DETAILED CORRESPONDENCE
This Office action is in response to the election received June 23, 2026.
Applicant’s election without traverse of Group I, claims 1-16 and 19-21 in the reply filed on June 23, 2026 is acknowledged.
Claims 17-18, 22 and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 June 23, 2026.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-16 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of MARANGONI et al (2020/0356001 A1), NISHIMURA et al (2016/0334702 A1) and LI et al (2013/0137038 A1).
The claimed invention recites the following:
PNG
media_image1.png
420
638
media_image1.png
Greyscale
MARANGONI et al report a photoresist composition comprising a sulfonium salt wherein any of the following structures as seen on page 5, para. [0072] for a few of the sulfonium cations that would be suitable for used in a photoresist composition:
PNG
media_image2.png
618
384
media_image2.png
Greyscale
Applicants are directed to page 6, para [0072] wherein the sulfonium salts of formula (I) are disclosed to have “excellent” solubility in organic solvents”, see below:
PNG
media_image3.png
266
366
media_image3.png
Greyscale
This disclosure provides clear teaching for the expected results of excellent solubility of the sulfonium salt having a cation of the structure of Formula (I) in organic solvents.
NISHIMURA et al (2016/0334702 A1) disclose onium salts for use in photoresist composition. Applicants are directed to page 68, compounds (B1-14), (B1-20) and (B1-22) disclosed below:
PNG
media_image4.png
786
762
media_image4.png
Greyscale
The highlighted salts structure disclose a oxathianium cations paired with known sulfonate anions, such that the skilled artisan would expect excellent solubility of the NISHIMURA et al photoacids in organic solvents due to the presence of the oxathianium cation.
LI et al is cited to disclose photoresist composition comprising sulfonium salt/PAG having the following structure cation/anion pairs on page 10, paragraph [0054], note the equivalent anions disclosed in the PAGs below:
PNG
media_image5.png
434
370
media_image5.png
Greyscale
Applicants are directed to the equivalence of the anion in the PAG ( H) of LI et al which is taught in NISHIMURA et al at (B1-16) and (B1-20) and (B1-22) wherein -OH and =O typical substituents which give similar results.
Seeing the teaching in MARANGONI et al for the excellent solubility of the Formula (I) salt, and the equivalent anions of NIHSIMURA et al and LI et al , the one of ordinary skill would expect excellent solubility in organic solvents when pairing the cation of MARONGONI et al with any of the anions of LI et al such as those in (H) and (J), especially (J) wherein the anion contain numerous fluorinated groups as those in MARONGONI et al.
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive composition to pair any of the cation groups of MARONGONI et al with conventional anions such as in LI et al, particularly those in (J) on page 10 due to their numerous fluorinated substituted carbons as in MARONGONI et al with the reasonable expectation of same or similar results for excellent solubility of the sulfonium salt having a cation of the structure of Formula (I) in organic solvents.
The comparative results in the specification have been considered, however the excellent solubility of the PAGs reported in the results is a known property such that it is not seen as an unexpected results.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
MARANGONI et al (2020/0209743 A1) is cumulative to MARONGONI et al ‘001 above for the disclose excellent solubility of the oxathianium containing PAGs in organic solvents, see para. [0067].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S CHU whose telephone number is (571)272-1329. The examiner can normally be reached M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached at telephone number 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
September 4, 2026
Prosecution Insights