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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 7-9 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 10-13 of U.S. Patent No. 12,259,653. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and patented claims are directed to compositions comprising a polymer and an onium salt capable of generating a carboxy group or a hydroxy group by radiation. Formula (I) of ‘653 when defined as: R is an acid-labile group, n is 1, and X+ is a sulfonium or iodonium cation encompasses the instantly claimed sulfonium and/or iodonium salt capable of generating a polar group selected from a carboxy group and a hydroxy group by radiation in an anion moiety.
Claims 7-9 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,429,024. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and patented claims are directed to compositions comprising a polymer and an onium salt capable of generating a carboxy group or a hydroxy group by radiation. Formula (I) of ‘024 when defined as: Ar1 is a group obtained by removing (m+n+2) hydrogen atoms from an aromatic ring of an arene having 6 to 30 carbon atoms, -OH and -COO- are bonded at ortho positions to each other on a same benzene ring on Ar1, m is an integer of 1 to 16, wherein in a case in which m is 1, RG represents a group represented by formula (V-1), a group represented by formula (V-2), or a group comprising a group represented by formula (V-3), n is an integer of 0 to 15, wherein in a case in which n is 1, RH represents a halogen atom or a substituted or unsubstituted monovalent hydrocarbon group having 1 to 20 carbon atoms, and M+ is a monovalent radiation-sensitive cation encompasses the instantly claimed sulfonium and/or iodonium salt capable of generating a polar group selected from a carboxy group and a hydroxy group by radiation in an anion moiety and having a ring structure.
Claims 7-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-8, and 15-20 of U.S. Patent No. 11,747,725. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and patented claims are directed to compositions comprising a polymer, a solvent, and an onium salt capable of generating a carboxy group or a hydroxy group by radiation. Formulae (2-1) to (2-4) and (2-6) to (2-10) of ‘725 encompass the instantly claimed sulfonium salt capable of generating a polar group selected from a hydroxy group by radiation in a sulfonate anion moiety bonded to a carbon atom being bonded to at least one fluorine atom and having a ring structure.
Claims 7-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 9,323,146. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and patented claims are directed to compositions comprising a polymer and an onium salt capable of generating a carboxy group or a hydroxy group by radiation. Formula (1-I) of ‘146, specifically formula (1-i) when defined as: n is an integer of 1 to 5; R′ and R″ each independently represent a hydrocarbon group having 1 to 10 carbon atoms, wherein R′ and R″ optionally taken together represent a ring structure by binding with each other, together with the carbon atom to which R′ and R″ bond; R3′ and R4′ each independently represent a fluorine atom or a perfluoroalkyl group, wherein in a case where R3′ and R4′ are each present in a plurality of number, a plurality of R3′s are identical to or different from each other, and a plurality of R4′s are identical to or different from each other; and M+ is represented by formula (2) encompasses the instantly claimed sulfonium salt capable of generating a polar group selected from a hydroxy group by radiation in a sulfonate anion moiety bonded to a carbon atom bonded to at least one fluorine atom or fluorinated hydrocarbon group and having a ring structure.
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 7-12, 14, and 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nemoto et al. (U.S. 2020/0393755). Corresponds to U.S. 11,429,024 above.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Nemoto et al. teaches a radiation-sensitive resin composition in Example 51 comprising polymer A-12, acid generating agent B-4, acid diffusion control agent C-17, polymer E-5, and organic solvents D-1 and D-4 [0281] wherein B-4 is the following:
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[0261] which is equivalent to a sulfonium salt capable of generating a polar group selected from a hydroxy group by radiation in a sulfonate anion moiety bonded to a carbon atom bonded to at least one fluorine atom and having a ring structure of instant claims 7-12; C-17 is the following:
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[0258] which is also equivalent to a sulfonium salt capable of generating a polar group selected from a carboxy group by radiation in both the cation moiety and the anion moiety where the anion moiety has a ring structure of instant claims 7-9 and 12; and polymer A-12 comprises monomers M-3, M-12, and M-18 [0253] which are the following:
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[0249] wherein compound (M-3), when polymerized, is equivalent to a repeating unit represented by formula (3) of instant claim 14 when R3 is an unsubstituted monovalent hydrocarbon group having 1 carbon atom, L3 is a single bond, and R4 is an unsubstituted monovalent hydrocarbon group having 15 carbon atoms; compound (M-12), when polymerized, is also equivalent to a repeating unit represented by formula (3) of instant claim 14 when R3 is an unsubstituted monovalent hydrocarbon group having 1 carbon atom, L3 is a single bond, and R4 is a substituted monovalent hydrocarbon group having 10 carbon atoms; and compound (M-18), when polymerized, is equivalent to a repeating unit represented by formula (4) of instant claim 15 when R5 is a hydrogen atom, L4 is a single bond, and Ar1 is a monovalent group having a substituted aromatic ring having 6 carbon ring members.
