reasonable expectation of same or similar results for high resolution and excellent pattern formation.
The rejection is repeated wherein the constitutional units (a4) are not seen in the claim and the current rejection continues to be applicable to indefinite claim 1.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
HIRANO et al (2011/0111343) disclose non-dissociable repeating units in the base polymer of the photoresist composition, see page 60.
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
May 28, 2026
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