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 .
Detailed Action
This office action is in response to applicant’s communication filed on 7/21/26.
Claims 1-17 are pending in this application. and are being examined in this Office Action.
Applicant's election of Group I without traverse, claims 1-10, in the reply filed on 7/21/26 is acknowledged.
Claims 11-15 are withdrawn from consideration being drawn to the non-elected invention.
Applicant’s election of the following compounds are acknowledged herewith:
Species 1, the compound of Formula (1-1)
Claims 1-10 and 16 read on applicant's elected species. Claim 16 recites the elected Formula (1-1) and depends from claim 1; it falls within elected Group I and is being examined.
Claim 17 is withdrawn as being non-readable on the elected species, being drawn to nonelected Formula (1-2). The search has not been extended to determine the patentability of the other species encompassed by the claims.
As a result, claims 1-10 and 16 are being examined in this Office Action. Claims 11-15 and 17 are withdrawn.
Priority
The applicant claims benefit as follows:
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Objections
Claims 5, 9 and 16 are objected to because of the following informalities:
Claim 5 is objected to because it recites: "a compound (a) having m quantity of epoxy group(s)" is awkward. The examiner recommends instead "a compound (a) having m epoxy groups".
Claim 9 is objected to because of the recitation: "A resist underlayer film comprising a dried or concentrated resist underlayer film-forming composition according to claim 1" is unclear as to whether the film comprises the composition or is the product of drying or concentrating it.
Claim 16 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, and upon submission of a terminal disclaimer overcoming the double patenting rejections which are below.
Appropriate correction is required.
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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites "a compound (A) containing a partial structure represented by Formula (1)," and Formula (1) is defined such that "* denotes a bond to a remaining moiety of the compound (A)." The definition is circular. Compound (A) is defined by reference to Formula (1), and Formula (1) is defined by reference to a "remaining moiety of the compound (A)." Neither term is anchored to anything independent and the examiner can not determine the meaning.
The "remaining moiety" is further unbounded, with no metes or bounds. Nothing in the claim limits its size or identity. The specification states that A¹ "is not limited as long as the advantageous effects of the subject application are achieved," which is a results driven definition. Thus the moiety can merely read on the novolac resin.
The attachment point of * is also unclear. It appears that the * bond may be satisfied by a hydrogen atom. Then "compound (A)" would then read on just alkyl 2-cyano-3-(4-hydroxyphenyl)acrylate itself, in which Y is an ether bond and * is the phenolic hydrogen. (see applicant’s PGPub: US 20230393479: claim 1; ¶[0061])
Claim 1 further recites that X denotes "a C1-C10 alkyl group, a hydroxy group, a C1-C10 alkoxy group, a C1-C10 alkoxycarbonyl group, a halogen atom, a cyano group, or a nitro group, **or a combination thereof**." It is unclear whether "a combination thereof" means that different X groups on the same ring may differ from one another, or that a single X may itself be a composite group such as an alkoxyalkyl group. Claims 2 and 5 recite the same language. (Instant claims 1, 2 and 5)
The specification also does not defines "alkyl group." Therefore, it cannot be determined whether R₁ and R₂, each recited as "a C1-C10 alkyl group," read on substituted alkyl groups. Claim 5 recites "an optionally substituted C1-C10 alkyl group" for R₁, and the different language implies a difference in scope that is not resolved in applicant’s specification.
Claim 9 recites a film comprising a "dried or concentrated" composition. "Concentrated" is a relative term of degree for which the specification does not define. Thus, it cannot be determined how much solvent must be removed, or how applicant’s defines their degree for a "concentrated" composition.
Claims 2-4, 6-8 and 10 are rejected as being dependent on a rejected claim. Appropriate correction is required.
Because the metes and bounds of claim 1 cannot be determined, a complete search cannot be performed.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same...
Claims 1-10 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement.
The specification is enabling for a composition comprising a solvent and a compound (A) in which the Formula (1) group is attached through an ether linkage and a 2-hydroxypropylene spacer to a triazinetrione core having a weight-average molecular weight of approximately 300 to 3,000. It does not enable the full scope of compound (A), in which the "remaining moiety" is of unlimited identity and molecular weight. The factors set forth in In re Wands, 858 F.2d 731 (Fed. Cir. 1988), are applied below.