Claims 7-12, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maruyama (U.S. 2018/0299773). Corresponds to U.S. 11,747,725 above.
Maruyama teaches the radiation-sensitive resin composition (J-21) was prepared by mixing 100 parts by mass of the base resin (A-2), 17 parts by mass of the compound (1-1) and 17 parts by mass of the compound (2-1) as the radiation-sensitive acid generator, 2.5 parts by mass of the compound (C-2) as the acid diffusion controlling agent, and 4,280 parts by mass of (E-1) and 1,830 parts by mass of (E-4) as the solvent, and then filtering through a membrane filter having a pore size of 0.2 m [0366] wherein (2-1) is the following:
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[0345] which is equivalent to a sulfonium salt capable of generating a polar group selected from a hydroxy group by radiation in a sulfonate anion moiety bonded to a carbon atom bonded to at least one fluorine atom and having a ring structure of instant claims 7-12; and base resin (A-2) comprises compounds (M-1), (M-2), and (M-4) [0338] which are the following:
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[0334] wherein compounds (M-1) and (M-2), when polymerized, are equivalent to a repeating unit represented by formula (3) of instant claim 14 when R3 is an unsubstituted monovalent hydrocarbon group having 1 carbon atom, L3 is a single bond, and R4 is an unsubstituted monovalent hydrocarbon group having 8 or 13 carbon atoms respectively; and compound (M-4), when polymerized, is equivalent to a repeating unit represented by formula (4) of instant claim 15 when R5 is a hydrogen atom, L4 is a single bond, and Ar1 is a monovalent group having a substituted aromatic ring having 6 carbon ring members.
Claims 7-12, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Namai et al. (U.S. 9,323,146).
Namai et al. teaches a photoresist composition in Example 3, one hundred parts by mass of (A-2) as the polymer (A), 15.7 parts by mass of the acid generating agent (B-1) as the compound (B), 1.89 parts by mass of (D-1) as the acid diffusion control agent (D), 3,300 parts by mass of (E-1) and 1,400 parts by mass of (E-2) as the solvent (E) were mixed, and the obtained mixed solution was filtered through a filter with a pore size of 0.20 μm to prepare a photoresist composition (J-2) [col 47 lines 35-44] wherein (B-1) is the following:
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[col 43 line 56] which is equivalent to a sulfonium salt capable of generating a polar group selected from a hydroxy group by radiation in a sulfonate anion moiety bonded to a carbon atom bonded to at least one fluorine atom and having a ring structure of instant claims 7-12; polymer (A-2) was prepared in Synthesis Example 2 which comprises compounds (M-4) and (M-5) [col 46 lines 11-40] which are the following:
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[col 45 lines 1-10] wherein compound (M-5), when polymerized, is equivalent to a repeating unit represented by formula (3) of instant claim 14 when R3 is an unsubstituted monovalent hydrocarbon group having 1 carbon atom, L3 is a single bond, and R4 is an unsubstituted monovalent hydrocarbon group having 12 carbon atoms; and compound (M-4), when polymerized, is equivalent to a repeating unit represented by formula (4) of instant claim 15 when R5 is a hydrogen atom, L4 is a single bond, and Ar1 is a monovalent group having a substituted aromatic ring having 6 carbon ring members.
Claims 7-10 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsuchimura et al. (WO2019039290). Translation attached.
