Prosecution Insights
Last updated: April 19, 2026
Application No. 18/447,164

Composition For Forming Adhesive Film, Patterning Process, And Method For Forming Adhesive Film

Non-Final OA §102§103
Filed
Aug 09, 2023
Examiner
EOFF, ANCA
Art Unit
1722
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Shin-Etsu Chemical Co. Ltd.
OA Round
1 (Non-Final)
80%
Grant Probability
Favorable
1-2
OA Rounds
2y 10m
To Grant
91%
With Interview

Examiner Intelligence

Grants 80% — above average
80%
Career Allow Rate
982 granted / 1230 resolved
+14.8% vs TC avg
Moderate +11% lift
Without
With
+11.3%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
48 currently pending
Career history
1278
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
47.1%
+7.1% vs TC avg
§102
20.0%
-20.0% vs TC avg
§112
20.0%
-20.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1230 resolved cases

Office Action

§102 §103
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 application No.2022-130259 filed on August 17, 2022 in Japan has been received and it is acknowledged. Specification The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use. Arrangement of the Specification As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading: (a) TITLE OF THE INVENTION. (b) CROSS-REFERENCE TO RELATED APPLICATIONS. (c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT. (d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT. (e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM. (f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. (g) BACKGROUND OF THE INVENTION. (1) Field of the Invention. (2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98. (h) BRIEF SUMMARY OF THE INVENTION. (i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S). (j) DETAILED DESCRIPTION OF THE INVENTION. (k) CLAIM OR CLAIMS (commencing on a separate sheet). (l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet). (m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system. The specification should be amended to include under the heading (b) CROSS-REFERENCE TO RELATED APPLICATIONS that the application claims the benefit of priority to the application N o .2022-130259 filed on August 17, 2022 in Japan. Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraph of 35 U.S.C. 102 that form s 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. Claim s 1, 3, 4, and 7-9 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Satoru et al. (KR 20120065947 A, with machine translation provided by the applicant on July 29, 2024 ) . With regard to claim 1, Satoru et al. teach a photosensitive resin composition comprising the binder S-1 and PGMEA organic solvent (par.0500, Example 1 in Table 6). The binder S-1 comprises repeating units of methyl methacrylate (MAA) , 2-tetrahydrofuranyl methacrylate (MATHF) , hydroxyethyl methacrylate (HEMA) , 3-ethyl-3-oxetanyl methyl methacrylate (OXE-30) , and n-butoxymethyl acrylamide (NBMA) (par.0466 , Table 1 ). The binder S-1 is a polymer (A) in claim 1, wherein: -the 3-ethyl-3-oxetanyl methyl methacrylate repeating unit is a repeating unit of formula (2) in claim 1, wherein R 03 is a methyl group, R 04 is an organic group of formula (R 04 -3); and -the n-butoxymethyl acrylamide repeating unit is a repeating unit of formula (1) in claim 1 , wherein R 01 is a hydrogen atom, R 02 is a linear alkyl group with 4 carbon atoms. Therefore, the photosensitive resin composition in Example 1 of Satoru et al. anticipates the composition in claim 1 of the instant application. The limitation of claim 1 “for forming an adhesive film directly under a resist upper layer film” is only an intended use and adds no patentable weight to the claim. Claim 3 only refers to an intended use of the composition (forming an adhesive film with a thickness of 15 nm or less directly under the resist upper layer film). These limitations do not add any patentable weight to the claim. Therefore, the photosensitive resin composition of Satoru et al. anticipates the composition in claim 3 of the instant application. With regard to claim 4, Satoru et al. teach that the binder S-1 has a weight average molecular weight of 12,000 (par.0466). This value is within the claimed range. With regard to claim 7, Satoru et al. teach that the photosensitive resin composition of Example 1 further comprises the surfactant W-1 (Example 1 in Table 6 , par.052 0 ). Claims 8 and 9 only refer to an intended use of the composition (use in combination with a specific resist upper layer). These limitations