Prosecution Insights
Last updated: October 23, 2026
Application No. 18/370,555

RESIST COMPOSITION AND PATTERN FORMING PROCESS

Final Rejection §103
Filed
Sep 20, 2023
Priority
Oct 07, 2022 — JP 2022-162350
Examiner
WALKE, AMANDA C
Art Unit
1722
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Shin-Etsu Chemical Co., Ltd.
OA Round
2 (Final)
88%
Grant Probability
Favorable
3-4
OA Rounds
0m
Est. Remaining
97%
With Interview

Examiner Intelligence

Grants 88% — above average
88%
Career Allowance Rate
1534 granted / 1734 resolved
+23.5% vs TC avg
Moderate +9% lift
Without
With
+8.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 5m
Avg Prosecution
45 currently pending
Career history
1771
Total Applications
across all art units

Statute-Specific Performance

§101
1.7%
-38.3% vs TC avg
§103
51.4%
+11.4% vs TC avg
§102
22.4%
-17.6% vs TC avg
§112
14.3%
-25.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1734 resolved cases

Office Action

§103
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 § 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, 4-6 and 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa et al (JP 2021-035936 and its machine 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). PNG media_image1.png 120 374 media_image1.png Greyscale PNG media_image2.png 150 396 media_image2.png Greyscale 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. PNG media_image3.png 142 470 media_image3.png Greyscale 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). 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). PNG media_image4.png 84 260 media_image4.png Greyscale 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 the 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]). PNG media_image5.png 98 320 media_image5.png Greyscale When the compound is as described above, wherein z 1 1 and R1 and R2 are F, and the fluorine atom on phenyl ring is replaced by iodine, the anion meets the limitations of the instant claim 1. Regarding newly added claim 14, the aryl ring may have any of the five positions substituted, therefore one of ordinary skill in the art would have envisaged 1 to 5 substituents. The acid-labile groups-containing unit may have the structure of the instant (a2), taught to be equivalent to that of (a1) above. PNG media_image6.png 132 176 media_image6.png Greyscale PNG media_image7.png 110 252 media_image7.png Greyscale 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) 1 and 4-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over LaBeaume (10,274,825) in view of Ichikawa et al. LaBeaume disclose a resist composition comprising an acid generator having a structure falling within the scope of the instant claims. PNG media_image8.png 258 260 media_image8.png Greyscale PNG media_image9.png 122 222 media_image9.png Greyscale PNG media_image10.png 142 186 media_image10.png Greyscale PNG media_image11.png 140 206 media_image11.png Greyscale PNG media_image12.png 168 208 media_image12.png Greyscale 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). PNG media_image13.png 268 402 media_image13.png Greyscale 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). 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 1 and 14 (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 to 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. Response to Arguments Applicant's arguments filed 9/4/2026 have been fully considered but they are not persuasive. Applicant has amended claim 1 to incorporate the limitations of claims 2 and 3, now cancelled. The amendments overcomes the 102 rejections over Ichikawa and LeBeaume. Each reference rejected claims 2 and 3 under 103, and the 102 rejections have been withdrawn, and 103 rejections reformulated in response to the claim amendments. Applicant has argued that the Ichikawa reference (which is relied upon is all art rejections as it is included in the 103 over LeBeaume) fails to fairly teach or suggest the claimed salt comprising an anion having an aryl ring with at least one iodine atom, and a cation having the structure as set forth by the instant formula (1). Applicant has argued that the instant specification teaches that the inclusion of an iodine atom having a large absorption of EUV light on the anion increases the absorption of the photoacid generator and the degradation efficiency in exposure (response, paragraph spanning pages 9 to page 10), which applicant argues improves LWR and CDU. Applicant specifically notes that the office relies on Ichikawa as teaching a cation falling within the scope of the instant claims, and an anion wherein the phenyl ring includes a halogen atom, which may be iodine. Specific examples of the anion have a basic structure meeting the limitations of the instant formulas (2)-1 and (2)-2, including specific examples of (2)-1, wherein the ring includes halogen substitution, wherein the halogen in those examples in fluorine. As set forth above, the ring may ben substituted by a halogen atom, wherein a finite group of possible halogen atoms includes fluorine and iodine. One of ordinary skill the art would have envisaged using any halogen, not only fluorine. While the reference more preferably includes fluorine, the reference is not limited to its most preferred teachings and only to its examples, therefore applicant’s arguments that the reference prefers fluorine is not persuasive (response, page 10 to page 11). Additionally, applicant argues that the reference fails to recognize the benefit of iodine over fluorine, but again, halogens include F, Br, Cl, and I, which is a small group, and by the reference teaching the ring may have a halogen substituent, one of skill in the art would have envisaged using any halogen including iodine (response, page 11, last paragraph). Applicant has further argued in the paragraph that the reference fails to recognize the specific benefit for including iodine over other halogen atoms (increased absorption of EUV light that improves degradation efficiency, absorption contrast, and LWR and CDU improvement), however, the reference does not need to have the same motivation as applicant for adding a compound to a composition or modifying a compound, and the fact the reference does not aim to solve the same problem and achieve the same benefits as applicant does not overcome a rejection. Applicant further argues that LaBeaume in view of Ichikawa also fails to fairly teach the claimed salt, and argues that Ichikawa fails to cure the deficiency of LaBeaume regarding the PAG anion structure (response, page 13, paragraph 2). Arguments to the combination of references are to the teachings of Ichikawa which have been discussed at length above to the rejection over Ichikawa alone, and the Labeaume in view of Ichikawa rejections are maintained as the arguments are unpersuasive as the were to Ichikawa alone. The double patenting rejection is withdrawn in light of the amendment. Conclusion Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA C WALKE whose telephone number is (571)272-1337. The examiner can normally be reached 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, Niki Bakhtiari can be reached at 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 07, 2026
Non-Final Rejection mailed — §103
Sep 04, 2026
Response Filed
Oct 16, 2026
Final Rejection mailed — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12761557
ACTINIC RAY-SENSITIVE OR RADIATION-SENSITIVE RESIN COMPOSITION, RESIST FILM, PATTERN FORMING METHOD, AND METHOD FOR MANUFACTURING ELECTRONIC DEVICE
3y 7m to grant Granted Oct 13, 2026
Patent 12761555
Positive Resist Material And Patterning Process
2y 12m to grant Granted Oct 13, 2026
Patent 12756039
Pouch-Type Secondary Battery
3y 7m to grant Granted Oct 06, 2026
Patent 12755977
ELECTRODE MIXTURE, SECONDARY BATTERY, AND COMPOSITION
3y 7m to grant Granted Oct 06, 2026
Patent 12754476
COLOR-RESIST COMPOSITIONS AND DISPLAY PANELS
3y 1m to grant Granted Oct 06, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

3-4
Expected OA Rounds
88%
Grant Probability
97%
With Interview (+8.6%)
2y 5m (~0m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 1734 resolved cases by this examiner. Grant probability derived from career allowance 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