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 .
Response to Arguments
1. Applicant's arguments, see page 5, line 6, filed 13 April 2026, with respect to the rejection of Claims 1-5 and 7-12 under 35 U.S.C. 102(a)(1) as being anticipated by Endo et al. (United States Patent Publication no. US 2016/0068709 A1), hereinafter Endo; and Claim 6 under 35 U.S.C. 103 as being unpatentable by Endo et al. (United States Patent Publication no. US 2016/0068709 A1), hereinafter Endo; have been fully considered but they are not persuasive. Applicant makes multiple arguments that don’t correspond well with the claim language of the present application. Firstly, Applicant states “However, Synthesis Examples 1-9 and Synthesis Example 10 merely disclose methods for synthesizing aldehydes of Formulas (1-1) to (1-10) noted in paragraph [0050] and discussed above as being aldehydes, not dialdehydes.” Neither aldehyde nor dialdehyde is present in the claim language of Claim 1 of the present application. The actual language is “a compound of the following Formula (3).” It is true that the compound of Formula (3) of the present application could be either described as an aldehyde or a dialdehyde, but that language is not in the present application. What is in the claim language is the compound of Formula (3) of the present application and Examiner has clearly pointed towards those compounds being reacted in the experimental examples of the prior art, i.e. terephthalaldehyde and glyoxal disclosed by Endo are clearly compounds within the scope of Formula (3) of the present application. Furthermore, Applicant argues: “The Synthesis Examples do not carry out a polycondensation reaction between a dialdehyde and compound A to obtain a polymer as in the present claims. Accordingly, Endo does not disclose the polymer that is an element of the present claims, namely a "polymer of a compound corresponding to Formula (1) or Formula (2) and a dialdehyde." It is unclear where the justification for Applicant’s quotation marks comes from. As previously stated, Applicant has not claimed a dialdehyde, but instead the compound of Formula (3) of the present application. Nor has Applicant claimed “a polymer of a compound corresponding to Formula (1) or Formula (2) and a dialdehyde.” Instead, Applicant has claimed “a reaction product between a compound of the following Formula (1) or (2) and a compound of the following Formula (3).” Examiner has explicitly shown the prior art teaching of a reaction between a compound of Formula (1) or (2) of the present application and a compound of Formula (3) of the present application to create a reaction product. Thus, Applicant’s arguments are not persuasive and the rejection of record is maintained.
Claim Rejections - 35 USC § 102
2. 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 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.
3. 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:
4. 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.
5. Claims 1-5 and 7-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Endo et al. (United States Patent Publication no. US 2016/0068709 A1), hereinafter Endo.
6. Regarding Claims 1-5 and 7-12, Endo teaches (Paragraphs [0093-0116]) a reaction product between a compound of Formulae (1) or (2) of the present application and a compound of the following Formula (3) of the present application, therein phenyl-1-naphthylamine in Synthesis Examples 11-20 being a compound of Formula (2) of the present application, carbazole in Synthesis Examples 21 being a compound of Formula (1) of the present application, terephthalaldehyde in Synthesis Examples 11-19 and 21 being a compound of Formula (3) of the present application, glyoxal in Synthesis Example 20 being a compound of Formula (3) of the present application. Endo teaches (Paragraphs [0093-0116]) a solvent. Endo teaches (Paragraphs [0093-0116]) in Formulae (1) or (2), Ar1 and Ar2 are each a benzene ring, therein phenyl-1-naphthylamine in Synthesis Examples 11-20 being a compound of Formula (2) of the present application and carbazole in Synthesis Examples 21 being a compound of Formula (1) of the present application. Endo teaches (Paragraphs [0093-0116]) in Formula (1), R1 and R2 are each a hydrogen atom, therein carbazole in Synthesis Examples 21 being a compound of Formula (1) of the present application. Endo teaches (Paragraphs [0093-0116]) in Formula (3) of the present application, X is a single bond, or an unsaturated cyclic organic group having a carbon atom number of 1 to 6, therein terephthalaldehyde in Synthesis Examples 11-19 and 21 being a compound of Formula (3) of the present application and glyoxal in Synthesis Example 20 being a compound of Formula (3) of the present application. Endo teaches (Paragraphs [0093-0116]) in Formula (3) of the present application, X is a single bond, therein glyoxal