Tsuchimura et al. teaches an actinic ray-sensitive or radiation-sensitive resin composition in Example 4D comprising acid generator A-2, resin A2-1, basic compound E-15, crosslinking agent Cl-1 (claim 13), solvents S1, S2, and S3, and surfactant W-1 [0529] wherein acid generator A-2 is the following:
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[0485] which is equivalent to a sulfonium salt capable of generating a polar group selected from a hydroxy group by radiation in a sulfonate anion moiety and having a ring structure of instant claims 7-10 and 12; and resin A2-1 is the following:
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[0491] which are each equivalent to a repeating unit represented by formula (4) of instant claim 15 when R5 is a hydrogen atom, L4 is a single bond, and Ar1 is a monovalent group having a substituted aromatic ring having 6 carbon ring members. Tsuchimura et al. also teaches an actinic ray-sensitive or radiation-sensitive resin composition in Example 4C comprising acid generator A-2, resin A1-5, basic compound E-15, hydrophobic resin HR-1, solvents S1, S2, and S3, and surfactant W-1 [0526] wherein acid generator A-2 is the same as above (claims 7-10 and 12) and resin A1-5 is the following:
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[0489] wherein the left repeating unit is equivalent to a repeating unit represented by formula (3) of instant claim 14 when R3 is an unsubstituted monovalent hydrocarbon group having 1 carbon atom, L3 is a single bond, and R4 is an unsubstituted monovalent hydrocarbon group having 12 carbon atoms; and the middle repeating unit is equivalent to a repeating unit represented by formula (4) of instant claim 15 when R5 is a hydrogen atom, L4 is a single bond, and Ar1 is a monovalent group having a substituted aromatic ring having 6 carbon ring members.
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 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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Nemoto et al. (U.S. 2020/0393755) or Maruyama (U.S. 2018/0299773) or Namai et al. (U.S. 9,323,146) as applied to claim 7 above, and further in view of Koumura et al. (U.S. 2014/0220783).
With regard to claim 13, Nemoto, Maruyama and/or Namai teach the above compositions but do not teach a crosslinking agent.
However, Koumura et al. teaches a resist underlayer film-forming composition includes [A1] a polymer that has a glass transition temperature (Tg) of 0 to 180°C [0010], [B] an acid generator [0013], and it is preferable that the resist underlayer film-forming composition further include [C] a crosslinking agent (hereinafter may be referred to as "crosslinking agent [C]"). When the resist underlayer film-forming composition further includes the crosslinking agent [C], a crosslinking reaction of the polymer [A1] and/or the polymer [A2] is further promoted [0028].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant claims to modify the teachings if Nemoto, Maruyama and/or Namai to additionally include a crosslinking agent as taught by Koumura et al. and arrive at the instant claims through routine experimentation of combining equally suitable components for the sought invention in order to further promote the crosslinking reaction of the polymer.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Koumura et al. (U.S. 2014/0220783) in view of Namai et al. (U.S. 9,323,146).
Namai et al. teaches a pattern-forming method includes: (1) forming a resist underlayer film on a substrate using the resist underlayer film-forming composition; (2) forming a silicon-based oxide film on the surface of the resist underlayer film; (3) applying a resist composition to the surface of the silicon-based oxide film, followed by exposure, heating, and development to form a resist pattern; (4) sequentially dry-etching the silicon-based oxide film and the resist underlayer film using the resist pattern as a mask; and (5) dry-etching the substrate using the resist underlayer film dry-etched in the step (4) as a mask (further development) [0031] (claims 1, 4, and 6) in which radiation used for exposure is appropriately selected from visible rays, ultraviolet rays, deep ultraviolet rays, X-rays, electron beams, γ-rays, molecular beams, ion beams, and the like depending on the type of the acid generator included in the resist composition. It is preferable to use deep ultraviolet rays. It is more preferable to use KrF excimer laser light (wavelength: 248 nm), ArF excimer laser light (wavelength: 193 nm), F2 excimer laser light (wavelength: 157 nm), Kr2 excimer laser light (wavelength: 147 nm), ArKr excimer laser light (wavelength: 134 nm), or EUV light (wavelength: 13 nm, for example) [0151] (claim 3), and a developer used for development may be appropriately selected depending on the type of the resist composition. When the resist composition is a positive-tone chemically-amplified resist composition or a positive-tone resist composition that includes an alkali-soluble resin, an alkaline aqueous solution of sodium hydroxide, potassium hydroxide, sodium carbonate, sodium silicate, sodium metasilicate, ammonia, ethylamine, n-propylamine, diethylamine, di-n-propylamine, triethylamine, methyldiethylamine, dimethylethanolamine, triethanolamine, tetramethylammonium