As to breadth, claim 1 encompasses an essentially unlimited genus of compounds; the only structural requirement is the Formula (1) fragment, and the specification confirms that the remaining moiety may be an entire novolac resin. (applicant’s PGpub: US 20230393479: ¶[0077])
As to the nature of the invention, the specification requires a film that simultaneously resists resist solvents and aqueous-alkali developers, provides anti-reflection, exhibits a high dry-etch rate, and is removable in a basic organic wet-etching chemical. These are interdependent, structure-sensitive properties. (applicant’s PGpub: US 20230393479: ¶[0005]-[0006], ¶[0052])
As to the presence of working examples, only two examples are provided — Example 1 employing Formula (1-1) and Example 2 employing Formula (1-2). Both are built on the same triglycidyl isocyanurate core, use the same ether and 2-hydroxypropylene linkage, and have the identical unsubstituted p-phenylene, differing only in R¹. (applicant’s PGpub: US 20230393479: ¶[0150]-[0151], ¶[0170])
As to unpredictability, applicant's own evidence demonstrates that a compound falling within claim 1 fails to achieve the stated object of the invention. Reference Synthesis Example 1 prepares Formula (1-6) from a bisphenol A novolac epoxy, 4-hydroxybenzaldehyde and methyl cyanoacetate, and the resulting compound bears the identical Formula (1) partial structure. Reference Example 1 exhibits an etching selectivity of 0.94, which is below the value of 1.00 obtained for Comparative Example 1, and lower than the values of 1.25 and 1.34 obtained for Examples 1 and 2. Reference Example 1 was not tested at all for solubility in wet etching chemicals, which the specification identifies as the central advantage of the invention. Applicant's designation of this compound as a "Reference Example" rather than as an Example is an acknowledgement that it does not achieve the object of the invention. The specification further states that the weight-average molecular weight is 300 to 3,000, and Reference Example 1 has a weight-average molecular weight of 6,600, yet claim 1 contains no molecular weight limitation. (applicant’s PGpub: US 20230393479: ¶[0052], ¶[0076], ¶[0155], ¶[0174]; Tables 2 and 4)
As to the level of skill and the quantity of experimentation required, given an unlimited genus, two exemplified species, and applicant's own demonstration that a structurally near species within the claim fails, one of ordinary skill in the art would be required to synthesize and screen an unlimited number of possible compounds. This constitutes undue experimentation.
Claims 1-10 are further rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Claim 1 defines compound (A) by a structural fragment together with an undefined remainder. The specification discloses only two species that achieve the described invention, both sharing a single core, and provides no structure-function correlation allowing one to recognize the members of the claimed genus. (applicant’s PGpub: US 20230393479: ¶[0150]-[0151])
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 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 the AIA 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.
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 1-4 and 7-9 are rejected under AIA 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Maeda et al. (US 20130296455, pub. date 11/7/2013, in applicant’s IDS filed 11/20/25).
Maeda teaches a compound of general formula (1), see below, consisting of a core X having a valency of n and bearing n arms, each arm being an aryl ring substituted with R² to R⁵ and terminating in the group -C(R¹)=C(CN)-C(=O)OR⁶. Maeda teaches a dye (A) containing that compound, a photosensitive composition containing the dye, and a solvent (E), the solvent is propylene glycol-1-monomethyl ether-2-acetate, propylene glycol monomethyl ether, cyclohexanone and the like. (Maeda: ¶[0014]-[0024], ¶[0138]-[0139]; claims 2-3)
