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 .
Amendment to the claims was submitted with corrections on 04/07/2026, claims 12 and 27 are canceled, new claims 38-39 are added, the previous claim objections are withdrawn, and the previous 112(a) rejections to claims 1-3, 10-13, 15-16, 21, 27, and 29-37 are withdrawn.
Claim Status
Claims 1-3, 10-11, 13, 15-16, 21, and 29-39 are under consideration.
Claims 4-9, 12, 14, 17-20, and 22-28 are canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-3, 13, 15-16, 21, 29, 31-34, 36, and 38-39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1 and 15 have been amended to disclose a first carboxylate ligand which includes a first substituent, a first oxygen atom, and a second oxygen atom, wherein the first substituent comprises at least one of formic acid and acetic acid, wherein the first substituent is directly bonded to a first carbon atom that is directly bonded to a first and second oxygen atom, and a second carboxylate ligand which includes a second substituent, a third oxygen atom, and a fourth oxygen atom, wherein the second substituent comprises at least one of propionic acid or butyric acid, wherein the second substituent is directly bonded to a second carbon atom that is directly bonded to a third and fourth oxygen atom.
Dependent claim 13 similarly discloses that the first and second substituents are derived from different carboxylic acids.
However, the instant specification only discloses that examples of carboxylic acids (not substituents themselves) include formic acid, acetic acid, propionic acid, and butyric acid, where the carboxylate ligands include the substituents of the carboxylic acids [0040]. For example, regarding a carboxylate ligand formed from formic acid (shown below), the substituent would be the H on the left, not formic acid itself, where the substituent H would then be directly bonded to the instant first carbon atom.
PNG
media_image1.png
379
529
media_image1.png
Greyscale
The instant specification fails to disclose a carboxylate ligand formed from a carboxylic acid where a substituent of the carboxylic acid is an additional carboxylic acid moiety. Further, formic acid, acetic acid, propionic acid, and butyric acid each have clearly defined chemical structures, each comprising of only one carboxylate moiety.
Dependent claims 33 and 36 each disclose that the first carbon atom is directly bonded to each of the first and second oxygen atoms via a single bond.
However, referring to instant figure 3A, the carbon atom of a carboxylate ligand is never shown to be bonded to both oxygens through a single bond. The carbon atom is single bonded to one of the two oxygen atoms, and bonded through either a double bond or a resonant bond (implying a bond order of 1.5) to the other oxygen atom. The instant specification fails to disclose a carboxylate ligand where the carbon atom is bonded to both oxygen atoms through a single bond.
Claims 34 and 37 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.
Regarding claims 34 and 37, it is unclear what is meant by “the fourth oxygen atom is not coordinated with the first tin atom.” If “coordinated” is interpreted as being bonded together either directly or indirectly, the claim may be further rejected under 112(d) as the parent claim discloses the fourth oxygen atom is indirectly bonded to the first tin atom through the second carbon atom and the third oxygen atom.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10-11, 30, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Zi (US20200073238A1, published 2020) in view of Hatakeyama (US20120208127A1, published 2012).
Regarding claims 10-11, 30, and 35,
Zi teaches a photoresist composition comprising an organometallic compound comprising metal oxide/ligand complexes comprising 1-12 metal core clusters which may be Sn (tin), where the ligand may be carboxylic acid [abstract, 0048-0050, fig 4].
While Zi fails to explicitly teach a plurality of metal core clusters comprising of at least two of 3, 4, and 10 metal clusters, they clearly teach forming 1 to 12 metal core clusters, where the metallic core-clusters are complexed with ligands [0050].
It would have been obvious to a person of ordinary skill in the art that this would include a plurality of metal core clusters comprising of 3, 10, and 12 metal core clusters, as the list of possible core clusters is finite and Zi does not teach that only one of a number of core clusters may be included in their photoresist composition, reading on instant claim 11.
Zi teaches their composition for use with EUV radiation [0027].
Zi also teaches one or more organic ligands [0048], the ligands may be carboxylic acids [0049], with examples with methacrylic acids (a carboxylic acid). Zi also teaches carboxylic acid groups include acrylic acid groups and methacrylic acid groups [0058]. While Zi fails to explicitly teach an example comprising of a plurality of different carboxylic acids (comprising of different substituents), it would have been readily envisioned by a person of ordinary skill in the based on the teachings of Zi.
