DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim(s) 1-16, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U. S. Patent Application Publication No. 2021/0055652 (hereinafter referred to as Hatakeyama).
Hatakeyama, in the abstract, and in [0013]-[0014], discloses a resist composition that comprises an acid generator ([0036], photoacid generator) that contains a sulfonium salt, see below,
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, wherein the aryl group bonded to the sulfonium ion, includes an acid labile substitution in the claimed manner wherein the acid labile group substitution includes an ether or carbonyl or ester bond, i.e., the X3 (claimed [O-RALU]) can be an oxygen, and is bonded to R1 (claimed Rf), wherein the R1 is a single bond and may contain an ether or ester or hydroxyl moiety (see [0047]). The R2 groups can include aryl groups (hydrocarbyl groups). The aryl group, illustrated above includes other substitution such as R3 that includes fluorine or fluorinated hydrocarbyl (see [0055]), and is the same as the claimed Rf , and includes the structures, see below,
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and discloses the same claimed [O-RALU] group. Hatakeyama, in [0014], discloses that the X- is a non-nucleophilic counter ion such as a fluorinated sulfonate or a fluorinated imide or fluorinated methide ion and is the same counter ion as that recited (not polymerizable group) (claims 1-6). Hatakeyama, in [0015]-[0016], and in [0086]-0089], discloses that the base polymer in the resist composition includes the following recurring units (a1) and (a2), and is the same as the claimed repeating units, see (a1) and (a2) below,
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, wherien the R11 and R12, are acid labile groups ([0091]), and disclsoes the same repeating units (see [0086]-[0094]) (claim 7). Hatakeyama, in [0095] and [0096], discloses that the base polymer further comprises recurring units that include, see below,
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and is the same as the claimed (b1), and
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and is the same as the claimed (b2) (claim 8). Hatakeyama, in [0099]-[0103], discloses that the base polymer includes repeating units (f) that are polymer bound onium salt, see below,
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wherein Z1 can be a hydrocarbylene group or phenylene group that containg a carbonyl or ester bond, Z2 can be a single bond or carbonyl group, and Z3 is a single bond or methylene or ethylene or phenylene groups that may contain a carbonyl moiety and is the same as the claimed repeating units recited in claim 9. Hatakeyama, in [0120], discloses that the resist composition includes an organic solvent and other components such as an onium salt (see [0125]-[0128]), that includes the following structures, see below,
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wherien R101, and R102 , are hydrocarbyl groups (see [0127]) (claim 11). Hatakeyama, in [0020], and [0124], disclsoes that the resist composition includes a surfactant and an amine compound (claims 13-14). Hatakeyama, in [0021]-[0020], discloses that the resist composition is applied to a substrate to form a resist film, exposing the resist film to high energy radiation such as DUV, or EB or EUV, and developing the exposed resist film in a developer (claims 15-16).
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 1-16, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of now allowed U. S. Patent Application No. 18/095,221 (USPGPub. No. 20230259027). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11, of now allowed U. S. Patent Application No. 18/095,221 (USPGPub. No. 20230259027), discloses a resist composition that comprises a sulfonium salt of the same claimed structure wherein one of the R groups bonded to the sulfonium ion has both an acid-labile group substitution and fluorine or fluorinated hydrocarbyl group substitutions, a base polymer that has the same repeat units, and further comprise repeat units of polymer bound onium salt, quenchers, added onium salt compound, surfactant, and organic solvent, and thereby fully encompasses claims 1-16 of the instant application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daborah Chacko-Davis whose telephone number is (571) 272-1380. The examiner can normally be reached on 9:30AM-6:00PM EST Mon-Fri. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark F. Huff can be reached on (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-272-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DABORAH CHACKO-DAVIS/Primary Examiner, Art Unit 1737 January 9, 2026.