DETAILED ACTION
Table of Contents
I. Notice of Pre-AIA or AIA Status 3
II. Continued Examination Under 37 CFR 1.114 3
III. Claim Rejections - 35 USC § 112 3
A. Claim 1-5 and 7-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. 3
IV. Claim Rejections - 35 USC § 103 4
A. Claims 1-5, 7, 8, 14-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2022/075144, as evidenced by US 2023/0242787 (“Takanashi”). 4
B. Claims 9-13, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Takanashi in view of US 2021/0246555 (“Burgess”). 13
V. Response to Arguments 15
Conclusion 15
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I. 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 .
II. Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 06/30/2026 has been entered.
III. 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.
A. Claim 1-5 and 7-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “the applied composition” in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-5 and 7-15 are rejected for including the same indefinite feature by depending from claim 1 either directly or indirectly.
IV. 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 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 of this title, 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.
A. Claims 1-5, 7, 8, 14-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2022/075144, as evidenced by US 2023/0242787 (“Takanashi”).
US 2023/0242787 in the patent family of WO 2022/075144 and is used as a translation. As such, all citations in the rejections are to the US publication, unless otherwise indicated.
With regard to claim 1, Takanashi discloses,
1. (Currently Amended) A wafer edge protection film forming method for forming a protection film on a peripheral edge of a substrate [¶¶ 112-113, 129], comprising the steps of:
(i) coating a peripheral edge of the substrate with a composition for forming a protection film [¶¶ 112-113, 122, 129] comprising an aromatic ring-containing resin (A) having at least one of the constituent units represented by the following general formulae (A-1), (A-2), (A-3), (A-4), and (A-5) [¶¶ 147-152], and a solvent [¶¶ 159-167] [also ¶¶ 171-177; Table 1 on p. 10 and Table 2 on p. 11]; and
(ii) curing the applied composition for forming a protection film by heat or optical irradiation to form the protection film on the peripheral edge of the substrate [¶¶ 131, 134],
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wherein
R1 represents a saturated monovalent organic group having 1 to 30 carbon atoms or an unsaturated monovalent organic group having 2 to 30 carbon atoms;
X is a divalent organic group having 1 to 30 carbon atoms; and
Ra represents a hydrogen atom or the organic group represented by the general formula (2), and
satisfies a relationship e + f = 1 and 0.1 ≤ f ≤ 0.9, wherein "e" represents the proportion of the hydrogen atom and "f" represents the proportion of the organic group represented by the general formula (2) among the structures constituting Ra;
p is an integer of 0 to 5;
q1 is an integer of 1 to 6;
p + q1 is an integer of 1 or more and 6 or less; and
q2 is 0;
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* represents a site bonded with the oxygen atom,
RB represents a divalent organic group having 1 to 10 carbon atoms, and
RA represents a hydrogen atom or a monovalent organic group having 1 to 10 carbon atoms.
Takanashi discloses the following resin formula (A-1) which reads on claimed formula (A-5), as follows:
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R1 represents a saturated monovalent organic group having 1 carbon atom [i.e. a methyl group – CH3];
X is a divalent organic group having 1 to 30 carbon atoms [i.e. a methylene group -CH2-]; and
Ra represents a hydrogen atom or the organic group represented by the general formula (2) [some -H and some a propargyl group (see explanation below)], and
satisfies a relationship e + f = 1 and 0.1 ≤ f ≤ 0.9, wherein "e" represents the proportion of the hydrogen atom and "f" represents the proportion of the organic group represented by the general formula (2) among the structures constituting Ra;
p is an integer of 0 to 5 [i.e. 1];
q1 is an integer of 1 to 6 [i.e. 1];
p + q1 is an integer of 1 or more and 6 or less [i.e. 2]; and
q2 is 0;
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* represents a site bonded with the oxygen atom,
RB represents a divalent organic group having 1 to 10 carbon atoms [i.e. a methylene group -CH2-], and
RA represents a hydrogen atom.
As for the portion f of claimed formula (A-5) having an organic group of claimed formula (2), claimed formula (2) is met by the propargyl group shown on page 9 of Takanashi:
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Formula (A-1) of Takanashi does not show any of the phenolic hydroxy group includes some replaced with propargyl groups, but explains that this can be made so. In this regard, Takanashi states,
(Novolac Resin)
[0035] The novolac resin is a resin obtained by reacting a phenolic compound and an aldehyde or a divinyl compound using an acidic catalyst. Two or more phenolic compounds and an aldehyde or a divinyl compound may be reacted by mixing them.
