DETAILED ACTION
Claims 3, 4, 6, and 8-18 are pending. Claim 3 has been amended, claims 1, 2, 5, and 7 have been canceled, claims 13-18 have been added while claims 15-18 are withdrawn due to an earlier restriction requirement.
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 .
Election/Restrictions
Newly submitted claims 15-18 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: For patently distinct inventions. Claims 15-18 correspond to original claims 1 and 2.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 15-18 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claims 3, 4, 6, 8, and 10-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nam et al. (WO20180121619). Translation attached.
Nam et al. teaches a hardmask composition in Example 6 was prepared by dissolving polymer If and additive 2a in propylene glycol monomethyl ether acetate (PGMEA) [page 22] wherein polymer If was obtained by acetylation using 5.1 g of propargyl bromide (80% in toluene), 50 mL of DMF, 1.9 g NaH, and 10 g of the following polymer If’ [page 19]:
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[WO page 32] which is equivalent to a chain polymer comprising a repeating unit represented by formula (1) of instant claims 3, 4, 6, 8, 10, 11, 13, and 14 when Ar1 is a fluorene ring having four groups represented by formula (2-1) when R7 is a divalent organic group having 1 carbon atom, and R0 is naphthalene ring having a group represented by formula (2-1) when R7 is a divalent organic group having 1 carbon atom. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. [MPEP 2112.01 In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)]. The composition of Nam et al. is the same as instantly claimed, therefore, it inherently has a content ratio of hydrogen atoms of 26.0 atm% or less and a content ratio of carbon atoms of 53.0 atm% or more when the composition is heated at 400C for 90 seconds (claims 10 and 11).
Claim 12 recites “is suitable for” which refer to the use of the composition. It has been held that a recitation with respect to the manner in which a claimed composition is intended to be used does not differentiate the claimed composition from a prior art composition satisfying the claimed structural limitations. Ex Parte Masham, 2, USPQ2d 1647 (1987). This recitation of the composition is drawn to intended use; therefore, this limitation does not add any patentable weight to the claim (MPEP 2106). Thus, the composition of Nam et al. is the same as instantly claimed.
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 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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nam et al. (WO20180121619).
With regard to claim 9, Nam et al. teaches the above polymer when R0 is a naphthalene ring and not a benzene ring.
However, Nam et al. teaches polymer If is a specific example of the following formula 1:
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[WO page 3] wherein A is a substituted or unsubstituted aromatic ring-containing group, a substituted or unsubstituted heteroaromatic ring-containing group, or a combination thereof, B is a divalent organic group, and at least one of A and B is substituted with a functional group represented by the following Chemical Formula 2 [page 4]:
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[page 4] wherein Z is hydrogen, a hydroxyl group, a substituted or unsubstituted C1 to C10 alkyl group, or a substituted or unsubstituted C6 to C30 alicyclic group [page 4] wherein B may be represented by an one of Chemical Formula Z1 to Chemical Formula Z4 [page 6] where Chemical Formula Z3 is the following:
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[WO page 9] wherein e and f are 0 or 1 and Y4 is any one of the following:
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[page 7] and specific examples of A include
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[page 6] such that when the naphthol of polymer If is substituted with phenol, it is equivalent to a chain polymer comprising a repeating unit represented by formula (1) of instant claims 3, 4, 6, 8-11, 13, and 14 when Ar1 is a fluorene ring having four groups represented by formula (2-1) when R7 is a divalent organic group having 1 carbon atom, and R0 is a benzene ring having a group represented by formula (2-1) when R7 is a divalent organic group having 1 carbon atom. Nam et al. also teaches although exemplary embodiments of the present invention have been described in detail above, the scope of the present invention is not limited thereto, and various modifications and improvements made by those skilled in the art using the basic concept of the present invention defined in the following claims are also within the scope of the present invention [page 24] and an embodiment provides an organic layer composition capable of being coated in a spin-on manner and having excellent etching resistance [page 3].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the specific teachings of Nam et al. to include additional polymers such as that defined above and arrive at the instant claims through routine experimentation of substituting equally suitable groups for the sought invention in order to achieve optimum etching resistance.
Response to Arguments
Due to the amendment filed June 9, 2026 of instant claim 3, the double patenting rejection over U.S. 9,029,069, the 102(a)(1) rejection over Kori, and the 103 rejections over Kori, Minegishi, and further in view of Makinoshima have been withdrawn. Applicant’s arguments regarding these rejections have been considered but are moot due to the amendment of instant claim 3.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 2014/0335692, U.S. 2015/0185613, U.S. 2019/0041752, U.S. 2019/0048236, and U.S. 2018/0348633.
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 ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 6:30-3:00 EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anna Malloy/Examiner, Art Unit 1737
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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