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 .
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.
Claim(s) 1-8, is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by U. S. Patent Application Publication No. 2018/0046086 (hereinafter referred to as Waller).
Waller, in the abstract, and in [0004], discloses a composition for removing edge beads from resist composition that comprises metal, and Waller, in [0014], discloses that the metal-containing patterning resist are treated with an organic solvent and carboxylic acid containing composition for the removal of edge beads. Waller, in [0019], discloses that the edge bead removal solution includes an organic solvent, and an additive such as an acid (organic acid) wherein the organic acid can be oxalic acid, and the edge bead removal solution includes at least about 50 wt.% to 90 wt.% of organic solvent and the additive in the removal solution (organic acid) can be included in an amount of at least 20 wt.%. Waller teaches the same claimed composition used for the same claimed purpose, wherein the composition includes the same claimed components viz., organic solvent and organic acid such as oxalic acid, wherein the organic acid component is the same claimed acid recited and is present in the removal solution in the same claimed quantity, and will inherently possess the claimed hydrophilicity/hydrophobicity degree recited as the AlogP3 (claims 1-4). Waller in [0017], discloses that the resist processed with the edge bead rinse can be a metallic resist such as RnSnX4-n, wherein n can be 1, and R is a hydrocarbyl group (alkyl, cycloalkyl, alkenyl etc.), and the ligand X can be RCOO⁻, or RO⁻, and is the same as the claimed R2 to R4 recited i.e., the metal-containing resist includes alkyl tin oxo and alkyl tin carboxyl groups and is the same claimed structure recited in claims 5-6. Waller in [0005], and [0039], discloses a patterning process that includes coating the metal containing resist on the wafer, and subjecting the resist coated substrate to rinsing using EBR solution wherein the EBR is coated along the edge of the wafer as illustrated in figure 1, after the coating of the EBR solution, drying the wafer. Waller, discloses that baking of the wafer or thermal processing occurs after the EBR processing. Waller in [0013]-[0014], discloses that the after the completion of the EBR (that includes drying and subsequent thermal processing) a patterning of the wafer using EUV light is performed ( i.e., exposing and developing the resist to form resist patterns) (claim 7). Waller in lines 24-26 of [0014], discloses that following the patterning of the resist another edge bead removal can be performed (i.e., coating the edge of the wafer with EBR after patterning the resist) (claim 8).
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 1-8, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, and 9-11, of copending Application No. 17/858,921 (USPGPub. No. 2023/0038110). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6, of copending Application No. 17/858,921 (USPGPub. No. 2023/0038110), discloses a composition for removing edge beads from metal containing resist wherein the composition comprises the claimed content of organic solvent and the same claimed compound viz., hinokitiol in claim 6, tropolone or hinokitiol in claims 2-6, and is the same claimed compound recited in the instant claims, and will inherently possess the claimed ALogP3 value, and thereby fully encompasses claims 1-5 of the instant application. Claim 9-11 of copending Application No. 17/858,921 (USPGPub. No. 2023/0038110), discloses the same claimed metal compound in the metal-containing resist and is used in the patterning process in the same claimed manner that includes conducting an edge bead rinse followed by drying and heating and subsequent patterning of the resist, and further treating the patterned resist-coated substrate with another edge bead removal process and thereby full encompasses claims 6-8 of the instant application
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, and 7-8, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-7 of now allowed U. S. Patent Application No. 18/061,859 (USPGPub. No. 2023/0288799). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-2, of now allowed U. S. Patent Application No. 18/061,859 (USPGPub. No. 2023/0288799) discloses composition A for removing edge beads from metal containing resist coated on a substrate, wherein the composition includes the claimed content of organic solvent (claim 2) and the same claimed compound viz., butyl phosphonic acid and vinyl phosphonic acid and is the same claimed compound recited in the instant claims and will inherently possess the claimed ALogP3 value, and thereby fully encompasses claims 1-5 of the instant application. Claims 1-2, and 6-7 of now allowed U. S. Patent Application No. 18/061,859 (USPGPub. No. 2023/0288799) discloses method of forming pattern using the metal-containing resist in the same claimed manner of conducting an edge bead rinse using the same claimed composition, followed by drying and heating and a subsequent patterning of the resist, and further treating the patterned resist-coated substrate with another edge bead removal process and thereby full encompasses claims 7-8 of the instant application
Claim 1-7, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, and 11-12 of copending Application No. 18/578,627 (USPGPub. No. 2024/0319601). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6, of copending Application No. 18/578,627 (USPGPub. No. 2024/0319601), discloses a composition for removing edge beads from metal containing resist wherein the composition includes the claimed content of organic solvent and the same claimed compound in the same claimed content viz., butyl phosphonic acid and/or vinyl phosphonic acid and is the same claimed compound recited in the instant claims and will inherently possess the claimed ALogP3 value, and thereby fully encompasses claims 1-5 of the instant application. Claims 11-12, of copending Application No. 18/578,627 (USPGPub. No. 2024/0319601), discloses the same claimed metal compound in the metal-containing resist and is used in a method of forming patterns that includes conducting an edge bead rinse on the metal-containing resist-coated substrate, followed by drying and heating and the subsequent patterning of the resist, and thereby full encompasses claims 6-7 of the instant application
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daborah Chacko-Davis whose telephone number is (571) 272-1380. The examiner can normally be reached on 9:30AM-6:00PM EST Mon-Fri. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-272-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DABORAH CHACKO-DAVIS/Primary Examiner, Art Unit 1737 June 25, 2026.
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