[0036] Examples of the phenolic compound include: phenols such as phenol, cresol, xylenol, resorcinol, bisphenol A, p-tert-butylphenol, p-octylphenol, 9,9-bis(4-hydroxyphenyl)fluorene, and 9,9-bis(3-hydroxyphenyl)fluorene; naphthols such as α-naphthol, β-naphthol, 1,5-dihydroxynaphthalene, 2,7-dihydroxynaphthalene, and 9,9-bis(6-hydroxynaphthyl)fluorene; anthrols such as 9-anthrol; and pyrenols such as 1-hydroxypyrene and 2-hydroxypyrene.
[0037] Examples of the aldehyde include: aldehydes such as formaldehyde, benzaldehyde, 1-naphthaldehyde, 2-naphthaldehyde, and 1-formylpyrene; and aldehyde sources such as paraformaldehyde and trioxane.
[0039] Examples of the novolac resin include a resin having structural units derived from dihydroxynaphthalene and formaldehyde [i.e. formula (A-2) shown on p. 9], a resin having structural units derived from fluorenebisphenol and formaldehyde [i.e. formula (A-3) on p. 9 (supra)], a resin having structural units derived from fluorenebisnaphthol and formaldehyde, a resin having structural units derived from hydroxypyrene and formaldehyde, a resin having structural units derived from a phenolic compound and formylpyrene, and a resin obtained by substituting some or all of hydrogen atoms in phenolic hydroxy groups of such a resin with propargyl groups or the like.
(Takanashi: ¶¶ 35-37 and 39; emphasis added)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute some of the phenolic hydroxyl hydrogens of formula (A-5) of Takanashi, above, with propargyl groups because Takanashi suggests this option (at ¶ 39, supra).
As for the claimed ratio required in claim 1, i.e.,
e + f=1 and 0.1 ≤ f ≤ 0.9, wherein “e” represents the proportion of the hydrogen atom and “f” represents the proportion of the organic group [i.e. propargyl in Takanashi] represented by the general formula (2) among the structures constituting Ra;
The claimed ranges “0.1 ≤ f ≤ 0.9” overlap the range of “some or all” of the hydroxyls replaced with propargyl groups. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); MPEP 2144.05(I)). In such a situation, Applicant must show that the particular ranges are critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). (See MPEP 2144.05(III)(A); emphasis added.)
This is all of the limitations of claim 1.
Claims 2 and 3 read,
2. (Original) The wafer edge protection film forming method according to claim 1, wherein the resin (A) further comprises a hydroxyl group, and the ratio of the number of the hydroxyl groups to the number of the organic groups represented by the general formula (1) satisfies a relationship a + b = 1 and 0.1 ≤ b ≤ 0.9 wherein “a” represents the proportion of the hydroxyl group and “b” represents the proportion of the organic group represented by the general formula (1).
3. (Original) The wafer edge protection film forming method according to claim 1, wherein the resin (A) is an aromatic ring-containing resin having a hydroxyl group and an organic group represented by the following general formula (1 Å), and the ratio of the number of the hydroxyl groups to the number of the organic groups represented by the general formula (1A) satisfies a relationship c + d = 1 and 0.1 ≤ c ≤ 0.9 wherein “c” represents the proportion of the hydroxyl group and “d” represents the proportion of the organic group represented by the general formula (1A).
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wherein * represents a bonding site.
That portion of, i.e. “some”, the phenolic hydroxy hydrogens in Formula (A-1) of Takanashi (¶ 39, supra) replaced with propargyl groups, as explained under claim 1, above, reads on formula (1A) of claim 3 and includes both hydroxyl groups and propargyl groups, as required by claims 2 and 3. When some of the hydroxyl groups are replaced with propargyl groups, then both of the claimed “a” and “b” proportions (claim 2) and “c” and “d” proportions (claim 3) are present in formula (A-4). Therefore, the claimed ranges “0.1 ≤ b ≤ 0.9” and the claimed “0.1 ≤ c ≤ 0.9” overlap the range of “some or all” of the hydroxyls replaced with propargyl groups.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); MPEP 2144.05(I)). In such a situation, Applicant must show that the particular ranges are critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). (See MPEP 2144.05(III)(A); emphasis added.)
This is all of the limitations of claims 2 and 3.
Claim 4 reads,
4. (Original) The wafer edge protection film forming method according to claim 1, wherein the resin (A) is a compound having a ratio Mw/Mn (i.e., dispersity) in a range of 1.00 ≤ Mw/Mn ≤ 1.25, the Mw/Mn being a ratio of the weight average molecular weight Mw to the number average molecular weight Mn on polystyrene basis according to gel permeation chromatography.
