Prosecution Insights
Last updated: April 18, 2026
Application No. 18/370,555

RESIST COMPOSITION AND PATTERN FORMING PROCESS

Non-Final OA §102§103§DP
Filed
Sep 20, 2023
Examiner
WALKE, AMANDA C
Art Unit
1722
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Shin-Etsu Chemical Co. Ltd.
OA Round
1 (Non-Final)
88%
Grant Probability
Favorable
1-2
OA Rounds
2y 7m
To Grant
97%
With Interview

Examiner Intelligence

Grants 88% — above average
88%
Career Allow Rate
1488 granted / 1681 resolved
+23.5% vs TC avg
Moderate +8% lift
Without
With
+8.2%
Interview Lift
resolved cases with interview
Typical timeline
2y 7m
Avg Prosecution
52 currently pending
Career history
1733
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
51.0%
+11.0% vs TC avg
§102
23.1%
-16.9% vs TC avg
§112
15.2%
-24.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1681 resolved cases

Office Action

§102 §103 §DP
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. Claim Rejections - 35 USC § 102 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 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(s) 1 , 4-6, 9, 10, 12, and 13 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Ichikawa et al (JP 2021-035936 and its mach i ne translation) . Ichikawa et al disclose a resist composition comprising a PAG having a sulfonium cation and a sulfonate anion, wherein the cation and anion have structures meeting the limitations of the instant claims. The cation has a structure meeting the limitations of the instant formula (1) (instant claim 1) . In the formula, the instant L is a single bond, s is 1, R4 is alkyl, and at least one of p, q, r is 1, with R1-R3 being halogen in most examples (F). The polymer (instant claim 4) preferably comprises an additional unit having an acid-labile group, falling within the scope of the instant (a1), wherein RA is H or methyl, and R11 is a alkyl-cycloalkyl group as required by the instant claim 5. The resist is preferably a positive resist (instant claim 6 ), and further includes a solvent (instant claim 9), a quencher (instant claim 10), as demonstrated in examples ([0223]). The patterning process includes the steps as claimed, wherein the composition is applied, dried/pre-baked, exposed, and developed, with the light exposure performed by ArF , KrF , EUV, or electron beam ([0211], examples; instant claims 12 and 13). Claim(s) 1 and 4-13 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by LaBeaume (10,274,825) . LaBeaume disclose a resist composition comprising an acid generator having a structure falling within the scope of the instant claims. In the formula, D (instant L) is a single bond, carbonyl, CH2, ether, sulfide, sulfonyl, s is 1 and includes the instantly claimed -OR4 acid labile group, e-g (instant p-r) are 0-4 , and A-B (instant R1 to R3) is hydrogen or a substituent such as halogen (fluorine), trifluoromethyl meeting the limitations of the instant formula (1) of claim 1 (preferred substituents, column 5, line 62 to column 6, line 64, nitro, methoxy, F, CF3, aryl, -OH used in examples). The resist further comprises a polymer (instant claim 4; claim 25), wherein the polymer includes positive and negative-acting resists, wherein the resist includes an acid-labile groups, or a polar group (positive and negative [phenols], respectively; column 10, lines 29-59, column 17, lines 36-55, each equally preferred; instant claims 6-8). The positive resist includes acid-labile group-containing units includes t-butyl (meth)acrylate (formula (a1); instant claim 5). The resist further comprises a solvent, a surfactant, and a base/ quencher (see examples and column 17, line 61 to column 18, line 40 which describes the additives in the examples; instant claims 9-11). The method of the reference includes the steps of applying, drying/ pre=baking, exposing to EUV or ebeam , then developing (column 19, lines42-67, examples; instant claims12 and 13). 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. Claim (s) 1 -5 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa et al . Ichikawa et al has been discussed above. The reference teaches a salt and resist composition as discussed above, but the reference further teaches that the composition may comprise a surfactant ([0208], [0209]; instant claim 11), and an acid-labile group-containing unit of the instant formula (a2) , and have an anion meeting the limitations of the instant formulas . First, the salt may further comprise halogen or perfluoralkyl groups on any of the rings (see R4 to R6, instant R1-R3), and is not limited to the preferred examples . Therefore , the reference teaches one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare the material of the reference, choosing for the instant R1 to R3 (and in turn p to r to be each 0 to 3) to be halogen or trifluoromethyl (abstract). The anion of the reference has a structure similar to that of the instant formula (2)-1 and (2)-2 (instant claims 2 and 3). In the formula z can be 1 and R1 and R2 fluorine atoms ([0012]), and wherein X1 and L1 (instant X1 and X2, and X3 and X4, respectively) are linking groups including -COO-, -OCO-, O-CO-O-, and a single bond, alkyl group ([0012]). Examples appear below, wherein th e end group include an phenyl substituted by a halogen. While the halogen atom exemplified is F, one of ordinary skill in the art would have envisaged another from the finite group of halogens, including iodine ([0014] -[ 0018]). When the compound is as described above, wherein z 1 1 and R1 and R2 are F, and the fluorine atom on the phenyl ring is replaced by iodine, the anion meets the limitations of the instant claims 2 and 3. The acid-labile groups-containing unit may have the structure of the instant (a2), taught to be equivalent to that of (a1) above. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare the material of Ichikawa et al , choosing as the anion, that as taught by the reference wherein the end group is a phenyl group having an iodine substituent, wherein the acid-labile group-containing unit is that as that of instant formula (a2), or wherein material further comprises a surfactant as a known additive, each as taught to be known by the reference. Claim (s) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over LaBeaume in view of Ichikawa et al . Both references have been discussed above. LaBeamue teaches that suitable anions of their sulfonium cation include known anions, and preferred compounds include fluorinates sulfonic acids (column 4, line 51 to column 5, line 3) , however, the reference fails to specifically teach the claimed anion. However, as discussed above, Ichikawa et al disclose a similar sulfonium cation and fluorinated sulfonic acid anion, wherein the disclosed anions fall within the scope of the instant claims 2 and 3 (formulas (2)-1 and (2)-2). Given the teachings of the references, it would have been obvious to one of ordinary skill in the art prior t the effective filing date of the instant invention to prepare the material of LaBeaume , choosing as the fluorinate sulfonic acid anion, that taught to be known and useful with similar cations by Ichikawa et al. The resultant cation and anion would also meet the limitations of the instant claims. Double Patenting Claims 1, 4-6, 9, and 11-13 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-8 of copending Application No. 18/370578 (2024/0168382(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘578 application claims a salt consisting of a structure having the structure of the instant formula (1), used in a positive resist composition and patterning method, wherein the polymer, additives, and method a claimed also meet the limitations of the instant claims. It would have been obvious to one of ordinary skill in the art to prepare the material and perform the method of the ‘578 application, with the resultant material(s) and method also meeting the limitations of the instant claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hatakeyama et al (2020/0089111, US equivalent of KR 10-238764 as cited by applicant on a foreign search report) . Hatakeyama et al disclose a resist composition comprising a sulfonium salt, wherein exemplified compounds fall within the general formula of the instant claim 1 , with the exception of the -CO-R4 group. The reference broadly teaches similar cations and material, however, the groups having the claimed -CO-R4 groups include -COO-R groups, wherein R is aryl and not an acid labile group, as required by the instant claims wherein -O-R4A is present as R4. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT AMANDA C WALKE whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1337 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday to Thursday 5:30am to 4pm . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Niki Bakhtiari can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-3433 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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. /AMANDA C. WALKE/ Primary Examiner, Art Unit 1722
Read full office action

Prosecution Timeline

Sep 20, 2023
Application Filed
Apr 02, 2026
Non-Final Rejection — §102, §103, §DP (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12597614
HYBRID ELECTRODES FOR BATTERY CELLS AND METHODS OF PRODUCTION THEREOF
2y 5m to grant Granted Apr 07, 2026
Patent 12596306
PHOTOCHEMICAL AND THERMAL RELEASE LAYER PROCESSES AND USES IN DEVICE MANUFACTURING
2y 5m to grant Granted Apr 07, 2026
Patent 12597635
ELECTROCHEMICAL DEVICE
2y 5m to grant Granted Apr 07, 2026
Patent 12586855
Battery Module and Battery Pack Including the Same
2y 5m to grant Granted Mar 24, 2026
Patent 12584023
COMPOSITION FOR FORMING ORGANIC FILM, PATTERNING PROCESS, AND COMPOUND
2y 5m to grant Granted Mar 24, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

1-2
Expected OA Rounds
88%
Grant Probability
97%
With Interview (+8.2%)
2y 7m
Median Time to Grant
Low
PTA Risk
Based on 1681 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month