DETAILED CORRESPONDENCE
This Office action is in response to the amendment received July 7, 2026.
The reject under 35 U.S.C. 103 as being unpatentable over NAKAJIMA et al (2018/0181000) or HAMADA et al (2006/0224009) in view of ARAYAMA et al.(20190302618) which references WO-2016/136481A (TAKADA et al ) and JP-2011-221494A (SUGIHARA et al) is withdrawn in view of the amendment to claim 1.
The bold text indicates new language in the Office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, and 4-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-17 of U.S. Patent No. 11,294,282 (HAYASHI et al) in view of NAKAJIMA et al (2018/0181000 A1) or HAMADA et al (2006/0224009), and ARAYAMA et al. (20190302618) which references WO-2016/136481A (TAKADA et al)) and JP-2011-221494A (SUGIHARA et al)
HAYASHI et al claims a photosensitive resin composition comprising a silicone resin, a photoacid generator and a quencher as seen in claim 3. The silicone resin is claimed in claim 1 and overlaps the currently recited photosensitive resin composition as recited in claim 1.
The U.S. Patent lacks the claimed carboxylic acid quaternary ammonium compound, however the references to follow disclose the equivalence of the nitrogen-containing compounds with the carboxylic acid salts as quenchers in a photosensitive composition.
NAKAJIMA et al report a photosensitive resin composition comprising a silicone resin, a photoacid generator and a nitrogen-containing compound.
Page 31, para. [0248] disclose the use of onium salts such as those of carboxylic acid with an ammonium salt, see below:
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HAMADA et al (2006/0224009) disclose a silsesquioxane compound formulated with photoacid generators and nitrogen-containing compound (basic compounds) in para. [0152] wherein specific basic compounds include nitrogen-containing compounds having carboxylic groups, see below:
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ARAYAMA et al (2019/0302618) disclose photosensitive resin composition comprising photoacid generators and polymers having acid-decomposable group. The use of basic compounds is reported on page 16, para. [0227] wherein basic compounds are disclosed to be formulated in the composition with specific compounds from WO-2016/136481A (TAKADA et al) and JP-2011-221494A (SUGIHARA et al). TAKADA et al disclose specific nitrogen-containing ammonium salts of carboxylic as seen here from page145, compound N-11:
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ammonium salt of carboxylic acid and the like are disclosed in the photosensitive layer. SUGIHARA et al disclose photosensitive resin composition formulating a polymer, photoacid generator and a basic compound such as quaternary ammonium salt of carboxylic acid as a component (G), see para [0207].
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition to use any of the quaternary ammonium carboxylic salts as a basic compound/quencher in either of NAKAJIMA et al or TAKADA et al with the reasonable expectation of having excellent resolution, and precise patterns.
A grant to the current application would extent the protection of an obvious invention beyond the statutory 20 years from the patent date.
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 4-15 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.
Amended claim 1 recite a dangling/ redundant formula definition of “ [Chem. 1] [Chem. 2] [Chem. 3] [Chem. 4] [Chem. 5] [Chem. 6] and [Chem. 7]” each of which already have second label, i.e. (B) for [Chem. 1] , (a1) to (a4) and (b1) to (b4) for [Chem. 3] , (X1) for [Chem. 4], (X2) for [Chem. 5] , (X3) for [Chem. 6] and (X4) for [Chem. 7].
Correction and amendment are necessary to remove additional labels for each of the formulae for clarity.
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 and 4-15 are rejected under 35 U.S.C. 103 as being unpatentable over HAYASHI et al (2019/0064666 A1) in view of (NAKAJIMA et al (2018/0181000) or HAMADA et al (2006/0224009) in view of ARAYAMA et al. (20190302618) which references WO-2016/136481A (TAKADA et al) and JP-2011-221494A (SUGIHARA et al)
The claimed invention now recites the following:
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HAYASHI et al discloses a photosensitive resin composition comprising a silicone resin, (see pages 3-5), a photoacid generator, (page 7) and a quencher, (see pages 10-12) . The silicone resin is disclosed in the pages above y recited photosensitive resin composition as recited in claim 1.
NAKAJIMA et al report a photosensitive resin composition comprising a silicone resin, a photoacid generator and a nitrogen-containing compound.
Page 31, para. [0248] disclose the use of onium salts such as those of carboxylic acid with an ammonium salt, see below:
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HAMADA et al (2006/0224009) disclose a silsesquioxane compound formulated with photoacid generators and nitrogen-containing compound (basic compounds) in para. [0152] wherein specific basic compounds include nitrogen-containing compounds having carboxylic groups, see below:
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ARAYAMA et al (2019/0302618) disclose photosensitive resin composition comprising photoacid generators and polymers having acid-decomposable group. The use of basic compounds is reported on page 16, para. [0227] wherein basic compounds are disclosed to be formulated in the composition with specific compounds from WO-2016/136481A (TAKADA et al) and JP-2011-221494A (SUGIHARA et al). TAKADA et al disclose specific nitrogen-containing ammonium salts of carboxylic as seen here from page 145, compound N-11:
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ammonium salt of carboxylic acid and the like are disclosed in the photosensitive layer. SUGIHARA et al disclose photosensitive resin composition formulating a polymer, photoacid generator and a basic compound such as quaternary ammonium salt of carboxylic acid as a component (G), see para [0207].
Claims 2-3 are met by the silicone containing resins of the HAMADA et al and NAKAJIMA et al above.
Claims 4 are met by the sulfonium photoacids in para. [0115] of HAMADA et al.
Claim 5 and 6 for the crosslinker are met by NAKAJIMA et al at para. [0038] for crosslinking agents.
Claim 7 recites a solvent which is taught in para. [0175] of NAKAJIMA et al.
Claims 8 and 9 recite the coating composition and a support which are taught in the para. [0397] of NAKAJIMA et al.
Claims 10-14 for the pattern formation method are disclosed in NAKAJIMA et al at para. [0397] for developability.
Claim 15 is met by the disclosure in NAKAJIMA et al disclosed above on page 145.
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition to use any of the quaternary ammonium carboxylic salts as a basic compound/quencher in either of NAKAJIMA et al or TAKADA et al with the reasonable expectation of having excellent resolution, and precise patterns.
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.
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/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
September 15, 2026
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