DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 08/17/2026.
3. Claims 1-4, 7-13 are pending. Claims 1-4, 12-13 are under examination on the merits. Claims 1-4, 8, 12-13 are amended. Claims 5-6 are cancelled. Claims 7-11 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1-4, 12-13 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 1-4, 12-13 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 pre-AIA the applicant regards as the invention. Claim 1 recites “where a proportion of the one or more acetals of tricyclodecane alcohols is more than 50 percent by weight”, wherein applicant fails to articulate by sufficiently distinct functional language, if the recited 50 percent by weight is based on the immersion liquid or based on the total amount of the main and the secondary constituents, thus claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language. Claims 2-4, 12-13 being depended on claim 1 are rejected as well.
8. Claim 13 is 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 pre-AIA the applicant regards as the invention. Claim 13 recites “where a proportion of the one or more acetals of tricyclodecane alcohols is more than 60 percent by weight”, wherein applicant fails to articulate by sufficiently distinct functional language, if the recited 60 percent by weight is based on the immersion liquid or based on the total amount of the main and the secondary constituents, thus claim 13 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language.
Claim Rejections - 35 USC § 112
9. The following is a quotation of the fourth paragraph of 35 U.S.C. 112:
Subject to the [fifth paragraph of 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
10. Claim 3 is rejected under 35 USC 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim, or amend the claim to place the claim in proper dependent form, or rewrite the claim in independent form. Claim 3, as written, depends in claim 2, which recites “the immersion liquid comprising 8-tetrahydropyran-2-yloxymethyltricyclo[5.2.1.0²]decane and/or 3(4),8(9)-bis(tetrahydropyran-2-yloxymethyl)tricyclo[5.2.1.0²]decane as the main constituent”, however, based on the content of the claim 2, the immersion liquid comprising one or more acetals of 8-hydroxymethyltricyclo[5.2.1.0²]decane or 3(4),8(9)-bis(hydroxymethyl)-tricyclol5.2.1.0²]decane as the main constituent. Thus claim 3 as being of improper dependent form for failing to further limit the subject matter of a previous claim 2.
For the purpose of examination against the prior art, claim 3 is construed to recite “The immersion liquid according to claim 1".
Claim Rejections - 35 USC § 103
11. 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.
12. Claims 1, 4, 12-13 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Hans-Joachim Weippert (US Pub. No. 2014/0355109 A1, hereinafter “’109”) in view of Sang-jun Choi (US Pat. No. 6,103,450 , hereinafter “’450”).
Regarding claims 1,4,12-13: ‘109 teaches an immersion liquid for microscopy (Page 1, [0002]) comprising an organic compound which contains a saturated polycyclic hydrocarbon residue is preferably an ester or ether of a hydroxy-substituted saturated polycyclic hydrocarbon, for example an ester or ether of tricyclodecane alcohols, in particular hydroxymethyl tricyclo [5.2.1.02,6]decane and/or bis(hydroxymethyl)tricyclo[5.2.1.02,6]decane, 8-hydroxymethyltricyclo [5.2.1.02,6]decane and 9-hydroxymethyltricyclo[5.2.1.02,6]decane as well as 3,8 bis(hydroxy methyl) tricyclo[5.2.1.02,6]decane, 3,9-bis(hydroxymethyl)tricyclo [5.2.1.02,6] decane, 4,8-bis (hydroxymethyl)tricyclo[5.2.1.02,6]decane and 4,9-bis(hydroxymethyl)tricyclo [5.2.1.02,6]decane (Page 2, [0025]), and high-boiling liquid as secondary constituents such as paraffin oil (Page 3, [0033]). ‘109 teaches the immersion liquid contains, relative to the total mass, preferably 30-75 wt.-% of the organic compound which contains a saturated polycyclic hydrocarbon residue (Page 3, [0030]). ‘109 does not expressly teach tricyclodecane alcohol is a compound of which the structure has the base skeleton of tricyclo[5.2.1.0²⁰]decane, and all OH groups of the tricyclodecane alcohol have been acetalized in the acetal.
However, ‘450 teaches a photosensitive polymer comprising a photosensitive polymer, a dissolution inhibitor, and a chemically amplified photoresist composition (Col. 1, lines 6-11), wherein the dissolution inhibitor can be the tricyclodecane derivative is expressed, for example, by the chemical formula (4) as set forth (Col. 5, lines 29-51), wherein the tricyclodecane derivative has been acetalized in the acetal with the use of 3,4-dihydro-2H-pyran (DHP) as an acetalizing agent (Col. 9, lines 7-18) which is most commonly used to protect hydroxyl groups as tetrahydropyranyl (THP) ethers, which are a type of acetal (specifically, a ”double-ether” acetal).
In an analogous art the immersion liquid, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the tricyclodecane derivative by ‘109, so as to include the tricyclodecane alcohol which have been acetalized in the acetal as taught by ‘109, and would have been motivated to do so with reasonable expectation that this would result in providing dissolution inhibitor as suggested by ‘109 (Col. 9, lines 7-18).
13. Claims 2-3 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Hans-Joachim Weippert (US Pub. No. 2014/0355109 A1, hereinafter “’109”) in view of Sang-jun Choi (US Pat. No. 6,103,450 , hereinafter “’450”) as applied to claim 1 above, and further in view of Jaeger et al. (US Pub. No. 2021/0302712 A1, hereinafter “’712”) as further evidenced by Suzuki (JP2002-249490 A, machine transition, hereinafter “’490”).
Regarding claims 2-3: The disclosure of ‘109 is view of ‘450 is adequately set forth in paragraph 12 above and is incorporated herein by reference. 109 is view of ‘450 does not expressly teach the immersion liquid comprising one or more acetals of 8-hydroxymethyltricyclo [5.2.1.0²]decane as the main constituent, and the acetalized derivative thereof.
However, ‘712 teaches an immersion liquid (Page 2, [0012]) comprising 8-hydroxymethyltricyclo [5.2.1.0²]decane (Page 5, [0065]). As further evidenced ‘490 teaches an alicyclic dissolution-inhibiting compound such as one or more acetals of tricyclodecane alcohols, wherein a tricyclodecane alcohol is a compound of which the structure has the base skeleton of tricyclo[5.2.1.02,6]decane and at least one OH group, and wherein all OH groups of the tricyclodecane alcohol have been acetalized in the acetal (Page 10/11, [0040], Example 1). ‘490 teaches the use of 3,4-dihydro-2H-pyran (DHP) as an acetalizing agent which is most commonly used to protect hydroxyl groups as tetrahydropyranyl (THP) ethers, which are a type of acetal (specifically, a “double-ether” acetal).
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Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since choosing an appropriate acetalized tricyclodecane derivative of known material based on its suitability for its intended use is within the level ordinary skill in the art.
Response to Arguments
14. Applicant’s arguments with respect to claims 1-4, 12-13 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
15. 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 extension fee 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 date of this final action.
Examiner Information
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
09/02/2026
bijan.ahvazi@uspto.gov
Prosecution Insights