Although Takanashi only gives the weight average molecular weight Mw and does not give number average molecular weight Mn, given the process of synthesis explained in paragraph [0158] (supra), it is held, absent evidence to the contrary that the ratio falls within the claimed dispersity range. As such, the burden of proof is shifted to Applicant to prove the contrary. (See MPEP 2112(I)-(V).)
With regard to claim 5, Takanashi further discloses,
5. (Original) The wafer edge protection film forming method according to claim 1, wherein the resin (A) is a polymer having a weight average molecular weight on polystyrene basis according to gel permeation chromatography of 1,000 to 12,000.
Takanashi states that the more preferred molecular weight Mw is between 5,000 and 30,000, which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); MPEP 2144.05(I)). In such a situation, Applicant must show that the particular ranges are critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). (See MPEP 2144.05(III)(A); emphasis added.)
With regard to claim 7, Takanashi further discloses,
7. (Original) The wafer edge protection film forming method according to claim 1, wherein the content of the resin (A) in the composition for forming a protection film is 10% by mass or more.
An example of 10% by mass for formula A-4 is given in Table 1 on page 10 of Takanashi.
With regard to claim 8, Takanashi further discloses,
8. (Original) The wafer edge protection film forming method according to claim 1, wherein the composition for forming a protection film further comprises one or more of a crosslinking agent, a high boiling point solvent, a surfactant [¶¶ 168-169], an acid generator, and a plasticizer.
With regard to claim 14, Takanashi further discloses,
14. (Original) The wafer edge protection film forming method according to claim 1, wherein, in the step (ii), the applied composition for forming a protection film is cured by heat treatment at a temperature of 100° C. or more and 800° C. or less for 10 seconds to 7,200 seconds [¶¶ 118-119, 174].
With regard to claim 15, Takanashi further discloses,
15. (Original) The wafer edge protection film forming method according to claim 2, wherein, in the step (ii), the applied composition for forming a protection film is cured by heat treatment at a temperature of 100° C. or more and 800° C. or less for 10 seconds to 7,200 seconds [¶ 174].
With regard to claims 16 and 17, Takanashi further discloses,
16. (Currently Amended) A patterning process for forming a protection film on a peripheral edge of a substrate to be processed on which a film with a pattern is formed, and forming a pattern on the substrate to be processed [“Method for Producing Patterned Substrate” title heading before ¶ 121], the patterning process comprising the steps of:
(I-1) applying a composition for forming a protection film comprising an aromatic ring-containing resin (A) having at least one of the constituent units represented by the following general formulae (A-1), (A-2), (A-3), (A-4), and (A-5), and a solvent to a peripheral edge of a substrate to be processed on which a film with a pattern is formed [¶ 122; see also the discussion under claims 1-3, above, as to the composition];
(I-2) curing the applied composition for forming a protection film by a heat treatment [¶¶ 118-119, 174] or optical irradiation to form a protection film on the peripheral edge of the substrate;
(I-3) forming a pattern on the substrate to be processed by dry etching while using the film with a pattern as a mask [¶¶ 123-124, 142-143]; and
(I-4) removing the protection film,
…[repeats limitations from claim 1 directed to formulae (A-1) through (A-5)].
17. (Currently Amended) A patterning process for forming a protection film on a peripheral edge of a substrate to be processed, and forming a pattern on the substrate to be processed [“Method for Producing Patterned Substrate” title heading before ¶ 121], the patterning process comprising the steps of:
(II-1) applying a composition for forming a protection film comprising an aromatic ring-containing resin (A) having at least one of the constituent units represented by the following general formulae (A-1), (A-2), (A-3), (A-4), and (A-5), and a solvent to a peripheral edge of a substrate to be processed [¶ 122; see also the discussion under claims 1-3, above, as to the composition];
(II-2) curing the applied composition for forming a protection film by a heat treatment [¶¶ 118-119, 174] or optical irradiation to form a protection film on the peripheral edge of the substrate to be processed;
(II-3) forming a resist upper layer film pattern on the substrate to be processed and forming a pattern on the substrate to be processed by dry etching while using the resist upper layer film pattern as a mask [¶¶ 123-124, 142-143]; and
(II-4) removing the protection film, …
…[repeats limitations from claim 1 directed to formulae (A-1) through (A-5)].
For each of claims 16 and 17, see claim 1 as to the limitations of claimed formula (A-5).
Takanashi does not explicitly state that the protection film is removed, as required by each of claims 16 and 17.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to remove the protective coating because the process of using the protective film has served its purpose in the substrate patterning process and is subsequently no longer needed.