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Maeda's definitions fall within the corresponding definitions of instant claim 1. R¹ is a hydrogen atom, methyl, phenyl, or cyano, each of which is within instant R₂. R⁶ is a hydrogen atom, a C1-C8 alkyl group, or a C6-C35 aromatic hydrocarbon group, each of which is within instant R₁. R² to R⁵ are halogen, cyano, hydroxyl, nitro, C1-C8 alkyl, C1-C8 alkoxy, halogenated alkyl or halogenated alkoxy, each of which is within instant X, and each may independently be hydrogen, corresponding to instant n = 0. The core X may be bonded directly to the ring, corresponding to instant Y being a direct bond; X may be an oxygen atom, corresponding to instant Y being an ether bond; and X may be a sulfur atom, corresponding to instant Y being a thioether bond. (Maeda: ¶[0014], ¶[0016]-[0018], ¶[0020])
Maeda exemplifies the following compound, Compound No. 22, see below. The compound has a 1,3,5-triazine-2,4,6-trione (isocyanurate) core, each of the three ring nitrogens being bonded directly to a phenylene ring, and each phenylene ring terminating in -C(CH₃)=C(CN)-C(=O)OC₂H₅. (Maeda: page 16, Compound No. 22)
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This compound reads on applicant's compound of Formula (1) and Formula (2), when:- A¹ = triazinetrione (1,3,5-triazine-2,4,6-trione) moiety- Y = a direct bond- n = 0- R₁ = C2 alkyl (ethyl)- R₂ = C1 alkyl (methyl)- m = 3- * = the bond to the isocyanurate remainder of the compound
Maeda further teaches that the preferable compounds of general formula (1) are those wherein R¹ is a hydrogen atom, R² to R⁵ are each a hydrogen atom, R⁶ is an alkyl group having 1 to 4 carbon atoms, and, when n is 3, X is a group selected from Group 2, Group 2 comprising the isocyanurate ring. Maeda further teaches that compounds wherein n is 3 or more are preferable because they are excellent in heat resistance. (Maeda: ¶[0102]-[0103], ¶[0106])
As to claim 1, Maeda discloses a composition comprising a solvent, being propylene glycol-1-monomethyl ether-2-acetate, propylene glycol monomethyl ether or cyclohexanone, and a compound (A) containing the partial structure of Formula (1), being Compound No. 22 as shown above.
The preamble phrase "resist underlayer film-forming composition" is a statement of intended use and is not limiting. Maeda's stated purpose is a layer exhibiting steep, high-intensity absorption over 380 to 500 nm that is not lost to light or heat, which is the property and function of applicant’s underlayer, as stated in applicant’s PGPub. Maeda also contemplates photoresists for electronics, resists for electrical plating, etching resists, solder resists, and photoresist materials for printed wiring boards. (Maeda: ¶[0004], ¶[0138]-[0139], ¶[0156], page 16; applicant’s PGpub: ¶[0005]-[0006])
As to claim 2, Compound No. 22 is represented by Formula (2), wherein A¹ is the triazinetrione core, which is an m-valent organic group, and m is 3, which is within the recited range of 1 to 10.
As to claim 3, A¹ of Compound No. 22 comprises a heterocyclic ring, namely the 1,3,5-triazine-2,4,6-trione ring.
As to claim 4, the heterocyclic ring of Compound No. 22 is a triazinetrione. Maeda additionally designates the isocyanurate ring of Group 2 as the preferred core when n is 3. (Maeda: page 16, ¶[0102], ¶[0106])
As to claim 7, the recitation "which is for application to a substrate having copper on a surface" is a statement of intended use and imparts no structural limitation. Maeda further teaches application of the composition to support bases including semiconductor substrates and metals. (Maeda: ¶[0153])
As to claims 8 and 9, Maeda applies the composition with a spin coater and dries the coating film on a hot plate at 90 °C for 90 seconds, thereby removing the solvent to obtain a film. Claims 8 and 9 are in product-by-process form, and thus patentability is determined by the product itself. (Maeda: ¶[0153], ¶[0159], ¶[0181])
Therefore these claims are fully met.
Claim Rejections – 35 USC 103
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.
