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 .
Claims 1-20 are pending.
The foreign priority application No. 10-2022-0186393 filed on December 27, 2022 has been received and it is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
The limitation “R11 and R14” in par.0009 and par.0050 should be amended to read “R11 to R14”.
Appropriate correction is required.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
The limitation “R11 and R14” in claim1 should be amended to read “R11 to R14”.
Claim 5 recites that X11 to X14 may be substituted with certain groups, including an amino group or a group of formula -N(Q1)(Q2), wherein Q1 and Q2 may be hydrogen.
However, a group of formula -N(Q1)(Q2), wherein Q1 and Q2 are hydrogen atoms is an amino group. Therefore, claim 5 recites twice an amino group.
Claims 2-4 and 6-20 are objected to as being dependent on the objected claim 1.
Appropriate correction is required.
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 1-7, 9, 11-14, 17, 18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, 15-18, and 20 of copending Application No. 18/620,240 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim the same compounds, the same photoresist composition, and the same pattern forming method.
The copending Application No. 18/620,240 claims a resist composition comprising a first organometallic compound which may be represented by the formulas:
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102
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100
252
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124
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100
254
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138
256
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132
254
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92
272
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and
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, wherein n is an integer from 1 to 4 (claims 1 and 12).
The compounds above are compounds of formulas 1-1 to 1-4 in claims 1-7 and 9 of the instant application.
The compounds above wherein n=2 are compounds in claim 11 of the instant application.
The resist composition in claims 1 and 12 of copending Application No. 18/620,240 is equivalent to the resist composition in claim 12 of the instant application.
The copending Application No. 18/620,240 further claims that the resist composition does not comprise a photoacid generator (claim 15), same as in claim 13 of the instant application.
The copending Application No. 18/620,240 further claims that the resist composition does not comprise a compound having a molecular weight of 1,000 or more (claim 16), same as in claim 14 of the instant application.
The copending Application No. 18/620,240 further claims a pattern forming method comprising: forming a resist film by applying the resist composition onto a substrate, exposing at least a portion of the resist film to high-energy rays to provide an exposed resist film, developing the exposed resist film using a developer (claim 17), same as in claim 17 of the instant application.
The copending Application No. 18/620,240 further claims that the exposing at least a portion of resist film is performed by irradiating the resist film using at least one of deep ultraviolet (DUV) rays, extreme ultraviolet (EUV) rays, or electron beams (EBs)(claim 18), same as in claim 18 of the instant application.
The copending Application No. 18/620,240 further claims that the exposed film includes an exposed portion and a non-exposed portion, and in the developing step the non-exposed portion is removed (claim 20), same as in claim 20 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7, 9, 11-14, 17, 18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 15-18, and 20 of copending Application No. 18/635,761 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim the same compounds, the same photoresist composition, and the same pattern forming method.
The copending Application No. 18/635,761 claims a resist composition comprising a first organometallic compound which may be represented by the formulas:
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102
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100
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124
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100
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138
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132
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92
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and
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, wherein n is an integer from 1 to 4 (claims 1 and 7).
The compounds above are compounds of formulas 1-1 to 1-4 in claims 1-7 and 9 of the instant application.
The compounds above wherein n=2 are compounds in claim 11 of the instant application.
The resist composition in claims 1 and 7 of the copending Application No. 18/635,761 is equivalent to the resist composition in claim 12 of the instant application.
The copending Application No. 18/635,761 further claims that the resist composition does not comprise a photoacid generator (claim 15), same as in claim 13 of the instant application.
The copending Application No. 18/635,761 further claims that the resist composition does not comprise a compound having a molecular weight of 1,000 or more (claim 16), same as in claim 14 of the instant application.
The copending Application No. 18/635,761 further claims a pattern forming method comprising: forming a resist film by applying the resist composition onto a substrate, exposing at least a portion of the resist film to high-energy rays to provide an exposed resist film, developing the exposed resist film using a developer (claim 17), same as in claim 17 of the instant application,
The copending Application No. 18/635,761 further claims that the exposing at least a portion of resist film is performed by irradiating the resist film using at least one of deep ultraviolet (DUV) rays, extreme ultraviolet (EUV) rays, or electron beams (EBs)(claim 18), same as in claim 18 of the instant application.
