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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
The abstract of the disclosure is objected to because it does not provide an adequate description of the general nature of the compound (I), i.e. A, Ra, Rb, Rc, and Rd should be defined. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities: Pages 5-6 recite “a preparation method for the compound represented by formula (I), comprising the following steps:
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” and “each R’ is the same or different and is independently selected from OH or H, provided that not all are H”. However, pages 7, 12, and 15 show synthesis routes which all start with compound
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such that R’ in formula (V) cannot be defined as “OH or H” but instead should be defined the same as R”, i.e. --selected from H, -C1-20 alkyl, and -OC1-20 alkyl, provided that at least one R’ is -OC1-20 alkyl--.
Appropriate correction is required.
Claim Objections
Claims 3 and 10 are objected to because of the following informalities: Claim 3 recites “preferably, each R is the same…” and “preferably, the acid-sensitive group is -OR2” such that the word “preferably” should be omitted. Claim 10 recites “(248 nm and 193 nm)”, “(EUV)”, “(NIL)”, and “(EBL)” which should be omitted. 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.
Claim 6 is 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. Claim 6 recites “A preparation method for the compound according to claim 1, comprising the following steps:
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” and “each R’ is the same or different and is independently selected from OH or H, provided that not all are H”. However, pages 7, 12, and 15 of the specification show synthesis routes which all start with compound
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such that R’ in formula (V) cannot be defined as “OH or H” but instead should be defined the same as R”, i.e. --selected from H, -C1-20 alkyl, and -OC1-20 alkyl, provided that at least one R’ is -OC1-20 alkyl--. R’ is OH or H for formula (II) only when defining Ra’, Rb’, Rc’, and Rd’ as:
“
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or H”.
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.
Claims 2, 3, and 7-9 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “wherein the fused ring aromatic hydrocarbon is selected from C9-40 aromatic hydrocarbon”, and the claim also recites “preferably C10-16 aromatic hydrocarbon” and “preferably, the fused ring aromatic hydrocarbon is selected from naphthalene, anthracene, phenanthrene, or pyrene” which are the narrower statements of the range/limitation. Claim 3 recites the broad recitation “wherein Ra, Rb, Rc, and Rd, are the same or different and are each independently selected from H or
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provided that one, two, three, or four of Ra, Rb, Rc, and Rd are
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” and the claim also recites “preferably, Ra, Rb, Rc, and Rd are selected from
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wherein in the
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group, when there is only one R, it is preferably linked at position 4; when there are two R, they are preferably linked at positions 3 and 4, or positions 4 and 5; when there are three R, they are preferably linked at positions 3, 4, and 5” which is the narrower statement of the range/limitation. Claim 3 also recites the broad recitation “the acid-sensitive group is -OR2; R2 is selected from -COOC1-20 alkyl, -COC1-20 alkyl, -COC3-20 cycloalkyl, and –(CH2)q-COOC3-20 cycloalkyl”, and the claim also recites “preferably, the acid-sensitive group is -OR2; R2 is selected from -COOC1-6 alkyl, -COC1-6 alkyl, -COC3-12 cycloalkyl, and –(CH2)q-COOC3-12 cycloalkyl” and “preferably, the acid-sensitive group is selected from the following structures:
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” which are the narrower statements of the range/limitation. Claim 7 recites the broad recitation “use thereof in a photoresist”, and the claim also recites “preferably use thereof in the preparation of a positive photoresist” which is the narrower statement of the range/limitation. Claim 8 recites the broad recitation “A positive photoresist composition, comprising a matrix, wherein the matrix is selected from at least one of compounds represented by formula (I)”, and the claim also recites “preferably, the composition further comprises a photoacid generator” which is the narrower statement of the range/limitation. Claim 8 also recites the broad recitation “a photoacid generator”, and the claim also recites preferably, the photoacid generator is at least one of the following:
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” and “preferably, the photoacid generator is selected from
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” which are the narrower statements of the range/limitation. Claim 8 recites the broad recitation “A positive photoresist composition, comprising a matrix, wherein the matrix is selected from at least one of compounds represented by formula (I)”, and the claim also recites “preferably, the composition further comprises an organic base” which is the narrower statement of the range/limitation. Claim 8 recites the broad recitation “A positive photoresist composition, comprising a matrix, wherein the matrix is selected from at least one of compounds represented by formula (I)”, and the claim also recites “preferably, the composition further comprises an organic solvent” which is the narrower statement of the range/limitation. Claim 8 also recites the broad recitation “an organic solvent”, and the claim also recites “the organic solvent is preferably at least one of 1,2,3-trichloropropane, anisole…and tetrahydrofuran” which is the narrower statement of the range/limitation. Claim 9 recites the broad recitation “wherein the mass of the matrix accounts for 2%-30%”, and the claim also recites “preferably 4%-20%” which is the narrower statement of the range/limitation. Claim 9 also recites the broad recitation “the mass of the photoacid generator accounts from 2%-30%”, and the claim also recites “preferably 5%-20%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The Examiner suggests omitting all preferable language.