in Synthesis Example 20 being a compound of Formula (3) of the present application. Endo teaches (Paragraphs [0093-0116]) a reaction product between a compound of Formulae (1) or (2) of the present application, an additional aromatic compound other than the compound of Formulae (1) or (2), and a compound of the following Formula (3) of the present application, therein phenyl-1-naphthylamine in Synthesis Examples 11-20 being a compound of Formula (2) of the present application, carbazole in Synthesis Examples 21 being a compound of Formula (1) of the present application, terephthalaldehyde in Synthesis Examples 11-19 and 21 being a compound of Formula (3) of the present application, glyoxal in Synthesis Example 20 being a compound of Formula (3) of the present application, and p-cresol in Synthesis Examples 11 and 21, 4-methylcatechol in Synthesis Example 12, 2,4-dimethylphenol in Synthesis Example 13, 2,5-dimethylphenol in Synthesis Examples 14 and 20, 2,6-dimethylphenol in Synthesis Example 15, 4-tert-butylphenyl in Synthesis Example 16, 4-phenylphenol in Synthesis Example 17, 4-benzylphenol in Synthesis Example 18, and 4-phenoxyphenol in Synthesis Example 19 being an additional aromatic compound other than the compound of Formulae (1) or (2) of the present application. Endo teaches (Paragraphs [0117-0127]) the composition further comprises a crosslinking agent, therein 3,3',5,5'-Tetrakis(methoxymethyl)-[1,1'-biphenyl]-4,4'-diol in Examples 1-11. Endo teaches (Paragraphs [0117-0127]) the composition further comprises an acid, therein pyridinium p-toluenesulfonate in Examples 1-11. Endo teaches (Paragraphs [0117-0127]) the solvent has a boiling point of 160o C or higher, therein propylene glycol monomethyl ether and propylene glycol monomethyl ether acetate in Examples 1-11. Endo teaches (Paragraph [0136]) a resist underlayer film characterized by being a baked product of a coating film formed from the resist underlayer film-forming composition. Endo teaches (Paragraph [0136]) a step of forming, on a semiconductor substrate, a resist underlayer film from the resist underlayer film-forming composition. Endo teaches (Paragraph [0139]) a step of forming a resist film on the formed resist underlayer film. Endo teaches (Paragraph [0139]) a step of irradiating the formed resist film with light. Endo teaches (Paragraph [0139]) developing the resist film, to thereby form a resist pattern. Endo teaches (Paragraph [0139]) a step of etching the resist underlayer film with the formed resist pattern, to thereby form a pattern on the resist underlayer film. Endo teaches (Paragraph [0139]) a step of processing the semiconductor substrate with the patterned resist underlayer film.
Claim Rejections - 35 USC § 103
7. 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:
8. 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.
9. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable by Endo et al. (United States Patent Publication no. US 2016/0068709 A1), hereinafter Endo.
10. Regarding Claim 6, Endo teaches all limitations of Claim 1 above. However, Endo fails to explicitly teach a reaction product between two or more compounds of Formulae (l) or (2) of the present application and a compound of Formula (3) of the present application. Endo teaches (Paragraphs [0093-0116]) both a reactant within the scope of Formula (2) of the present application, therein phenyl-1-naphthylamine in Synthesis Examples 11, and a reactant within the scope of Formula (1) of the present application, therein carbazole in Synthesis Example 21, wherein all other reactants and solvents are the same. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Endo to have, at minimum, a content of both phenyl-1-naphthylamine and carbazole being utilized to form a reaction product. Doing so would involve merely combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art could have combined the elements, phenyl-1-naphthylamine in Synthesis Example 11 and carbazole in Synthesis Example 21, by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art would have recognized that the results of the combination were predictable as both Synthesis Example 11 and Synthesis Example 21 of Endo produce functional underlayer films, See Table 3 of Endo.
Conclusion
11. 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).
12. 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 extension fee 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 date of this final action.
13. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
14. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARK F 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.
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16. 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.
/R.D.C./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
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