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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-9, in the reply filed on 02/05/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/052026.
In the amendments filed on 02/05/2026, claims 1-9 are canceled. Claims 10 and 11 are withdrawn. Claims 12-14 are new and are drawn to a composition comprising a copolymer comprising first polymerized units of the formula (1) and second polymerized units of the formula (2), and are therefore placed in Group I.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Desbois et al. (EP 1956037 A1, machine translation in English used for citation) in view of Robinson et al. (US 2018/0246408 A1).
Regarding claims 12 and 13, Desbois teaches a process in which oxetanes are polymerized with comonomers to copolymers by anionic polymerization [0016], wherein the oxetanes may have one or two C1-12 alkyl radicals [0020], wherein ethylene oxide or propylene oxide can be used as comonomers for the preparation of the copolymers [0021], wherein the copolymers obtained can be statistically structured, i.e. the sequence of monomer units in the copolymer is purely statistical [0082], wherein the polymerization can be carried out in the presence of a solvent [0074], wherein after the polymerization is complete, i.e. after the monomers have been consumed, the polymerization is stopped [0075], wherein the reaction mixture obtained can then, if desired, be worked up to give the polymer in a manner known per se, e.g. by degassing in a degassing extruder or evaporator [0077], wherein degassing separates residual monomers and oligomers formed, as well as volatile auxiliary and accompanying substances used in the polymerization and, in particular, the solvent [0077], which means that when Desbois’s polymerization is stopped, Desbois’s copolymer is optionally present with Desbois’s solvent, which reads on a composition comprising a copolymer comprising: first polymerized units of the formula (1): wherein: R1 is H or a substituted or unsubstituted C1-C6 alkyl group, and R2 is optionally a substituted or unsubstituted C1-C12 alkyl, and second polymerized units optionally of the formula (2), wherein: R3 is an unsubstituted C2-C3 alkylene group, wherein the first polymerized units and the second polymerized units are chemically different, and the copolymer is free of fluorine, wherein the copolymer is a random copolymer, and optionally a solvent.
Desbois does not teach a specific embodiment wherein the first polymerized units are first polymerized units of the formula (1) as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Desbois’s oxetanes that have one or two C1-12 alkyl radicals to be oxetanes that have one or two alkyl radicals at the 3-position, wherein one alkyl radical is a C3-12 alkyl radical that is branched, and optionally one alkyl radical is a C1-12 alkyl radical. The proposed modification would read on wherein the first polymerized units are first polymerized units of the formula (1) wherein: R1 is H or a substituted or unsubstituted C1-C6 alkyl group, and R2 is a substituted or unsubstituted C3-C12 alkyl group as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying anionic polymerization properties of Desbois’s process because Desbois teaches that in the process, oxetanes are polymerized with comonomers to copolymers by anionic polymerization [0016], and that the oxetanes may have one or two C1-12 alkyl radicals [0020], and because the 3-position of oxetane is the position that would provide the least steric hinderance of polymerization of oxetane since the 3-position is the position furthest from the site of ring-opening during polymerization, which is the oxygen atom of oxetane.
Desbois does not teach a specific embodiment wherein the second polymerized units are second polymerized units of the formula (2) as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Desbois’s ethylene oxide or propylene oxide as Desbois’s comonomers. The proposed modification would read on wherein the second polymerized units are second polymerized units of the formula (2), wherein: R3 is an unsubstituted C2-C3 alkylene group as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying the anionic polymerization properties of Desbois’s process because Desbois teaches that in the process, oxetanes are polymerized with comonomers to copolymers by anionic polymerization [0016], that ethylene oxide or propylene oxide can be used as comonomers for the preparation of the copolymers [0021], and that the comonomers are preferably selected from ethylene oxide and propylene oxide [0023].