This is all of the limitations of claims 16 and 17.
With regard to claim 20, Takanashi discloses,
20. (Currently Amended) A composition for forming a protection film to be used for forming a protection film on a peripheral edge of a substrate, comprising:
an aromatic ring-containing resin (A) having at least one of the constituent units represented by the following general formulae (A-1), (A-2), (A-3), (A-4), and (A-5), and
a solvent, …
…[repeats limitations from claim 1 directed to formulae (A-1) through (A-5)].
See discussion under claim 1.
B. Claims 9-13, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Takanashi in view of US 2021/0246555 (“Burgess”).
Claims 9-11 read,
9. (Original) The wafer edge protection film forming method according to claim 1, wherein, in the step (i), in addition to the peripheral edge on the surface side of the substrate, the composition for forming a protection film is applied also to the peripheral edge on the backside of the substrate, thereby forming the protection film also on the peripheral edge on the backside of the substrate in the step (ii).
10. (Original) The wafer edge protection film forming method according to claim 2, wherein, in the step (i), in addition to the peripheral edge on the surface side of the substrate, the composition for forming a protection film is applied also to the peripheral edge on the backside of the substrate, thereby forming the protection film also on the peripheral edge on the backside of the substrate in the step (ii).
11. (Original) The wafer edge protection film forming method according to claim 3, wherein, in the step (i), in addition to the peripheral edge on the surface side of the substrate, the composition for forming a protection film is applied also to the peripheral edge on the backside of the substrate, thereby forming the protection film also on the peripheral edge on the backside of the substrate in the step (ii).
12. (Original) The wafer edge protection film forming method according to claim 1, wherein the coating in the step (i) is performed using a spin coating method, and the protection film is not formed on areas other than the peripheral edge on the surface side of the substrate and the peripheral edge on the backside of the substrate.
13. (Original) The wafer edge protection film forming method according to claim 2, wherein the coating in the step (i) is performed using a spin coating method, and the protection film is not formed on areas other than the peripheral edge on the surface side of the substrate and the peripheral edge on the backside of the substrate.
18. (Original) The patterning process according to claim 16, wherein, in the step (I-1) or (II-1), in addition to the peripheral edge on the surface side of the substrate, the composition for forming a protection film is applied also to a peripheral edge on the backside of the substrate, thereby forming the protection film also on the peripheral edge on the backside of the substrate in the step (I-2) or (II-2).
19. (Original) The patterning process according to claim 17, wherein, in the step (I-1) or (II-1), in addition to the peripheral edge on the surface side of the substrate, the composition for forming a protection film is applied also to a peripheral edge on the backside of the substrate, thereby forming the protection film also on the peripheral edge on the backside of the substrate in the step (I-2) or (II-2).
The prior art of Takanashi, as explained above, teaches each of the features of claims 1-3, 16, and 17.
While Takanashi teaches that only the peripheral edge is coated with the protective coating (Takanashi: abstract, ¶¶ 5-7, 9, 14, 16, 24-25, 113, 117, 122, 129), Takanashi does not distinguish between the frontside and backside peripheral edges.
Burgess, like Takanashi, applies a protective coating 142 to the peripheral edge 140a of a wafer 140 for edge protection during etching (Burgess: ¶ 44; Fig. 4). Burgess further shows that the coated peripheral edge includes the frontside and backside peripheral edge 140a of the wafer 140.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the protective coating in Takanashi to the frontside and backside peripheral edge of the wafer, as taught in Burgess because Takanashi is merely silent as to the metes and bounds of the peripheral edge such that one having ordinary skill in the art would use known extents of protective coatings suitable for the same purpose as in Takanashi of wafer edge protection during etching, such as the known extents in Burgess.
This is all of the limitations of claims 9-13, 18, and 19.
V. Response to Arguments
Applicant's arguments filed 06/30/2026 have been fully considered but they are not persuasive.
While Examiner agrees that the amendment to each of claims 1, 16, 17, and 20 to limit the substituent group, V, to hydrogen, thereby excluding V being a bond connecting monomers of the resin, prevents the formula (A-3) of Takanashi from being applicable to claimed formula (A-1) (Remarks: p. 19), this is not dispositive because formula (A-1) of Takanashi is applicable to claimed formula (A-5) for the reasons explained above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIK KIELIN whose telephone number is (571)272-1693. The examiner can normally be reached Mon-Fri: 10:00 AM-7:00 PM.
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Signed,
/ERIK KIELIN/
Primary Examiner, Art Unit 2814
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