The copending Application No. 18/635,761 further claims that the exposed film includes an exposed portion and a non-exposed portion, and in the developing step the non-exposed portion is removed (claim 20), same as in claim 20 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7, 9, 11-15, 17, 18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 12, 16-18, and 20 of copending Application No. 18/921,412 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim the same compounds, the same photoresist composition, and the same pattern forming method.
The copending Application No. 18/921,412 claims a resist composition comprising a first organometallic compound which may be represented by the formulas:
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102
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100
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124
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100
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138
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132
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92
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and
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, wherein n is an integer from 1 to 4 (claims 1 and 5).
The resist composition further comprises a solvent comprising an aprotic polar solvent (claims 1 and 12).
The compounds above are compounds of formulas 1-1 to 1-4 in claims 1-7 and 9 of the instant application.
The compounds above wherein n=2 are compounds in claim 11 of the instant application.
The resist composition in claims 1, 6, and 12 of the copending Application No. 18/921,412 is equivalent to the resist composition in claims 12, 14, and 15 of the instant application.
The copending Application No. 18/921,412 further claims that the resist composition does not comprise a photoacid generator (claim 16), same as in claim 13 of the instant application.
The copending Application No. 18/921,412 further claims a pattern forming method comprising: forming a resist film by applying the resist composition onto a substrate, exposing at least a portion of the resist film to high-energy rays to provide an exposed resist film, developing the exposed resist film using a developer (claim 17), same as in claim 17 of the instant application,
The copending Application No. 18/921,412 further claims that the exposing at least a portion of resist film is performed by irradiating the resist film using at least one of deep ultraviolet (DUV) rays, extreme ultraviolet (EUV) rays, or electron beams (EBs)(claim 18), same as in claim 18 of the instant application.
The copending Application No. 18/921,412 further claims that the exposed film includes an exposed portion and a non-exposed portion, and in the developing step the non-exposed portion is removed (claim 20), same as in claim 20 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraph of 35 U.S.C. 102 that forms 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.
Claims 1 and 3-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Toida et al. (EP 3 451 059 A1).
With regard to claim 1, Toida et al. teach the compound of formula:
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(par.0167), which is an organometallic compound of formula 1-3 in claim 1, wherein M11 is tellurium (Te), a11-a14=1, L11-L14 are single bonds, R11-R14 are unsubstituted C6 aryl groups, n11-n14=1, and X11-X14 are hydroxyl groups.
Toida et al. also teach the compound of formula:
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(par.0167), which is an organometallic compound of formula 1-3 in claim 1, wherein M11 is tellurium (Te), a11-a14=1, L11-L14 are single bonds, R11-R14 are unsubstituted C6 aryl groups, n11-n14=2, a substituent X11-X14 is a hydroxyl group, and the other substituent X11-X14 is a monovalent C6 hydrocarbon group.
With regard to claims 3 and 4, the compounds above meet the limitations for a compound of formula 1-3 wherein L11-L14 are single bonds and R11-R14 are unsubstituted C6 aryl groups.
With regard to claim 5, the first compound above meets the limitations for a compound of formula 1-3 wherein X11-X14 are hydroxyl groups.
With regard to claims 6 and 7, the first compound above meets the limitations for a compound of formula 1-3 wherein *-R11-(X11)n11 is represented by the formula 2-3, *-R12-(X12)n12 is represented by the formula 2-23, *-R13-(X13)n13 is represented by the formula 2-43, and *-R14-(X14)n14 is represented by the formula 2-63, X11c-X14c are hydroxyl groups.
With regard to claim 8, the first compound above meets the limitations for a compound of formula 1-3 wherein the sum of n11, n12, n13, and n14 is 4.
Claims 1-3, 5, 8-10, 12-15, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Soo et al. (KR 20210128796A, with attached machine translation).
With regard to claim 1, Soo et al. teach the compound (12):
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(par.0162), which is a compound of formula 1-4 in claim 1 wherein M11 is tin (Sn), a11=1, L11 is a single bond, R11 is an unsubstituted C6 aryl group, n15=1, X11 is a halogen, Y11-Y13 are O, and R15-R17 are C3 hydrocarbon groups which may comprise a heteroatom.
