DETAILED CORRESPONDENCE
This Office action is in response to the RCE filed April 22, 2026.
The rejection on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,977,333 in view of YAO et al (2014/0295349) is withdrawn in view of the proper terminal disclaimer submitted February 23, 2026.
Claim 1 is objected to because of the following informalities: The transition term for the method in claim 1 recites two “comprising” terms. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 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.
Claims 1-8 and 15-20 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.
Claim 1 recites a “mercapto-vinyl phenol thiol group” wherein the term “mercapto-vinyl phenol is recited to further limit the dye group in the additive of claim 1, however this term is redundant and confusing. By reciting a “mercapto-vinyl phenol” the compound is understood to mean a vinyl phenol that has a -SH group substituted on the benzene ring, yet the specification fails to disclose such a compound as seen below in para. [0060]. The term thiol appears to mean a another -SH group bonded to the dye group on another part of the compound (so one would expect to see two thiol/mercapto groups on the compound, which is not found).
In fact, the specification actually discloses the desired compound seen below from para. [0060 ] of the published application 2024/0079235:
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It appears the mercapto group is missing on the vinyl phenol and is actually just a hydroxyl group (or a vinyl phenol), therefore the nomenclature fails to match the actual compound structure in the specification.
Claim 15 recites a “mercapto-vinyl phenol functional group” in line 7. The term is not found in the specification as recited wherein the defined group from para. [0060] above does not have a mercapto substitution on the vinyl phenol structure.
Correction is necessary to remove the indefiniteness and confusion for the desired compound.
Claims 5 and 17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 to the compounds fails to match the recited mercapto-vinyl phenyl thiol group by lacking a second thiol/mercapto group.
Claim 17 recites that the anti-reflective additive comprises a thiol, however claim 15 on which claim 17 depends already recites a “thiol” by the term “mercapto-vinyl phenol functional group”. The claim 17 fails to further limit claim 15 as a thiol group is identical to a “mercapto” group and is already present on the group. The dependent claim is confusing to the recited scope ( In fact, the “mercapto-vinyl phenol functional group appears to be a misnomer based on para. [0060] of the specification and is actually just a vinyl phenol ).
Alternatively, claim 17 may mean that the mercapto-vinyl phenol group comprises an additional thiol group, however this structure would be expected to have two thiol/mercapto group which is not described in the specification.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over LIU et al (2017/0271203) in view of YAO et al (2014/0295349) and YAO et al (2011/0104613), and SUZUKI et al (2005/0227169).
The claimed invention now recites the following:
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Due to the confusion and lack of description of the mercapto-vinyl phenol thiol group in the specification, the art rejection is repeated for disclosing a dye group and a thiol group.
LIU et al report a semiconductor device and method of making wherein the photoresist layer is coated over a seed layer (titanium) as reported in paragraphs [0022] and [0023] and Fig. 1, see below:
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Further, Fig 6 exemplifies a photomask with a photomask layer 609 which can include a series of layers to include an anti-reflective coating as seen in paragraph [0068], shown here:
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SUZUKI et al disclose a photoresist composition comprising a dye and an adhesive agent having a dye-like structure with thiol groups, see para. [0072] along with the preferred content reported in para. [0073] below:
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The photoresist in SUZUKI et al would be meet amended claim 1 for the topmost layer being exposed. It is noted that the content of the adhesion accelerators is preferably 0.05 to 10 parts by weight based on 100 parts by weight of the resin making it even less when compared to the whole composition including the solvent.
YAO et al disclose suitable substrates to include silicon wafers and copper substrates which are coated with a photoresist composition, see para. [0059]:
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YAO et al ‘349 report the content of the polymer in a range of 0.1 – 20 wt% as seen in para. [0033]. The photoacid generator is in a range of 0.1 weight % to 10 wt% as reported in para. [0041]. The disclosure in YAO et al meet claim 1 for the polymer and photoacid generator.
YAO et al ‘613 report anti-reflective coating thicknesses of 15 nm to 200 nm in para. [0058]as recited in claim 1, see below:
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It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition to use the photoresist composition of SUZUKI et al and the teaching of both YAO et al in the method of LIU et al as the semiconductor process calls for a photoresist coated over a titanium substrate with an anti-reflective layer thickness of 15 nm to 200 nm wherein the photoresist is imaged and developed on the substrate with the reasonable expectation of having a stacked and bonded semiconductor device manufacturing methods that are improved.
In other words, the SUZUKI et al is seen as a photoresist composition with antireflective components/molecules, wherein the 2-mercaptobenzothiazole, or 2-mercaptobenzimidazole meet that function as listed in para. [0072] and being an adhesive agent between the photoresist and the substrate and when dried.
Claims 5 is 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.
None of the prior art references disclose the specific dye structure recited in claim 5.
Claims 9-14 are seen as allowable.
None of the prior art references of record disclose the claimed method of claim 9 reciting the specific anti-reflective compound and comprising a mercapto-vinyl phenol functional group.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S CHU whose telephone number is (571)272-1329. The examiner can normally be reached M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff, can be reached at telephone number (571)272-1329. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
May 1, 2026
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