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 3, 4, and 10 recite “heterocyclyl” but should instead recite --heterocycle--.
Claim Objections
Claims 1, 3, 10, and 11 are objected to because of the following informalities: Claims 1 and 3 recite “one, two, or more” but should instead recite --one or more--. Claims 1 and 3 also recite “oxo(=O)” which should instead recite “-(=O)-“. Claims 1 and 3 further recite “heterocyclyl” but should instead recite --heterocycle--. Claims 10 and 11 recites “(248 nm and 193 nm)”, “(EUV)”, “(NIL)”, and “(EBL)” which should be omitted. Appropriate correction is required. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-11 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “3- to 20-membered epoxy” in claim 1 is used by the claim to mean “oxygen-containing 3- to 20-membered heterocycle,” while the accepted meaning for epoxy is “
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.” The term is indefinite because the specification does not clearly redefine the term. The Examiner suggests amending claim 1 to define R1 as --selected from
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--.
Claims 2-11 are rejected because they depend from rejected based claim 1.
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 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 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.
Claim 3 recites “preferably, each R is the same or different and is independently selected from H or OR1, provided that R is not all H; R1 is selected from the following groups that are unsubstituted or optionally substituted with one, two, or more R11: C1-6 alkyl and 3- to 8-membered heterocyclyl; each R11 is the same or different and is independently selected from oxo(═O) and the following groups that are unsubstituted or optionally substituted with one, two, or more R12: C1-6 alkyl, C2-6 alkenyl, and oxygen-containing 3- to 8-membered heterocyclyl” and “preferably, each R is the same or different and is independently selected from H or OR1, provided that R is not all H; R1 is selected from the following groups that are unsubstituted or optionally substituted with one, two, or more R11: oxygen-containing 3- to 8-membered heterocyclyl, C2-6 alkenyl-C1-6 alkyl, and oxygen-containing 3- to 8-membered heterocyclyl-C1-6 alkyl; each R11 is the same or different and is independently selected from oxo(═O) and C1-6 alkyl” and “preferably, each R is the same or different and is independently selected from H or OR1, provided that R is not all H; R1 is selected from
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” which provides three separate definitions of R and R1 and therefore renders the claim indefinite since it is unclear as to which definition is required.
Regarding claims 6-8, 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, 10, and 11 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, 10, and 11 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, 10, and 11 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.
Claims 4, 6, 9, and 11 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 4 recites “The compound according to claim 1, wherein the compound represented by formula (I) preferable has a structure represented by formula (A) or formula (B)”. The term “preferably” renders the claim indefinite and therefore fails to further limit the subject matter of claim 1. The Examiner suggests omitting the word “preferably”. Claim 6 recites “A preparation method for the compound according to claim 1, comprising the following steps:
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reacting a compound represented by formula (II) with R1-L to give the compound represented by formula (I); wherein A, Ra, Rb, Rc, Rd, and R1 have the definitions described in claim 1; R′a, R’b, R′c, and R’d are
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or H, provided that not all are H; each R′ is the same or different and is independently selected from OH or H, provided that not all are H; L is selected from a leaving group such as halogen or p-toluenesulfonate”. However, claim 1 recites “provided that at least one R is OR1 or H”. Therefore, the preparation method does not include all of the limitations from claim 1, i.e. it does not provide a preparation method for when all R are H. 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. Claim 11 recites “Use of the compound according to claim 8”. However, claim 8 is directed to a negative photoresist composition. The Examiner suggests canceling claim 11. 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 § 102
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:
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (U.S. 2007/0087222).
Kim et al. teaches the following compounds H-4, H-9, H-12, and H-19:
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[0028] which are equivalent to a compound represented by formula (I) of instant claims 1-3, specifically formula (A) of instant claim 4 when R is H and A is a fused ring C10, 14, and C16 aromatic hydrocarbon respectively.
Allowable Subject Matter
Claims 5-11 would be allowable if rewritten to overcome the rejection(s) under 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.
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 any one of a compound of formulae (C) to (H), the preparation of a compound of formula (I), or a compound of formula (I) in a photoresist composition. Closest prior art Kim et al. teaches unsubstituted compounds of formula (I) [0028] or may be substituted with a C1-C10 alkyl [0023-0025] instead of the claimed epoxy groups and teaches their use in organic electroluminescent devices instead of the claimed photoresist composition. Closest prior art Kim et al. (Synthesis and electroluminescence properties of highly efficient blue fluorescence emitters using dual core chromophores) teaches a synthesis route for obtaining an unsubstituted compound of formula (F) [page 434]. Closest prior art Gao et al. (Effective Optimization Strategy for Electron Beam Lithography of Molecular Glass Negative Photoresist) teaches a compound and its use in photoresists having epoxy groups similar to formulae (D) to (H) except the core is a branched alkyl [page 3359] instead of the claimed fused ring aromatic hydrocarbons. Closest prior art Chen et al. (CN107226319 translation attached) teaches compounds and their use in photoresists having epoxy groups similar to formulae (D) to (H) except the core is an adamantyl ring [page 3359] instead of the claimed fused ring aromatic hydrocarbons. Closest prior art Wu et al. (U.S. 2011/0260114) teaches a compound and its use in semiconductors having an anthracene fused ring aromatic hydrocarbon and two (un)substituted phenyl groups [0013] instead of the claimed compounds having an epoxy group.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kim et al. (Synthesis and electroluminescence properties of highly efficient blue fluorescence emitters using dual core chromophores), U.S. 9,548,456, U.S. 2013/0076604, U.S. 2004/013720, U.S. 6,465,115, and U.S. 5,972,247.
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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