Response to Amendment
The amendment and response filed on August 24, 2026 has been entered. Claims 1 and 3-29 are pending.
Election/Restrictions
Claim 1, 3, and 17 are directed to the elected invention. And, claims 4-16 and 18-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 28, 2026.
Claim Rejections - 35 USC § 102/103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
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.
Claims 1, 3, and 17 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nakajima et al. (US Pub 2017/0146906).
Regarding claim 1, US ‘906 discloses a silicon-containing resist underlayer film (claim 1) comprising a constituent unit derived from a hydrolysable silane having a phenanthryl group [0049]. US ‘906 does not disclose the maximum optical absorption coefficient of an example of an underlayer film comprising a hydrolysable silane having a phenanthryl group, but all of the examples set forth in Table 3, have a maximum optical absorption coefficient within the claimed range. Further, as set forth in MPEP 2112, "The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. V. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). "Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable." In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112 further sets forth that "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Accordingly, it is reasonable to conclude that underlayer film of US ‘906 would meet the claimed maximum optical coefficient range of claim 1, since US ‘906 uses the same materials as the presently claimed underlayer film. With respect to the 35 U.S.C. 103 part of this rejection, see MPEP 2112. III that states "Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. 'There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.'" In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
Regarding claim 3, US ‘906 discloses that the silicon-containing resist underlayer film is suitable for use in extreme ultraviolet (EUV) lithography [0147].
Regarding claim 17, US ‘906 discloses a semiconductor processing substrate comprising a semiconductor substrate and a silicon-containing resist underlayer film set forth above (claim 1, claim 7, Table 3, Examples 1-14, [0049).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection.
While it is agreed that US ‘906 does not disclose a silicon-containing underlayer film comprising a methoxyphenyl sulfonyl group in a now claimed amount of 9.34 to 50 parts by mass per the total amount of hydrolysable silane, US ‘906 does disclose using a hydrolysable silane containing a phenanthryl group [0049]. That is, amended claim 1 does not require the presence of a hydrolysable silane having a methoxyphenyl sulfonyl group.
Conclusion
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 Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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