Desbois does not teach a specific embodiment of a composition comprising the copolymer and a solvent. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to carry out Desbois’s polymerization in the presence of Desbois’s solvent. The proposed modification would read on a composition comprising the copolymer and a solvent as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for improving processability of Desbois’s copolymer during polymerization of Desbois’s oxetanes and comonomers because Desbois teaches that the polymerization can be carried out preferably in the presence of a solvent [0074], that after the polymerization is complete, i.e. after the monomers have been consumed, the polymerization is stopped [0075], that the reaction mixture obtained can then, if desired, be worked up to give the polymer in a manner known per se, e.g. by degassing in a degassing extruder or evaporator [0077], and that in the process, oxetanes are polymerized with comonomers to copolymers by anionic polymerization [0016].
Desbois does not teach that the composition further comprises a crosslinking agent, a matrix polymer that comprises an acid-decomposable group, and a photoacid generator. However, Robinson teaches at least one polymer comprising two or more crosslinkable functionalities, wherein essentially all the functionalities are attached to acid labile protecting groups, at least one acid activated crosslinker, and at least one photoacid generator [0013], wherein the at least one acid activated crosslinker comprises a polymer, and is an oxetane [0018]. Desbois and Robinson are analogous art because both references are in the same field of endeavor of a composition comprising a polymer and that is derived from an oxetane. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to combine Robinson’s at least one polymer comprising two or more crosslinkable functionalities, wherein essentially all the functionalities are attached to acid labile protecting groups, Robinson’s at least one acid activated crosslinker that comprises a polymer and that is an oxetane, and Robinson’s at least one photoacid generator with Desbois’s copolymer that is made by Desbois’s process in which oxetanes are polymerized with comonomers to copolymers by anionic polymerization. The proposed modification would read on the composition further comprising a crosslinking agent, and a matrix polymer that comprises an acid-decomposable group as claimed, and the composition of claim 12, further comprising a photoacid generator as claimed. One of ordinary skill in the art would have been motivated to do so because Robinson teaches that the at least one polymer comprising two or more crosslinkable functionalities, wherein essentially all the functionalities are attached to acid labile protecting groups, is beneficial for having crosslinkable functionalities [0013], which would have been beneficial for modifying mechanical properties of a composition comprising Desbois’s copolymer, that the at least one acid activated crosslinker is beneficial for being at least one acid activated crosslinker [0013], which would have been beneficial for providing crosslinking of Robinson’s at least one polymer, and that the at least one photoacid generator is beneficial for being a photoacid generator [0013], which would have been beneficial for being acid that would have been beneficial for activating Robinson’s at least one acid activated crosslinker and for decomposing Robinson’s acid labile protecting groups, and that the at least one acid activated crosslinker is beneficial for comprising a polymer and for being an oxetane [0018], which would have been desirable in the presence of Desbois’s copolymer because Desbois teaches that in the process, oxetanes are polymerized with comonomers to copolymers by anionic polymerization [0016].
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Desbois et al. (EP 1956037 A1, machine translation in English used for citation) in view of Robinson et al. (US 2018/0246408 A1) as applied to claim 12, and further in view of Onishi et al. (US 2017/0088672 A1).
Regarding claim 14, Desbois in view of Robinson renders obvious the composition of claim 12 as explained above.
Desbois does not teach that the composition of claim 12 further comprises a thermal acid generator. However, Onishi teaches a thermal acid generator [0080] that is present in a photosensitive resin composition [0079] further comprising a polymer [0008] comprising a structural unit [0006] comprising an epoxy ring or an oxetane ring [0007]. Desbois and Onishi are analogous art because both references are in the same field of endeavor of a composition comprising a polymer that is derived from an epoxy or an oxetane. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to combine Onishi’s thermal acid generator with Desbois’s copolymer that is made by Desbois’s process in which oxetanes are polymerized with comonomers to copolymers by anionic polymerization. The proposed modification would read on the composition of claim 12, further comprising a thermal acid generator as claimed. One of ordinary skill in the art would have been motivated to do so because Onishi teaches that the thermal acid generator is beneficial for being a thermal acid generator, for being useful in combination with a photoacid generator [0080], which would have been desirable in combination with Robinson’s at least one photoacid generator, because Onishi teaches that the thermal acid generator is beneficial for being useful [0080] in a photosensitive resin composition [0079] further comprising a polymer [0008] comprising a structural unit [0006] comprising an epoxy ring or an oxetane ring [0007], which would have been desirable in combination with Desbois’s copolymer because Desbois teaches that in the process, oxetanes are polymerized with comonomers to copolymers by anionic polymerization [0016].
