DETAILED CORRESPONDENCE
This Office action is in response to the RCE received September 18, 2026.
Bolded text is new to the office action.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, and 6-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The additive compound formula does not comport with the desired additive (surfactant) wherein if n and m = 0. The simplest compound would be propanol, which is not a surfactant, which is the intended additive to achieve the properties as amended in claim 1.
Correction is necessary to provide consistency between the additive formula and the intended surfactants.
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.
(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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-4, and 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of SCHELER et al (5,306,595), WU et al (2015/0293449) and KAWATA et al (6,013,407) in view of NISHI et al (5,759,736).
The claimed invention now recites the following:
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SCHELER et al report a positive photosensitive resin composition comprising an alkali-soluble resin, a photoacid, a sensitizer and a surfactant.
Examples found in col. 7, lines 17-50 disclose the resin to be a cresol/xylenol novolak formulated with tetrahydroxy benzophenone esterified with 1,2-naphthoquinone 2-diazide sulfonic acid. Applicants are directed to col. 5, lines 18-23 for suitable non-ionic surfactants to include polyethylene glycol-mono-nonyl phenyl ether and mono-octyl phenyl ether.
SCHELER et al lacks the claimed surfactant in a working example.
WU et al disclose a photosensitive composition comprising a quinone diazide sulfonic acid ester, a sensitizer in para. [0170] to [0176] and can further include surfactants, [0169].
Applicants are directed to page 9, para. [0173] which discloses a polynuclear branched compound as a sensitizer which meets the claimed sensitizer in claim 7, see below:
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WU et al lacks the specific surfactant as recited in claim 1.
KAWATA et al disclose a positive resist composition comprising a quinone diazide sulfonate compound, an alkali-soluble phenolic resin and additional phenolic compounds (sensitizer) in col. 9, line 29- col. 10, line 6. These phenolic compounds are equivalent to those disclosed in WU et al such as the triphenols highlighted below:
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The surfactant is reported col. 11, lines 16-36 such as polyoxyethylene lauryl ether and polyoxyethylene stearyl ether meet Formula (C-1) shown below:
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NISHI et al is cited to disclose surfactants formulated in photoresist compositions comprising quinone diazide photosensitizers which are coated at 1.07 µm, see col. 10, lines 3-4. The amounts of the surfactant are disclosed to be added preferably in an amount of at most 1000 ppm meeting the range in claim 1, see col. 7, lines 18-27 below:
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Claims 2-4 and 10 are met by the disclosure in KAWATA et al in col. 5, line 54 for the quinone diazide content in the composition. The alkali-soluble resin content is reported in Table 1, Example 3 for the ratio of the resin to the quinone diazide. The solvent content is reported in page 13, Table 2 of WU et al.
Claim 6 is met by KAWATA et al in col. 10, lines 54-55 for PGMEA.
Claim 7 is met by WU et al as disclosed above on page 5, line 7 of the office action.
Claim 8 is met by WU et al on page 9, para. [0177] for the amount of sensitizer in the composition at preferably 10 to 35 parts by weight of the resin, which meets the claimed 1 to 20 parts by weight of the100 parts by weight of the resin.
Claim 9 is met by KAWATA et al wherein the surfactants can be contained in one or more in the composition so two non-ionic surfactants meet this claim, see col.11, lines 12-15.
Claim 11 and 12 are met by Example 1, col. 15, lines 56- col. 16, line 17 in KAWATA et al wherein the photoresist is coated on a substrate (silicon wafer).
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition having composition such as disclosed in SCHELER et al or KAWATA et al comprising a quinone diazide photosensitive compound, a phenolic resin, a sensitizer, wherein a sensitizer as reported in WU et al is used in the composition and the surfactants as reported in KAWATA et al and NISHI et al in a range of up to 1000 ppm in a composition for photoresist pattern formation with the reasonable expectation of same or similar results for a resist composition which is excellent in sensitivity, film loss, resolution, thermal stability and storage stability.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
LIU et al (5,075,194) disclose quinone diazide photoresist coated at 1 µm (Example 3, col. 6, line 9-10) and can contain surfactants in an amount of 10 to 1000 ppm added to the photoresist composition, see col. 5-, lines 13-15 below:
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S. CHU whose telephone number is (571)272-1329. The examiner can normally be reached on M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached at telephone number (571)272-1329. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
September 26, 2026