Regarding claims 6 and 7, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The Examiner suggests omitting “such as F, Cl, Br, or I” and canceling claim 7.
Regarding claim 8, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The Examiner suggests omitting “for example, selected from bis(trichloromethyl)-s-triazine derivatives, onium salt compounds, sultone compounds, and sulfonate compounds”.
Claims 7 and 10 provide for the use of the compound, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claims 7 and 10 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). The Examiner suggests canceling claims 7 and 10 since claims 8 and 9 are appropriately directed to a photoresist composition comprising the compound of formula (I).
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.
Claim 9 is 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 9 recites “according to claim 8…preferably, in the photoresist composition, the mass of the photoacid generator accounts for 2%-30%...of the mass of the matrix; preferably, in the photoresist composition, the mass of the organic base accounts for 0.02%-8% of the mass of the matrix; preferably, in the photoresist composition, the mass of the organic solvent accounts for 70%-96% of the total mass of the photoresist composition”. However, claim 8 recites “preferably, the composition further comprises a photoacid generator…preferably, the composition further comprises an organic base…preferably, the composition further comprises an organic solvent” which is part of the broad/narrow rejection above and therefore is not a positive recitation in claim 8 and therefore does not include all of its limitations. 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.
Allowable Subject Matter
Claims 1, 4, and 5 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not teach or provide motivation to make/use a compound represented by formula (I). Closest prior art Shirota et al. (JP2003183227 translation attached) teaches a compound having a phenyl core and three triphenyl groups
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where R is H or an acid-sensitive group [0017] and its use in photoresists instead of the claimed fused ring aromatic hydrocarbon. Closest prior art Shi et al. (U.S. 5,972,247) teaches a compound having an anthracene fused ring aromatic hydrocarbon and two (un)substituted triphenyl groups
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where R independently is H or C1, C4, or C6 alkyl [col 7-9] instead of the claimed acid-sensitive group. Closest prior art Seo et al. (U.S. 2010/0155714) teaches a compound having a naphthalene fused ring aromatic hydrocarbon [page 3] or pyrene fused ring [page 4] and two unsubstituted triphenyl groups
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where each R is H. Closest prior art Wu et al. (U.S. 2011/0260114) teaches a compound having an anthracene fused ring aromatic hydrocarbon and two (un)substituted phenyl groups [0013] instead of the claimed
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having an acid-sensitive group. Closest prior art Yang et al. (U.S. 2015/0037735) teaches compounds having acid-sensitive groups and their use in photoresists [0009] instead of the claimed fused ring compound. Closest prior art Li et al. (U.S. 2015/0353468) teaches a compound having a spirofluorene fused ring aromatic hydrocarbon and four substituted phenyls having an acid-sensitive group [0009] instead of the claimed triphenyl group
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. Closest prior art Oizumi et al. (Performance of EUV molecular resists based on fullerene derivatives) teaches a compound having a fullerene fused ring aromatic hydrocarbon and ten substituted phenyls having an acid-sensitive group and its use in photoresists [page 797209-5]. Closest prior art De Silva et al. (Molecular Glass Resists as High-Resolution Patterning Materials) teaches compounds having acid-sensitive groups and their use in photoresists [page 3359] instead of the claimed fused ring aromatic hydrocarbon compound.
Claims 2, 3, and 6-10 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(a), 35 U.S.C. 112(b), and 35 U.S.C. 112(d), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 6:30-3:00 EST M-F.
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/Anna Malloy/ Examiner, Art Unit 1737
/KEITH WALKER/ Supervisory Patent Examiner, Art Unit 1735
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