Response to Arguments
Applicant’s arguments with respect to claims 1-9 (see p. 4-6, filed 02/05/2006) have been considered but are moot because claims 1-9 are canceled.
Applicant’s arguments with respect to claim 12 (see p. 4-6, filed 02/05/2006) have been considered and are responded to by the new grounds of rejection that is set forth in this Office action.
Applicant's arguments filed 02/05/2026 have been fully considered but they are not persuasive. In response to the applicant’s argument that Desbois does not teach a solvent (p. 6), Desbois teaches the polymerization can be carried out in the presence of a solvent [0074], that after the polymerization is complete, i.e. after the monomers have been consumed, the polymerization is stopped [0075], that the reaction mixture obtained can then, if desired, be worked up to give the polymer in a manner known per se, e.g. by degassing in a degassing extruder or evaporator [0077], and that degassing separates residual monomers and oligomers formed, as well as volatile auxiliary and accompanying substances used in the polymerization and, in particular, the solvent [0077], which means that when Desbois’s polymerization is stopped, Desbois’s copolymer is optionally present with Desbois’s solvent, which reads on a composition comprising the copolymer and optionally a solvent. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to carry out Desbois’s polymerization in the presence of Desbois’s solvent. The proposed modification would read on a composition comprising the copolymer and a solvent as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for improving processability of Desbois’s copolymer during polymerization of Desbois’s oxetanes and comonomers because Desbois teaches that the polymerization can be carried out preferably in the presence of a solvent [0074], that after the polymerization is complete, i.e. after the monomers have been consumed, the polymerization is stopped [0075], that the reaction mixture obtained can then, if desired, be worked up to give the polymer in a manner known per se, e.g. by degassing in a degassing extruder or evaporator [0077], and that in the process, oxetanes are polymerized with comonomers to copolymers by anionic polymerization [0016].
In response to the applicant’s argument that Desbois does not teach a crosslinking agent a matrix polymer that comprises an acid-decomposable group in conjunction with the claimed copolymer, and that it is silent to the use of crosslinking agents and matrix polymers that contain acid-decomposable groups (p. 6), the rejection of claim 12 is not based on Desbois individually. The rejection is based on the combination of Desbois in view of Robinson rendering it obvious that the composition comprises the copolymer, a crosslinking agent, and a matrix polymer that comprises an acid-decomposable group as claimed. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to the applicant’s argument that the claimed invention does not require that the copolymer that comprises an oxetane be attached to the acid labile groups (p. 6), the rejection of the claims is not based on Robinson individually and is not based on Robinson teaching the claimed copolymer. The rejection is based on Desbois rendering obvious the composition comprises the claimed copolymer and is based on the combination of Desbois in view of Robinson rendering it obvious that the composition further comprises a crosslinking agent, and a matrix polymer that comprises an acid-decomposable group as claimed. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to the applicant’s argument that Onishi and Medsker do not make up for the deficiency of the combination of Desbois and Robinson (p. 6), the rejection of the claims is not based on Medsker, and the rejection of claim 12 is not based on Onishi. Onishi is only cited for the rejection of claim 14, which is based on the combination of Desbois in view of Robinson and Onishi. The combination of Desbois in view of Robinson do not have a deficiency with respect to claim 12 as explained above in the Office’s response to the applicant’s arguments against the combination of Desbois and Robinson.
Applicant’s arguments, see p. 7, filed 02/05/2026, with respect to the rejection of claims 1-9 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, and 7-9 of U.S. Patent No. 11,859,082 B2 have been considered but are moot because claims 1-9 are canceled.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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