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
1. Applicant’s election without traverse of Invention I in the reply filed on 08 June 2026 is acknowledged.
2. Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08 June 2026.
3. Applicant's election with traverse of Species A and Species 12 in the reply filed on 08 June 2026 is acknowledged. The traversal is on the ground(s) that the search and examination of all of the species would not result in an undue burden. This is not found persuasive because the species vary significantly in structure thus requiring an undue burden in searching them all. Applicant's election with traverse of Species II in the reply filed on 08 June 2026 is acknowledged. The traversal is on the ground(s) that the search and examination of all of the species would not result in an undue burden. This is found persuasive and the restriction requirement is withdrawn with respect to the corresponding group of species.
4. The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
5. 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 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.
6. 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:
7. 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.
8. Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laria et al. (United States Patent Publication No. US 2015/0025006 A1), hereinafter Laria.
9. Regarding Claims 1-11, Laria teaches (Paragraph [0603]) a carboxylate compound represented by Formula 1 of the present application, therein tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Laria teaches (Paragraph [0603]) wherein, in Formula 1 of the present application, X11 is represented by Formula 2 of the present application, therein tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Laria teaches (Paragraph [0603]) wherein L11 of Formula 2 of the present application is (CRaRb)q11, O, CO2, or any combination thereof, therein tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Herein, Examiner notes that a11 may be still equal to 0, which is the case with tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Laria teaches (Paragraph [0603]) wherein (L11)a11 of Formula 2 of the present application is a single bond, therein tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Laria teaches (Paragraph [0603]) wherein R11 of Formula 2 of the present application is an unsubstituted C4 alkyl group, therein a tert-butyl group, and L11 of Formula 2 of the present application includes (CRaRb)q11, therein tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Herein, Examiner notes that a11 may be still equal to 0, which is the case with tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Laria teaches (Paragraph [0603]) R11 of Formula 2 is represented by Formulae 3-3 of the present application, therein the tert-butyl group of tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Laria teaches (Paragraph [0603]) wherein R12 of Formula 2 of the present application and R13 of Formula 1 of the present application are each independently selected from hydrogen; deuterium; a halogen atom; a hydroxyl group; a cyano group; a nitro group; CO2(Q1); and a C1-C20 alkyl group, a C3-C20 cycloalkyl group, a C6-C20 aryl group and a C7-C30 arylalkyl group, unsubstituted or substituted with deuterium, a halogen atom, a hydroxyl group, a cyano group, a nitro group, a carboxylic acid group, an ester moiety, a sulfonate ester moiety, a carbonate moiety, a lactone moiety, a sultone moiety, a carboxylic anhydride moiety, a C1-C20 alkyl group, a C1-C20 halogenated alkyl group, a C1-C20 alkoxy group, a C3-C20 cycloalkyl group, a C3-C20 cycloalkoxy group, a C6-C20 aryl group, a C7-C30 arylalkyl group, or any combination thereof, wherein Q1 is selected from: hydrogen; deuterium; and a C1-C20 alkyl group, a C3-C20 cycloalkyl group, a C6-C20 aryl group and a C7-C30 arylalkyl group, unsubstituted or substituted with deuterium, a halogen atom, a hydroxyl group, a cyano group, a nitro group, a carboxylic acid group, an ester moiety, a sulfonate ester moiety, a carbonate moiety, a lactone moiety, a sultone moiety, a carboxylic anhydride moiety, a C1-C20 alkyl group, a C1-C20 halogenated alkyl group, a C1-C20 alkoxy group, a C3-C20 cycloalkyl group, a C3-C20 cycloalkoxy group, a C6-C20 aryl group, a C7-C30 arylalkyl group, or any combination thereof. Herein, Examiner notes that b12 of Formula 2 of the present application and b13 of Formula 1 of the present application may be still equal to 0, which is the case with tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Laria teaches (Paragraph [0603]) wherein 011 and p11 of Formula 2 of the present application are each independently an integer of 1, therein the tert-butyl group of tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Laria teaches (Paragraph [0603]) wherein m11 of Formula 1 of the present application are each independently an integer of 1, therein the tert-butyl group of tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Laria teaches (Paragraph [0603]) wherein n11 of Formula 1 of the present application are each independently an integer of 1, therein the tert-butyl group of tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Laria teaches (Paragraph [0603]) wherein X11 of Formula 1 is represented by Formula 2-1 of the present application, therein the tert-butyl group of tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate. Laria teaches (Paragraph [0603]) wherein X11 of Formula 1 is represented by Formula 2-12 of the present application, therein the tert-butyl group of tert-But 2′,4′-difluoro-4-hydroxybiphenyl-3-carboxylate.