hydroxide, tetraethylammonium hydroxide, pyrrole, piperidine, choline, 1,8-diazabicyclo[5.4.0]-7-undecene, 1,5-diazabicyclo[4.3.0]-5-nonene, or the like may be used as the developer. An appropriate amount of a water-soluble organic solvent, an alcohol (e.g., methanol or ethanol), or a surfactant may be added to the alkaline aqueous solution. When the resist composition is a negative-tone chemically-amplified resist composition or a negative-tone resist composition that includes an alkali-soluble resin, an aqueous solution prepared by dissolving an alkali (e.g., inorganic alkalis such as sodium hydroxide, potassium hydroxide, sodium carbonate, sodium silicate, sodium metasilicate, and aqueous ammonia, primary amines such as ethylamine and n-propylamine, secondary amines such as diethylamine and di-n-butylamine, tertiary amines such as triethylamine and methyldiethylamine, alcohol amines such as dimethylethanolamine and triethanolamine, quaternary ammonium salts such as tetramethylammonium hydroxide, tetraethylammonium hydroxide, and choline, and cyclic amines such as pyrrole and piperidine) in water may be used as the developer [0153-0154] (claim 5). Namai et al. also teaches a resist underlayer film-forming composition includes [A1] a polymer that has a glass transition temperature (Tg) of 0 to 180°C [0010], [B] an acid generator [0013], [C] a crosslinking agent [0028], and the resist underlayer film-forming composition normally includes a solvent [0126] (claims 1, 7, and 13) wherein it is preferable that the polymer [A1] include at least one structural unit selected from the group consisting of the structural unit (I) represented by the formula (1), the structural unit (II) represented by the formula (2), and the structural unit (IV) represented by the formula (4) [0039] and a specific example of structural unit (I) includes the following:
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[0042] where R1 is a hydrogen atom, a fluorine atom, a methyl group, or a trifluoromethyl group [0040] which are equivalent to a repeating unit represented by formula (3) of instant claim 14 when R3 is a hydrogen atom or a (un)substituted monovalent hydrocarbon group having 1 carbon atom, L3 is a single bond, and R4 is a unsubstituted monovalent hydrocarbon group having 1-3 carbon atoms respectively; and a specific example of structural unit (II) includes the following:
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[0046] where R3 is a hydrogen atom, a fluorine atom, a methyl group, or a trifluoromethyl group [0045] which are equivalent to a repeating unit represented by formula (4) of instant claim 15 when R5 is a hydrogen atom or a (un)substituted monovalent hydrocarbon group having 1 carbon atom, L4 is a single bond, and Ar1 is a monovalent group having an unsubstituted aromatic ring having 6 or 12 carbon ring members respectively. Namai et al. further teaches the acid generator [B] is a component that generates an acid upon exposure or heating. When the resist underlayer film-forming composition includes the acid generator [B], a crosslinking reaction of the polymer [A1] is promoted, for example. The acid generator [B] may be included in the resist underlayer film-forming composition as a compound (described below), and/or may be included in the polymer. Examples of the acid generator [B] include onium salt compounds, N-sulfonyloxyimide compounds, and the like. It is preferable to use an onium salt compound as the acid generator [B]. Examples of the onium salt compounds include sulfonium salts, tetrahydrothiophenium salts, iodonium salts, and the like [0095-0097]. Namai et al. does not teach an onium salt capable of generating a polar group selected from a carboxy group and a hydroxy group by radiation or heat.
However, Koumura et al. teaches a compound represented by formula (1-i) [col 6 lines 65-67] and a specific example includes the following compound (B-1):
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[col 43 line 56] which is equivalent to a sulfonium salt capable of generating a polar group selected from a hydroxy group by radiation in a sulfonate anion moiety bonded to a carbon atom bonded to at least one fluorine atom and having a ring structure of instant claims 1, 2, and 7-12. Koumura et al. also teaches an acid generating agent contains the compound according to the still another aspect of the present invention [col 7 lines 25-27] and when the compound represented by the above formula (1-i) has the specific structure, the resolving ability and LWR performance of a photoresist composition that contains the compound may be improved [col 7 lines 21-24].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Namai et al. to include other known acid generators such as those taught by Koumura et al. and arrive at the instant claims through routine experimentation of substituting equally suitable components for the sought invention in order to improve resolving ability and LWR.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 2021/0200098, U.S. 2021/0173309, U.S. 2020/0192220, U.S. 2017/0153545, U.S. 2015/0093709, U.S. 2013/0022928, U.S. 2012/0258405, U.S. 2012/0219912, JP2017227810, JP2014224984, and JP2013166749.
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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