do not add any patentable weight to the claims. Therefore, the photosensitive resin composition of Example 1 of Satoru et al. anticipates the composition in claims 8 and 9 of the instant application. Claim s 1, 3-6, 8, and 9 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Ito et al. (WO2019/189193 A1, with machine translation provided by the applicant on July 29, 2024) . With regard to claim 1, Ito et al. teach an acrylic polymer solution comprising an acrylic polymer and tetrahydrofuran (Synthesis Example 8 in par.0236). Tetrahydrofuran is an organic solvent. The acrylic polymer comprises repeating units of n-butoxymethyl acrylamide (BMAA) and glycidyl methacrylate (GMA) (par.0222 and Synthesis Example 8 in par.0236). The acrylic polymer is a polymer (A) in claim 1, wherein: -the glycidyl methacrylate (GMA) repeating unit is a repeating unit of formula (2) in claim 1, wherein R 03 is a methyl group, R 04 is an organic group of formula (R 04 -1); and -the n-butoxymethyl acrylamide repeating unit is a repeating unit of formula (1) in claim 1 , wherein R 01 is a hydrogen atom, R 02 is a linear alkyl group with 4 carbon atoms. Therefore, the acrylic polymer solution anticipates the composition in claim 1. The limitation of claim 1 “for forming an adhesive film directly under a resist upper layer film” is only an intended use and adds no patentable weight to the claim. Claim 3 only refers to an intended use of the composition (forming an adhesive film with a thickness of 15 nm or less directly under the resist upper layer film). These limitations do not add any patentable weight to the claim. Therefore, the photosensitive resin composition of Satoru et al. anticipates the composition in claim 3 of the instant application. With regard to claims 4 and 5, Ito et al. teach that the acrylic polymer has Mn=7,000 and Mw=18,000 (par.0236). The weight average molecular weight (Mw) is within the range in claim 4. The dispersity (Mw/Mn) is 2.57. This value is within the claimed range. With regard to claim 6, the acrylic polymer comprises about the glycidyl methacrylate repeating unit in an amount of about 22 mol% and the repeating unit of n-butoxymethyl acrylamide in an amount of about 78 mol% (see par.0236). These amounts are within the claimed ranges. Claims 8 and 9 only refer to an intended use of the composition (use in combination with a specific resist upper layer). These limitations do not add any patentable weight to the claims. Therefore, the acrylic polymer solution of Ito et al. anticipates the composition in claims 8 and 9 of the instant application. Claim Rejections - 35 USC § 102 and 35 USC § 103 The following is a quotation of the appropriate paragraph of 35 U.S.C. 102 that form s 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. 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, 7-10, an 14-19 are rejected under 35 U.S.C. 102( a ) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Satoh et al. (EP 3 382 453 A1). With regard to claim 1, Satoh et al. teach a resist underlayer composition comprising a polymer (1 A)( par.0087), wherein the polymer (1A) may be represented by the formula: (par.0088). Satoh et al. further teach that the resist underlayer composition further comprises an organic solvent (see Table 4 in par.0183). The polymer (1A) above is a polymer (A) in claim 1, wherein: -the first repeating unit of the polymer (1A) above is a repeating unit of formula (2) in claim 1, wherein R 03 is a methyl group, R 04 is an organic group of formula (R 04 -1); and -the fourth repeating unit of the polymer (1A) above is a repeating unit of formula (1) in claim 1 , wherein R 01 is a hydrogen atom, R 02 is a linear alkyl group with 4 carbon atoms. Therefore, the resist underlayer composition of Satoh et al. anticipates the composition in claim 1. In the alternative, 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 in claim 1, based on Satoh’s teachings regarding the components of the resist underlayer composition and the examples for each component. The limitation of claim 1 “for forming an adhesive film directly under a resist upper layer film” is only an intended use and adds no patentable weight to the claim. With regard to claim 2, the third repeating unit of the polymer (1A) above is repeating unit of formula (3) , wherein R 05 is a hydrogen atom, R 06 is a divalent linking group with 2 carbon atoms and containing an ester group, and R 07 is an unsaturated tertiary alkyl group with 5 carbon atoms. Claim 3 