DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending.
The foreign priority document No.10-2023-0006893 filed on January 17, 2023 in the Republic of Korea has been received and it is acknowledged.
Claim Objections
Claim 19 is objected to because of the following informalities: the limitation “the hardmask composition has a thickness” should be amended to recite “the hardmask layer has a thickness” (see par.0095 of the specification).
Appropriate correction is required.
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 9, 10, 14, and 16-19 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.
Claims 9, 10, 14, and 16-19 include the approximation “about”. This term is not defined in the specification, so it is not clear what is the joint inventor claiming as the invention in claims 9, 10, 14, 16-19
In determining the range encompassed by the term "about," one must consider the context of the term as it is used in the specification and claims of the application. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007). In W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), the court held that a limitation defining the stretch rate of a plastic as "exceeding about 10% per second" is definite because infringement could clearly be assessed through the use of a stopwatch. However, in another case, the court held that claims reciting "at least about" were invalid for indefiniteness where there was close prior art and there was nothing in the specification, prosecution history, or the prior art to provide any indication as to what range of specific activity is covered by the term "about." Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991) (MPEP 217305(b).III.A."About")
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraph of 35 U.S.C. 102 that forms 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 1-7 and 9 arerejected under 35 U.S.C. 102(a)(1) as being anticipates by Liu et al. (“Alkynylzirconation of Alkynes and Application to One-Pot Bisalkynylation of Alkynes”).
With regard to claims 1-4, Liu et al. teach the cis-trans isomerization of the compound of formula (11a):
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in THF solution (left column on page 7454).
The THF solution comprises a trans isomer of the compound 11a (left column on page 7454), which is a compound of Chemical Formula 1, wherein R1-R4 are unsubstituted C6 aromatic hydrocarbon groups.
THF (tetrahydrofuran) is a solvent.
The limitation of claims 1-4 for a “harmask composition” shows only an intended use of the composition (the composition is used to form a hardmask). Therefore, this limitation adds no patentable weight to the claims.
The composition of Liu et al. anticipates the compositions in claims 1-4 of the instant application.
With regard to claims 5 and 6, the trans isomer of the compound 11a above is a compound of Chemical Formula 1, wherein R1-R4 are unsubstituted moieties of formula:
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.
With regard to claim 7, the trans isomer of the compound 11a above has a symmetrical structure.
With regard to claim 9, the trans isomer of the compound 11a above has a molecular weight of 380g/mol. This molecular weight is within the claimed range.
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (“Alkynylzirconation of Alkynes and Application to One-Pot Bisalkynylation of Alkynes”).
With regard to claim 10, Liu et al. teach the composition in claim 1 (see paragraph 8 above), but does not specifically teach the claimed amount of the trans monomer.
However, Liu et al. teach a THF solution comprising a 2.3:1 mixture of a cis monomer of formula:
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and a trans monomer (left column on page 7454).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to obtain the composition comprising the trans monomer in an amount within the claimed range by varying the amount of THF solvent used to dissolve the monomers.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A. Optimization Within Prior Art Conditions or Through Routine Experimentation)
Allowable Subject Matter
Claims 8, 11-13, 15, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Liu et al. (“Alkynylzirconation of Alkynes and Application to One-Pot Bisalkynylation of Alkynes”) fail to teach the hardmask compositions in claims 8 and 11, the hardmask layer in clam 12, and the method in claim 13.
Park et al. (KR 20200122654 A, with attached machine translation) teach a hardmask composition comprising a compound of formula:
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, wherein A is a substituted or unsubstituted C6-C30 aromatic ring, B to E are each independently hydrogen, deuterium, hydroxyl group, amine group, substituted or unsubstituted C1-C30 alkoxy group, substituted or unsubstituted C1-C30 alkyl group, substituted or unsubstituted C6-C30 aryl group, or a combination thereof (abstract, par.0006-0014).
However, Park et al. fail to teach the hardmask layer in claim 12 and the method in claim 13 of the instant application.
There are no prior art teachings that would motivate one of ordinary skill to modify Liu et al. or Park et al. and obtain the hardmask compositions in claims 8 and 11, the hardmask layer in clam 12, and the method in claim 13.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Shimizu et al. (“Reaction of 1,3-Bis(alkylseleno)allenes with Dipehnyl Diazomethane”) teach a benzene solution comprising the compound of formula:
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(Scheme 1 on page 7202).
Casey et al. (“Formation of manganese enediyne complexes from manganese alkynylcarbene complexes) teach a toluene solution comprising the E- and Z-enediynes 14-E and 14-Z:
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and
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(Scheme 5 on page 322).
Periasamy et al. (“Synthesis of enynones from alkynes, alkynyl ketones and aromatic aldehydes using the TiCl4/Et3N reagent system”) teach a solution of CH2Cl2 (dichloromethane) comprising the compound of formula:
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(Scheme 3 on page 566 and Scheme 4 on page 567).
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/ANCA EOFF/Primary Examiner, Art Unit 1722
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