DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-4 are pending.
The foreign priority application No.2022-208497 filed on December 26, 2022 in Japan has been received and it is acknowledged.
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 5 of copending Application No. 19/035,087 (US 2025/0244666). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim the same resist composition and the same pattern forming process.
The copending Application No. 19/035,087 claims a resist composition comprising a hypervalent iodine compound, a carboxy-containing polymer, and a solvent, the hypervalent iodine compound having the formula (1):
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, wherein n is an integer from 0 to 5, R1 and R2 are each independently halogen or C1-C10 hydrocarbyl group which may contain a heteroatom, R1 and R2 may bond together to form a ring with the carbon atoms to which they are attached and the intervenient atoms, and R3 is a halogen or a C1-C40 hydrocarbyl which may contain a heteroatom, the carboxy-containing polymer comprising repeat units having the formula (2):
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, wherein RA represents a hydrogen atom, a halogen atom, a methyl group, or a trifluoromethyl group, XA represents a single bond, a phenylene group, a napththylene group, or *-C(=O)-O-XA1-, XA1 represents a saturated hydrocarbylene group having 1 to 10 carbon atoms, a phenylene group, or a naphthylene group, the saturated hydrocarbylene group optionally containing a hydroxy group, an ether bond, an ester bond, or a lactone ring, and “*” represents an attachment point to the carbon atom in the backbone (claim 1), same as in claims 1 and 2 of the instant application.
The copending Application No. 19/035,087 further claims a pattern forming process comprising the steps of applying the resist composition onto a substrate to form a resist film, exposing the resist film to EB or EUV, and developing the exposed resist film in a developer (claim 4), same as in claim 3 of the instant application.
The copending Application No. 19/035,087 further claims that the developer of an organic solvent (claim 5), same as in claim 4 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 9 of copending Application No. 19/070,239 (US 2025/0291251). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim the same resist composition and the same pattern forming process.
The copending Application No. 19/070,239 claims a resist composition comprising: (A) a base polymer comprising repeat units having an acid labile group and repeat units having a carboxy group, (B) an organic solvent, and (C) a hypervalent iodine compound having the formula (1):
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, wherein n is an integer from 0 to 5, R1 and R2 are each independently halogen or C1-C10 hydrocarbyl group which may contain a heteroatom, R1 and R2 may bond together to form a ring with the carbon atoms to which they are attached and the intervenient atoms, and R3 is a halogen or a C1-C40 hydrocarbyl which may contain a heteroatom (claim 1). This resist composition is equivalent to the resist composition in claim 1 of the instant application.
The copending Application No. 19/070,239 further claims that the repeat unit having a carboxy group is represent by the formula (b):
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, wherein RA represents a hydrogen atom, a halogen atom, a methyl group, or a trifluoromethyl group, Y1 represents a single bond, a phenylene group, a napththylene group, or *-C(=O)-O-Y11-, Y11 represents a saturated hydrocarbylene group having 1 to 10 carbon atoms, a phenylene group, or a naphthylene group, the saturated hydrocarbylene group optionally containing a hydroxy group, an ether bond, an ester bond, or a lactone ring, and “*” represents an attachement point to the carbon atom of the polymer main chain (claim 3), same as in claim 2 of the instant application.
The copending Application No. 19/070,239 further claims a pattern forming process comprising the steps of applying the resist composition to a substrate to form a resist film thereon, exposing the resist film to KrF excimer laser, ArF excimer laser, electron beam or extreme ultraviolet and developing the exposed the exposed resist film in a developer (claim 9), same as in claim 3 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 19/089,684 (US 2025/0314967). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim the same resist composition.
The copending Application No. 19/089,684 claims a resist composition comprising a hypervalent iodine compound which may be represented by the formula (2), a carboxy-containing polymer, and a solvent,
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, wherein k is an integer from 0 to 5, R4 and R5 are each independently halogen or C1-C10 hydrocarbyl group which may contain a heteroatom, R4 and R5 may bond together to form a ring with the carbon atoms to which they are attached and the intervenient atoms, and R6 is a halogen or a C1-C40 hydrocarbyl which may contain a heteroatom (claim 1). This resist composition is equivalent to the resist composition in claim 1 of the instant application.
The copending Application No. 19/089,684 further claims that the carboxy-group-containing polymer may comprise a repeating unit of formula (3-1):
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, wherein RA represents a hydrogen atom, a halogen atom, a methyl group, or a trifluoromethyl group, XA represents a single bond, a phenylene group, a napththylene group, or *-C(=O)-O-XA1-, XA1 represents a saturated hydrocarbylene group having 1 to 10 carbon atoms, a phenylene group, or a naphthylene group, the saturated hydrocarbylene group optionally containing a hydroxy group, an ether bond, an ester bond, or a lactone ring, and “*” represents an attachment point to the carbon atom in the backbone (claim 2), same as in claim 2 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 9, and 11 of copending Application No. 19/364,350 (US 2026/0118760). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim the same resist composition and the same pattern forming process.