With regard to claims 2, 3, and 5, the compound (12) meets the limitations for a compound of formula 1-4 wherein M11 is tin (Sn), L11 is a single bond, and X11 is a halogen.
With regard to claim 8, the compound (12) meets the limitations for a compound of formula 1-4 wherein n15=1.
With regard to claim 9, the compound (12) meets the limitations for a compound of formula 1-4 wherein Y11-Y13 are O.
With regard to claim 10, the compound (12) meets the limitations for a compound of formula 1-4 wherein R15-R17 are represented by *-(L15)a15-X15, L15 is C=O, a15=1, and X15 is a linear unsubstituted C2 hydrocarbon.
With regard to claims 12-15, Soo et al. teach a photoresist composition comprising the compound (12) and propylene glycol monomethyl ether acetate (PGMEA) solvent (Example 3 in par.0181).
The photoresist composition above does not comprise a photoacid generator or a compound with a molecular weight of 1000 or more, as required in claims 13 and 14.
With regard to claims 17,18, and 20, Soo et al. teach a process comprising the steps of:
-coating the photoresist composition onto a substrate and baking to form a photoresist film (par.0182);
-exposing the photoresist composition with EUV (par.0188); and
-developing to remove the unexposed portions of the photoresist (par.0189).
With regard to claim 19, the photoresist composition in claim 17 comprises a compound (12), which is a compound of formula 1-4 wherein M11 is tin (Sn), a11=1, L11 is a single bond, R11 is an unsubstituted C6 aryl group, n15=1, X11 is a halogen, Y11-Y13 are O, and R15-R17 are C3 hydrocarbon groups which may comprise a heteroatom in par.0008-0009 the instant application
The specification of the instant application teaches that a chemical bond is formed between organometallic compounds by exposing the photoresist film to EUV radiation (par.0086, par.0122, par.0128-0130).
Absent a record to the contrary, it is expected that the molecules of compound (12) of Soo et al. form chemical bonds between each other during exposure with EUV radiation.
"[T]he 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.I. SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY).
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dolle et al. (US Patent 3,313,731).
With regard to claim 1, Dolle et al. teach tetra(pentafluorophenyl) tin (column 4, line 32). This is a compound of formula:
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566
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, and it is a compound of formula 1-3, wherein M11 is tin (Sn), a11-a14=1, L11-L14 are single bonds, R11-R14 are unsubstituted C6 aryl groups, n11-n14 are 5, and X11-X14 are halogen atoms.
With regard to claims 2-5, tetra(pentafluorophenyl) tin meets the limitations for a compound of formula 1-3 wherein M11 is Sn, L11-L14 are single bonds, R11 to R14 are unsubstituted C6 aryl groups, and X11-X14 are halogen atoms.
With regard to claim 6, tetra(pentafluorophenyl) tin meets the limitations for a compound of formula 1-3 wherein*-R11-(X11)n11 is a group of formula 2-18, *-R12-(X12)n12 is represented by the formula 2-28, *-R13-(X13)n13 is represented by the formula 2-58, *-R14-(X14)n14 is represented by the formula 2-78, wherein X11a-X11e, X12a-X12e, X13a-X13e, X14a-X14e are halogen atoms.
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Soo et al. (KR 20210128796A, with attached machine translation).
With regard to claim 16, Soo et al. teach the photoresist of claim 15 (see paragraph 12 above).
The photoresist in Example 3 does not comprise a polar aprotic solvent.
However, Soo et al. teach that propylene glycol monomethyl ether acetate (PGMEA) is functionally equivalent to tetrahydrofuran and ethyl acetate (par.0097).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use tetrahydrofuran or ethyl acetate as the organic solvent in the photoresist composition of Example 3 of Soo et al.
Tetrahydrofuran and ethyl acetate are aprotic polar solvents.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Woo et al. (US 2021/0311387) teach a photoresist composition including an organometallic compound which may be represented by the formulas:
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(par.0044), wherein R may be a substituted C3-8 cycloalkyl, or a substituted C6-20 aryl group (par.0038) and the substituent may be deuterium, halogen, a hydroxy group, a cyano group, a nitro group, -NRR’(par.0058).
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/ANCA EOFF/ Primary Examiner, Art Unit 1722