only refers to an intended use of the composition (forming an adhesive film with a thickness of 15 nm or less directly under the resist upper layer film). These limitations do not add any patentable weight to the claim. Therefore, the resist underlayer composition anticipates/renders obvious the composition in claim 3 of the instant application. With regard to claim 4, Satoh et al. teach that the polymer (1A) has a weight average molecular weight of 1,000 to 20,000 (par.0085). This range overlaps the claimed range. With regard to claim 7, Satoh et al. teach that the resist underlayer composition may further comprise an acid generator (C) which may be a blend of acid generators generating an acid by thermal decomposition and by photo irradiation (par.0100). The resist underlayer composition may comprise a surfactant (D) and a crosslinking agent (E)(par.012 2 -0124). Claims 8 and 9 only refer to an intended use of the composition (use in combination with a specific resist upper layer). These limitations do not add any patentable weight to the claims. Therefore, the resist underlayer composition anticipate/render obvious the composition in claims 8 and 9 of the instant application. With regard to claim 10, Satoh et al. teach a process comprising the steps of: -forming a resist underlayer film on a substrate to be processed by using the resist underlayer film composition; -forming a resist upper layer film on the resist underlayer film by using a photoresist composition; -forming a pattern on the resist upper layer film by developing an exposed resist upper layer film; -transcribing the pattern to the resist underlayer film by dry etching using as a mask the patterned resist upper layer film (par.0137, par.0141). The resist underlayer film is formed on a substrate by applying it on a substrate, evaporating the solvent, and baking (par.0142). With regard to claim 14, Satoh et al. teach that the resist upper layer may be exposed with high energy beams with a wavelength of 300 nm or less, such as 248 nm, 193 nm, and 157 nm (par.0148). With regard to claim 15, Satoh et al. teach that the resist upper layer may be developed with a TMAH (tetramethyl ammonium hydroxide) aqu eous solution (par.0210). This is equivalent to the claimed alkaline development. With regard to claims 16 and 17, Satoh et al. teach that the substrate to be processed may be a substrate having a film of Si, SiO 2 , SiON, SiN, TiN formed thereon A Si film is a metal film, wherein the metal is silicon. A SiO 2 film is a metal oxide film, wherein the metal is silicon. A SiON film is a metal oxynitride film, wherein the metal is silicon. The SiN and TiN films are metal nitride films, wherein the metal is silicon or titanium. With regard to claim 18, Satoh et al. teach a step of forming resist underlayer film on a substrate to be processed by using the resist underlayer film composition (par.0137). The resist underlayer film composition is applied on a substrate to be processed by spin-coating, the solvent is evaporated, then a baking step is performed (par.0142). The baking is performed at preferably 100 o C-300 o C for 10-600 seconds (par.0143). With regard to claim 19, Satoh et al. teach a step of forming resist underlayer film on a substrate to be processed by using the resist underlayer film composition (par.0137). The resist underlayer film composition is applied on a substrate to be processed by spin-coating, the solvent is evaporated, then a baking step is performed (par.0142). It is assumed that the baking is performed in room air, which has an oxygen concertation of 20%. This amount 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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Satoru et al. (KR 20120065947 A, with machine translation provided by the applicant on July 29, 2024 ) . With regard to claim 6, Satoru et al. teach the composition of claim 1 (see paragraph 6 above). Satoru et al, teach that the binder S-1 comprises the 3-ethyl-3-oxetanyl methyl methacrylate (OXE-30) repeating unit in an amount of 27.5mol% and the repeating unit of n-butoxymethyl acrylamide (NBMA) in an amount of 15mol% (see Table 1) . The amount of 3-ethyl-3-oxetanyl methyl methacrylate is within the claimed range for a repeating unit of formula (2). The amount of n-butoxymethyl acrylamide is not within the claimed range for a repeating unit of formula (1). However, N-butoxymethyl acrylamide is a repeating of formula (1) wherein R 1 is a hydrogen atom and R 2 is an alkyl group with 4 carbon atoms (abstract), and Satoru et al. teach that a binder may comprise a repeating unit of formula (1) in an amount of ratio of 10 to 40mol% (par.0088) . Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to increase the content of repeating unit of n-butoxymethyl acrylamide up to 40mol% in the binder of Satoru et al. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Satoh et al. (EP 3 382 453 A1) in view of Kori et al. (TW 201302691 A with attached machine translation) . With regard to claim 20, Satoh et al. teach a resist underlayer film composition which is equivalent to the composition in claim 1 (see paragraph 9 above). Satoh et al. further teach a step of forming resist underlayer film on a substrate to be processed by using the resist underlayer film composition (par.0137). The resist underlayer film composition is applied on a substrate to be processed by spin-coating, the solvent is evaporated, then a baking step is performed (par.0142). Satoh et al. fail to teach that the baking is performed in an atmosphere with less than 0.1% oxygen. Kori et al. teach a resist underlayer (abstract). Kori et al. teach that the photoresist underlayer film material is spin-coated onto a substrate, the solvent is evaporated to prevent mixing with the photoresist upper film, and then baking is performed to promote cross-linking reaction (the 3 rd paragraph on page 16 of the attached translation). The atmosphere during baking may be air, or an inert has such as N 2 , Ar or He to prevent the oxidation of the photoresist underlayer film. In order to prevent oxidation, it is necessary to control oxygen concentration preferably 1,000 ppm or less, more preferably 100 ppm or less (the 5 th paragraph on page 16 of the attached translation). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to perform the baking of Satoh et al. in an atmosphere with less than 1000 ppm (0.1%) oxygen in order to prevent the oxidation of the resist underlayer film. Allowable Subject Matter Claim s 11-13 are allowed. Satoh et al. (EP 3 382 453 A1) teach a process comprising the steps of: -forming a resist underlayer film on a substrate to be processed using the resist underlayer film composition; -forming a resist intermediate film on the resist underlayer film; -forming a resist upper layer film in the resist intermediate film by using a photoresist composition; -forming a pattern on the resist upper layer film by exposing and developing the resist upper layer film; -transcribing the pattern in the resist intermediate film by dry etching using the resist upper layer pattern as a mask; -transcribing the pattern to the resist underlayer film (par.0138). Satoh et al. also teach a process comprising the steps of: -forming a resist underlayer film on the substrate to be processed by using the resist underlayer film composition; -forming an inorganic hard mask intermediate film selected from a silicon oxide film, a silicon nitride film, and a silicon oxide nitride film on the resist underlayer film; - forming an organic antireflective film on the inorganic hardmask intermediate film; -forming a resist upper layer film on the organic antireflective film by using a photoresist composition; -forming a pattern on the resist upper layer film by exposure and development; -transcribing the pattern to the organic antireflective film and the inorganic hard mask intermediate film by dry etching using as a mask the resist upper layer film pattern; and -transcribing the pattern to the resist underlayer film by dry etching (par.0139). However, Satoh et al. fail to teach the methods in claims 11 and 12. There are no prior art teachings that would motivate one of ordinary skill to modify Satoh et al. and obtain the methods in claims 11 and 12 of the instant application. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT ANCA EOFF whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-9810 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Mon-Fri 10am-6:30pm . 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. /ANCA EOFF/ Primary Examiner, Art Unit 1722
Read full office action

Prosecution Timeline

Aug 09, 2023
Application Filed
Feb 22, 2026
Non-Final Rejection — §102, §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
80%
Grant Probability
91%
With Interview (+11.3%)
2y 10m
Median Time to Grant
Low
PTA Risk
Based on 1230 resolved cases by this examiner. Grant probability derived from career allow rate.

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