DETAILED ACTION
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 .
Amendment to the claims and abstract were submitted on 01/16/2026, claims 3 and 4 are canceled, the objection to the abstract is withdrawn, the 112(b) rejection to claims 1-19 are withdrawn.
Regarding the objection to the chemical structures referenced as the drawings in the previous office action, they are depictions of the chemical structures identified in the abstract. The objection to the drawings is withdrawn.
Claim Status
Claims 1-2, 5-13, and 16-19 are under consideration
Claims 3-4 are canceled
Claims 14-15 are withdrawn
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 discloses component (D) is a quaternary ammonium salt with the instant formula (1-1), where E- represents an anion of an organic or inorganic acid salt. However, instant claim 1 has been amended to require E- to be an organic carboxylic acid.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 (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 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 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.
Claims 1, 6-13, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Takemura (US20200041903A1, published 2020) in view of Tsubaki (US20120315449A1, published 2012) and Oono (US6723483B1, published 2004).
Regarding claims 1, 6-13, and 16-19,
Takemura teaches a photosensitive resin composition comprising of a solvent and an alkali-soluble polymer having a polyamide structural unit, a polyamide-imide structural unit, or a polyimide structural unit, selected from a polyamide, a polyamide-imide, a polyimide, a polyimide precursor, a polybenzoxazole, and a polybenzoxazole precursor, including a reaction product of a diamine containing at least one of a diamine shown by the following general formula (1) and a diamine shown by the following general formula (2), together with at least one of a tetracarboxylic dianhydride shown by the following general formula (3) as well as a dicarboxylic acid and a dicarboxylic halide shown by the following general formula (4) [abstract].
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Takemura teaches an example resin formed from 6FAP and AN-9 [0282], reading on the instant resin (A), reading on instant claims 6-9, and 13.
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Takemura teaches a photoacid generator [0044], reading on the instant photoacid generator (B).
Takemura teaches a crosslinking agent may be the following [0222], where u is 1-3, reading on the instant crosslinking agent (C).
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Takemura teaches a thermal acid generator as shown below [0316].
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However, Takemura fails to teach a compound aligning with that of instant component (D).
Oono, analogous art, teaches a sulfonium salt compound used as an acid generator and a photo polymerization initiator used in the chemically amplified resist compositions [col 1 lines 5-17], which may be a compound shown by general formula [3], where Zp- is an anion derived from a carboxylic acid, each X is a phenyl group, and p may be 1 [col 2 lines 46-61],
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where the carboxylic acid may be shown with formula [4], where R5 may be an aliphatic hydrocarbon group which may be a C1-C20 alkyl group [col 5 line 48 to col 6 line 6].
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As both Takemura and Oono teach photoacid generators in resist compositions, it would have been obvious to a person of ordinary skill in the art that using a photoacid generator as disclosed by Oono in place of or in addition to the photoacid generator of Takemura would result in a comparable and expected photosensitive resist composition.
That is, the substitution of the photoacid generator of Oono for the photoacid generator of Takemura, absent unexpected results, would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application with the predictable result of functioning as a photoacid generator in a photosensitive resist composition. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (See MPEP § 2143, B).
However, Takemura only discloses their composition for use as a positive photosensitive resin composition.
Tsubaki, analogous art, teaches a positive resist composition decreases solubility in a negative developer when exposed to irradiation, then developing with a negative developer [abstract], functioning as a negative resist composition.
As both Takemura and Tsubaki teaches positive resist compositions, it would be obvious to a person of ordinary skill in the art that the resist film of Takemura may similarly function as a negative photoresist composition when exposed then developed with a negative developer, reading on instant claim 1.
Takemura teaches their resin may further contain a tetracarboxylic acid diester unit shown by the following general formula (22), wherein W1 represents a tetravalent organic group, and R16 is more preferably group shown by the following general formula ( 23-1 ) [0034-0037],
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where Rf is a linear, branched, or cyclic alkyl group or an aromatic group having 1 to 20 carbon atoms, provided that all of or a part of the hydrogen atoms is substituted by a fluorine atom, reading on instant claims 10-12.
Takemura teaches that a cured film of their invention is excellent as a protective film for electric and electronic parts as well as an insulating protective film using the polymer as a base resin [0079], reading on instant claims 16-19.
Claims 1, 5, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Iio (US20220043348A1, published 2/20/2022) in view of Oono (US6723483B1, published 2004).
Regarding claims 1, 5, and 9,
Iio teaches a negative photosensitive resin composition comprising of an alkali-soluble resin containing at least one or more structures selected from a polyimide structure, a polyamide structure, a polybenzoxazole structure, a polyamide-imide structure, and a precursor structure thereof, a compound that generates an acid by light (photoacid generator), a crosslinking agent [abstract], and a solvent [0171], aligning with the instant components (A), (B), and (E).
Iio teaches their crosslinking agent is more preferably selected from an amino condensate modified by formaldehyde or formaldehyde-alcohol; and a phenol compound having two or more methylol groups or alkoxymethylol groups by average in one molecule [0138], aligning with the instant component (C).
Iio teaches their photoacid generator may be a sulfonium salt comprising of a triphenylsulfonium cation and a trifluoromethanesulfonate anion [0116-0117], where one of their acid generators may be used or a combination of two or more thereof may be used [0128], reading on instant claim 5.
Iio teaches their polymer may be formed from 2,2-bis(3-amino-4-hydroxyphenyl)hexafluoropropane (6FAP) and 3,3′,4,4′-oxydiphthalic dianhydride (s-ODPA) [0198], reading on instant claim 9.
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However, Iio fails to teach a compound aligning with that of instant component (D).
Oono, analogous art, teaches a sulfonium salt compound used as an acid generator and a photo polymerization initiator used in the chemically amplified resist compositions [col 1 lines 5-17], which may be a compound shown by general formula [3], where Zp- is an anion derived from a carboxylic acid, each X is a phenyl group, and p may be 1 [col 2 lines 46-61],
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where the carboxylic acid may be shown with formula [4], where R5 may be an aliphatic hydrocarbon group which may be a C1-C20 alkyl group [col 5 line 48 to col 6 line 6].
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As both Iio and Oono teach photoacid generators in resist compositions, it would have been obvious to a person of ordinary skill in the art that using a photoacid generator as disclosed by Oono in addition to the photoacid generator of Iio would result in a comparable and expected photosensitive resist composition.
That is, the substitution of the photoacid generator of Oono for the photoacid generator of Iio, absent unexpected results, would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application with the predictable result of functioning as a photoacid generator in a photosensitive resist composition, reading on instant claim 1. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (See MPEP § 2143, B).
Response to Arguments
Applicant’s arguments filed 01/16/2026 with respect to the 102 rejections in view of Urano have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant’s arguments filed 01/16/2026 with respect to the 102 and 103 rejections in view of Takemura and Iio have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Oono.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. TW201708961A teaches a thermal base generator comprising of an ammonium cation and carboxylate anion.
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 Alexander Lee whose telephone number is (571)272-2261. The examiner can normally be reached M-Th 7:30-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark 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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/A.N.L./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
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