While the examiner maintains that Zi clearly teaches the use of tin as the metal clusters, and thus their use would be anticipated, it would alternatively be obvious to a person of ordinary skill in the art to try using tin as the metal in the metal clusters of Zi as their list of possible metals is finite [0050].
However, Zi fails to explicitly teach a first carboxylate ligand comprising of formic or acetic acid and a second carboxylate ligand comprising of propionic or butyric acid.
Hatakeyama, analogous art, teaches a resist composition comprising of a metal salt of carboxylic acids, where the metal may be tin [claim 1]. Hatakeyama further teaches each R1 (substituents of the carboxylic acid groups) may each be independently hydrogen, a straight, branched or cyclic C1-C20 alkyl group, C2-C20 alkenyl group, C2-C20 alkynyl group, or C6-C20 aryl group, which group may contain a hydroxyl, ether, ester, amino, amide, sulfonic acid ester, halogen, cyano, nitro, carbonate, carbamate, thiol, sulfide, thioketone radical, or hetero-aromatic ring [claim 2], implying each carboxylic acid group may be different.
Hatakeyama further teaches several examples of carboxylic acid salt groups such as the following [0045].
PNG
media_image2.png
55
129
media_image2.png
Greyscale
(acetic acid and formic acid)
PNG
media_image3.png
61
56
media_image3.png
Greyscale
(propionic acid)
PNG
media_image4.png
102
76
media_image4.png
Greyscale
(butyric acid)
It would have been obvious to a person of ordinary skill in the arts that using the carboxylic acids taught by Hatakeyama, for example acetic acid and butyric acid, as the organic ligands of Zi would result in a comparable and expected resist composition, as both teach resist compositions comprising of metal cores with carboxylic acid ligands, reading on instant claim 35.
That is, the substitution of the carboxylic acids of Hatakeyama for the organic ligands of Zi, absent unexpected results, would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application with the predictable result of forming a resist composition. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (See MPEP § 2143, B).
Further, Hatakeyama teaches a salt of a carboxylic acid having more carbon atoms is more soluble in organic solvents whereas a salt of a carboxylic acid having less carbon atoms is more soluble in water and more likely to form a hydrate in solid form. A salt of a carboxylic acid having more carbon atoms is more effective for improving coating thickness uniformity when the resist composition is spin coated, but produces a larger amount of outgassing during exposure and undergoes more shrinkage when it is converted into metal oxide [0045]. A person of ordinary skill in the art would be motivated to try using different carboxylic acid ligands as taught by Hatakeyama in order to optimize the resist composition.
Regarding the limitations of “wherein the first oxygen atom and third oxygen atom are directly bonded to a first tin atom” and “the second oxygen is directly bonded to a second tin atom”, while Zi is silent to the exact bonds of the carboxylate ligands, as the organometallic compound of Zi et al. aligns with that of the instantly claimed tin clusters comprising of carboxylate ligands, it would be obvious to a person of ordinary skill in the art that the compounds of Zi et al. would expectedly and inherently form similar bonds, where the double bonded oxygen of a carboxylate ligand would be expected to be capable of forming a resonant bond with another tin atom, as is seemingly disclosed in the instant figure 3A, resulting in a structure aligning with the instant claim limitations, reading instant claims 10 and 30.
While Zi is silent to the tin density of their organometallic compounds, as the organometallic compound of Zi et al. aligns with that of the instantly claimed tin clusters comprising of carboxylate ligands, it would be obvious to a person of ordinary skill in the art that the compounds of Zi et al. would expectedly and inherently have a similar tin density of 2.2 to 2.4 mg/cm3.
Response to Arguments
Applicant’s arguments filed 04/09/2026 with respect to the 112(a) rejections to claims 1-3, 10-13, 15-16, 21, 27, and 29-37 have been fully considered and are persuasive in view of the new claim amendments. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection under 35 USC § 112(a), 112(b), and 103 is made in response to the new claim amendments.
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 Alexander Lee whose telephone number is (571)272-2261. The examiner can normally be reached M-Th 7:30-5:30 EST.
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, Mark Huff can be reached at (571) 272-1385. 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.
/A.N.L./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737
Prosecution Insights