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 of this title, 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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Maeda et al. (US 20130296455, pub. date 11/7/2013, in applicant’s IDS filed 11/20/25).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Maeda teaches the composition set forth above with respect to claim 1. Maeda further teaches that conventionally used additives, including crosslinking agents, can be added to the composition, and that melamines may further be used in combination. Maeda describes the melamines as compounds having at least two active methylol groups that are alkyl-etherified, and identifies hexamethoxymethylmelamine and hexabutoxymethylmelamine as preferable. (Maeda: ¶[0143], ¶[0147], ¶[0152])
Applicant's specification identifies melamine-based agents as the crosslinking agents of the invention. (applicant’s PGPub US 20230393479: ¶[0084])
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Maeda is deficient in the sense that it does not exemplify a single composition containing both Compound No. 22 and a crosslinking agent.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
However, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to include a melamine crosslinking agent in Maeda's composition, because Maeda teaches that one should do so and identifies the preferred species. The combination is no more than the combining of prior art elements according to known methods to yield predictable results, and a reasonable expectation of success follows from Maeda's own instruction.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Maeda et al. (US 20130296455, pub. date 11/7/2013, in applicant’s IDS filed 11/20/25), in view of Hu et al. (CN 109694352, pub. date 4/30/2019, in applicant’s IDS filed 11/20/25) (also see the English Translation).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Maeda teaches the film of claim 8 and teaches application of the composition to support bases including soda glass, quartz glass, semiconductor substrates, metals, paper and plastics. (Maeda: ¶[0153])
Hu et al. teaches imidazole ketoxime ester compounds for use as photoinitiators, photosensitizers and light absorbers. Hu et al.'s Example 6 prepares Compound (IV) from BE oxime, ethyl cyanoacetate, 4-chlorobenzaldehyde and ammonium acetate, in which the aryl ring bonded to the imidazole has -CH=C(CN)-C(=O)OC₂H₅ at the 4-position and chlorine at the 2-position. See the scheme below. Hu et al.'s Example 22 formulates the Example compounds into a photosensitive composition and coats that composition on a copper sheet, which is dried and then irradiated with a high-pressure ultraviolet lamp before development. (Hu: ¶[0060]-[0062], ¶[0127]-[0130])
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Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Maeda is deficient in the sense that it does not recite copper as the substrate, but instead recites metals generally. (Maeda, ¶[0153])
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
However, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to form Maeda's film on a substrate having copper on its surface. Hu et al. demonstrates that a photosensitive composition containing a benzylidene cyanoacetate chromophore is coated and dried on copper, and Maeda already contemplates metal support bases. Selection of a known substrate from the finite number of conventional substrates yields no more than the predictable result of patterning that substrate, and one of ordinary skill would have had a reasonable expectation of success.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Flaim et al. (herein Flaim) (US 5919598, pub date 7/6/1999), in view of Maeda et al. (US 20130296455, pub. date 11/7/2013, in applicant’s IDS filed 11/20/25).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Flaim teaches a bottom layer anti-reflective coating for multilayer photoresist systems, coated onto a semiconductor substrate and overcoated with a photoresist layer. (Flaim: col. 1, ll. 10-16; claim 1)
Flaim's Example 1 charges DEN 438 epoxy novolac resin, having an average functionality of 3.6 and an epoxide equivalent weight of 178.5 g/eq, together with 1-methoxy-2-propanol. Then adds 4-hydroxybenzaldehyde (47.11 g, 0.386 moles) and the grafting catalyst tetramethylammonium hydroxide. Then refluxes at approximately 120 °C for four hours. The contents are then cooled and malononitrile (25.48 g, 0.386 moles) is added to form the I-line active 4-(β,β-dicyanovinylene)phenoxy chromophores via reaction with the benzaldehyde groups grafted onto the resin. Flaim's Example 3 repeats the sequence using EPON 164 o-cresol epoxy novolac resin, having an average functionality of 5 and an epoxide equivalent weight of 220 g/eq. (Flaim: col. 7, ll. 15-42; col. 9, ll. 15-49)
The description of the chromophore as a "phenoxy" group, together with Flaim's claim recitation of a reaction product "having ether or ester linkages derived from the poly(epoxide) molecules," shows that each epoxide is opened at the phenolic oxygen of the 4-hydroxybenzaldehyde, which generates the -CH₂CH(OH)CH₂-O-C₆H₄-CH= unit. (Flaim: col. 7, ll. 32-36; claim 1(i))
Flaim further formulates the dye-grafted oligomer with CYMEL 300 or CYMEL 303LF methylated melamine-formaldehyde resin and p-toluenesulfonic acid monohydrate in 1-methoxy-2-propanol, spin coats the formulation at 4,000 rpm, and bakes at 100 °C for 30 seconds and then at 200 °C for 60 seconds. (Flaim: col. 7, ll. 43-53; col. 9, ll. 60-66; claim 1(ii)-(iv))
Maeda teaches that the benzylidene cyanoacetate chromophore is prepared by base-catalyzed condensation of a polyaldehyde with a cyanoacetic acid ester, and that R⁶ of the resulting ester is a C1-C8 alkyl group, preferably an alkyl group having 1 to 4 carbon atoms. See below. Maeda: ¶[0018], ¶[0102], ¶[0111], [Chemical Formula 31])
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Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Flaim is deficient in the sense that its active-methylene reagent is malononitrile rather than an alkyl cyanoacetate. Instead, Flaim teaches component (a) as an epoxy novolac resin having a functionality of 3.6 or 5, which is within the range of 1 to 10 recited in claim 2, and discloses component (b) as 4-hydroxybenzaldehyde, wherein R₂ is a hydrogen atom and n is 0. (Flaim: col. 7, ll. 15-42)
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
However, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to substitute an alkyl cyanoacetate for Flaim's malononitrile, since this is the simple substitution of one known active-methylene reagent for another to obtain a predictable result. Both reagents condense with an aryl aldehyde under the same base-catalyzed conditions, Flaim teaches the procedure for the epoxy and hydroxybenzaldehyde stage, and Maeda teaches the procedure for the cyanoacetate condensation, so that one of ordinary skill would have had a reasonable expectation of success.