The copending Application No. 19/364,350 claims a resist composition comprising a hypervalent iodine compound, a carboxy-group-containing polymer, and a solvent, wherein the carboxy-group-containing polymer includes a repeating unit of a carboxylic acid derivative of formula (1):
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, wherein RA represents a hydrogen atom, a halogen atom, a methyl group, or a trifluoromethyl group, XA represents a single bond, a phenylene group, a napththylene group, or *-C(=O)-O-XA1-, XA1 represents a saturated hydrocarbylene group having 1 to 10 carbon atoms, a phenylene group, or a naphthylene group, the saturated hydrocarbylene group optionally containing a hydroxy group, an ether bond, an ester bond, or a lactone ring, and “*” represents an attachement point to the carbon atom of the polymer main chain (claim 1).
The copending Application No. 19/364,350 further claims that the hypervalent iodine compound may be represented by the formula:
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wherein n1 may be 1, n2 may be 0, R1 and R2 each independently be a halogen atom or a hydrocarbyl group having 1 to 10 carbon atoms and optionally containing a heteroatom, R31 may be a halogen atom or a hydrocarbyl group with 1 to 40 carbon atoms and optionally containing a heteroatom (claim 2).
The resist composition in claims 1 and 2 of the copending Application No. 19/364,350 is equivalent to the resist composition in claims 1 and 2 of the instant application.
The copending Application No. 19/364,350 further claims a patterning process comprising the steps of: forming a resist film by using the resist composition, exposing the resist film by using a high-energy beam, and developing the exposed resist film by using a developer (claim 9). The high-energy beam may be an electron beam or an extreme ultraviolet ray (claim 11). This process is equivalent to the pattern forming process in claim 3 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Masuyama et al. (US 2015/0248052) in view of Hatakeyama et al. (US 2010/0055621).
With regard to claim 1, Masuyama et al. teach a photoresist composition comprising a resin having an acid-labile group and a compound of formula (I):
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(abstract). The photoresist composition further comprises a solvent (par.0451).
Masuyama et al. further teach that the compound of formula (I) may be represented by the formulas:
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(par.0036), which are hypervalent iodine compounds of formula (I) wherein n=0, R1 and R2 are hydrocarbyl groups with 10 or 6 carbon atoms.
Masuyama et al. fail to teach that the resin comprises a carboxy group, as required in claim 1.
Hatakeyama et al. teach a photoresist and a patterning process (abstract).
Hatakeyama et al. teach a base polymer which may comprise an adhesion group, such as a carboxy group, which may raise the glass transition temperature of the base polymer (Tg) and increase its mechanical strength (par.0055-0056). The base polymer may also comprise a repeating unit comprising an acid labile group (par.0079).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include a repeating unit comprising a carboxy group in the resin having an acid-labile group of Masuyama et al., in order to increase the mechanical strength of the resin.
Therefore, the photoresist composition of Masuyama modified by Hatakeyama is equivalent to the resist composition in claim 1.
With regard to claim 2, Hatakeyama et al. teach that a repeating unit comprising a carboxy group may be represented by the formulas:
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or
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(par.0062, par.0120, par.0122).
The repeating units above are recurring units of formula (2), wherein RA is a methyl group, XA is a single bond or a C10 hydrocarbylene group.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Masuyama et al. (US 2015/0248052) in view of Hatakeyama et al. (US 2010/0055621) as applied to claim 1 above, and further in view of Tanaka et al. (US 2008/0268370).
With regard to claim 4, Masuyama modified by Hatakeyama teach the resist composition in claim 1 (see paragraph 10 above).
Masuyama et al. teach that a photoresist pattern may be produced by the following steps:
-applying the photoresist composition on a substrate and drying to form a composition film;
-exposing the composition film; and
-developing the exposed composition film (par.0457-0462).
Masuyama et al. and Hatakeyama et al. fail to teach that the resist film may be exposed with electron beam or extreme ultraviolet radiation.
Tanaka et al. teach a positive resist and a patterning process (abstract).
Tanaka et al. teach a positive resist comprising a resin (A) which is a polymer with an acid labile group R2 (claim 1, par.0010) and further teach a process for forming a pattern comprising the steps of: applying the resist composition onto a substrate to form a resist coating, exposing the resist coating to high-energy radiation or electron beam through a photomask, and developing the exposed coating with a developer (par.0014, par.0290, par.0293).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to expose the resist composition of Masuyama modified by Hatakeyama with electron beam, because this exposure method is conventionally used for positive resist compositions (resist compositions comprising a resin with acid-labile groups).
With regard to claim 5, Masuyama et al. teach that the developer may be an organic solvent (par.0471)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Ohashi et al. (US 2023/0367211) teach a resist composition comprising a hypervalent iodine compound having at least two acyloxy groups, a carboxylic acid, and a solvent (abstract).
The hypervalent iodine compound has the formula (1):
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, wherein n is an integer from 0 to 5, R1 and R2 are each independently halogen or C1-C10 hydrocarbyl group which may contain a heteroatom, R1 and R2 may bond together to form a ring with the carbon atoms to which they are attached and the intervenient atoms, and R3 is a halogen or a C1-C40 hydrocarbyl which may contain a heteroatom, when n is an integer of 2 to 5, a plurality of R3 may be the same or different (par.0020-0023).
Kusama et al. (US 2026/0035589) teach a resist composition comprising a carboxy group-containing polymer, a hypervalent iodine compound, and a solvent (abstract). The hypervalent iodine compound may be represented by the formulas:
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(par.0094).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANCA EOFF whose telephone number is (571)272-9810. The examiner can normally be reached Mon-Fri 10am-6:30pm.
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/ANCA EOFF/Primary Examiner, Art Unit 1722
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