Claim Rejections - 35 USC § 103
10. 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:
11. 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. Claim 1-11 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (United States Patent Publication No. US 2025/0250216 A1), hereinafter Matsumoto.
13. Regarding Claims 1-11 and 17-18, Matsumoto teaches (Paragraph [0193]) a polycarboxylate compound represented by Formula 1 of the present application, therein R corresponds to hydrogen, I corresponds to R12 and R13, R1 corresponds to the hydroxyl groups, A corresponds to (COO)(L11)a11R11, wherein a11 equals zero and R11 is a tert-butyl group. Matsumoto teaches (Paragraph [0193]) wherein L11 is (CRaRb)q11, O, CO2, or any combination thereof. Herein, Examiner notes that a11 of Formula 2 of the present application may be still equal to 0, which is the case here. Matsumoto teaches (Paragraph [0193]) wherein (L11)a11 of Formula 2 of the present application is a single bond. Matsumoto teaches (Paragraph [0193]) R11 is an unsubstituted C4 alkyl group,
L11 of Formula 2 of the present application includes (CRaRb)q11, Ra and Rb are each independently hydrogen, deuterium, a halogen atom, a hydroxyl group, a cyano group, a nitro group, a substituted or unsubstituted C1-C30 alkyl group, a substituted or unsubstituted C1-C30 alkoxy group, a substituted or unsubstituted C3-C30 cycloalkyl group, a substituted or unsubstituted C3-C30 cycloalkoxy group, a substituted or unsubstituted C2-C30 alkenyl group, a substituted or unsubstituted C3-C30 cycloalkenyl group, a substituted or unsubstituted C2-C30 alkynyl group, a substituted or unsubstituted C6-C30 aryl group, or a substituted or unsubstituted C7-C30 arylalkyl group. Herein, Examiner notes that a11 of Formula 2 of the present application may be still equal to 0, which is the case here. Matsumoto teaches (Paragraph [0193]) R11 of Formula 2 is represented by Formulae 3-3 of the present application. Matsumoto teaches (Paragraph [0193]) R12 of Formula 2 of the present application and R13 of Formula 1 of the present application are each independently a halogen atom, specifically iodine. Matsumoto teaches (Paragraph [0193]) o11 and p11 of Formula 2 of the present application are each independently an integer of 1. Matsumoto teaches (Paragraph [0193]) m11 of Formula 1 of the present application are each independently an integer of 1. Matsumoto teaches (Paragraph [0193]) n11 of Formula 1 of the present application are each independently an integer of 1. Matsumoto teaches (Paragraph [0193]) wherein X11 of Formula 2 of the present application is represented by Formula 2-1. Matsumoto teaches (Paragraph [0193]) wherein X11 of Formula 2 of the present application is represented by Formula 2-12. Matsumoto teaches (Paragraphs [0392-0393]) a photoacid generator, therein an acid generating agent (C). Matsumoto teaches (Paragraphs [0389-0391]) an organic solvent, therein a solvent including organic solvents. Matsumoto teaches (Paragraph [0391]) wherein an amount of the polycarboxylate compound is from about 0.1 parts by weight to about 50 parts by weight based on 100 parts by weight of the resist composition.
14. However, Matsumoto fails to explicitly teach all components of the composition limited by the present application with a single experimental example. That said, all components of the composition are described with sufficient detail by the prior art. Thus, a person of ordinary skill in the art in view of Matsumoto would have found it would only require a simple substitution of one known element or amount for another with respect to the combinations of components herein limited with the results of the substitution would have been predictable.
Allowable Subject Matter
15. Claims 12-16 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. The prior art teaches all limitations of said claims save for the structures of Formulae 1-1 to 1-51, 3-1 to 3-13, or 6-1 to 6-3 of the present application.
Conclusion
16. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
17. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH D HENDRICKS can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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19. 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.
/RICHARD DAVID CHAMPION/Examiner, Art Unit 1737
Prosecution Insights