Flaim itself treats the chromophore as a design variable to be selected for the desired absorption band, preparing the same dye-grafted oligomer with 9-anthracenecarboxylic acid, 9-acridinecarboxylic acid, 2-naphthoic acid and 8-hydroxyquinoline in its Examples 6 through 9. Thus, one of ordinary skill in the art would have looked to the art for alternative chromophores for the intended exposure wavelength.
Note that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). Since claim 5 is in product-by-process form, patentability is determined by the product itself.
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. See 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.2d438, 164 USPQ 619 (CCPA 1970); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-10 and 16 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 2, 4, 5, 6, 8, 9, 10, 11, 12 and 13 of US 12366804 B2 (pub date 7/22/2025 from Appl. No. 17619542).
Claim 1 of US 12366804 recites a resist underlayer film-forming composition comprising a solvent and a heterocyclic compound having a dicyanostyryl group. Claim 4 recites Formula (2), being Q-[A-B-CH(R₁)-CH(OH)-CH(R₃)-L]ₘ, with L of Formula (3). Claim 6 recites that Q is a triazinetrione. Claim 9 recites that A is a direct bond. Claim 8 recites that Y in Formula (3) is an ether linkage. Claim 2 recites that the compound is the reaction product of an active proton compound and a heterocyclic compound precursor having an epoxy group. Claim 10 recites a crosslinking agent and a crosslinking catalyst. Claim 11 recites use on a substrate having copper on the surface. Claim 12 recites the film obtained by removing solvent, and claim 13 recites that film formed on a copper substrate.
The instant claims recite the identical composition, core, linkage chemistry, crosslinker, copper substrate and film, and differ only in that the terminal group is a benzylidene cyanoacetate, being =C(CN)-CO₂R₁, rather than a dicyanostyryl group, being =C(CN)₂. (Instant claims 1-10 and 16; US 12366804: claims 1 and 4)
That difference would have been obvious. Maeda teaches the benzylidene cyanoacetate on an isocyanurate core as an art-recognized light-absorbing chromophore for photosensitive layers, and Hu shows the same chromophore on a heteroaromatic core in a photosensitive composition coated on copper. Substitution of one known active-methylene reagent for another in an otherwise identical Knoevenagel condensation is a routine tool producing predictable results. (Maeda: ¶[0102], ¶[0106], ¶[0156], page 16; Hu: ¶[0060]-[0062], ¶[0127]-[0130])
Claims 1-10 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18714012 (also see US 20250109242, pub. date 4/3/2025).
The claim sets are almost identical. Instant claims 1 and 5 correspond to US 20250109242 claim 1, reciting the reaction product of a bifunctional or higher glycidyl ester epoxy resin and compound A together with a solvent. Instant claim 6 corresponds to US 20250109242 claim 3, which recites "at least one selected from the group consisting of a crosslinking agent, an acid, and an acid generator". Instant claim 7 corresponds to US 20250109242 claim 4, instant claim 8 to US 20250109242 claim 5, instant claim 9 to US 20250109242 claim 6, and instant claim 10 to US 20250109242 claim 7.
The US 20250109242 compound A is HO-Ar(X)ₙ-C(R₁)=C(CN)-COOH. Reaction at the phenolic hydroxy group with the glycidyl ester epoxy yields -O-Ar-C(R₁)=C(CN)-COOR¹, which is the instant Formula (1) partial structure wherein Y is an ether bond. The US 20250109242 claim 13 recites the compound per se by Formula (2) and Formula (3), in which Y is expressly -O- and the X and R₁ definitions are identical to those of the instant claims. The US 20250109242 claims thus recite species falling within the instant generic claims, which are an obvious variant of and are not patentably distinct from them.
This is a provisional obviousness-type double patenting rejection, because the conflicting claims have not in fact been patented.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER C SAWYER/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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