DETAILED CORRESPONDENCE
This Office action is in response to the application received August 29, 2018.
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 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 2025/0231482 A1 (OTOMO et al and 2024/0361690 A1 (HATAKEYAMA et al) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a resist composition comprising repeat units which are the same or similar based on the disclose groups. OTOMO et al claim repeating units having a side chain group wherein the aromatic ring contains an iodine substituent and a carboxylate end unit, see claim 1 below:
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And claim 3 recite a repeating unit comprising a repeating unit being a sulfonium or iodonium salt of a sulfonic acid bonded to a polymer main chain, see below:
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HATAKEYAMA et al claim a resist material comprising a repeating unit containing a sulfonium or iodonium salt of a monovalent aromatic carboxylic and claim 7 recites a repeating unit comprising a sulfonium or iodonium salt of a sulfonic acid, see the below:
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A patent to either of the U.S. Patent applications would extend the grant to the same or similar invention beyond the statutory length of 20 years from filing.
Claims 2 and 3 are met by the repeating units above in OTOMO et al and HATAKEYAMA et al.
Claims 4 to Z2B wherein at least one iodine is contained is met by claims 2 and 7 of OTOMO et al and HATAKEYAMA et al, respectively.
Claims 5-8 are met in claims 5-7 or OTOMO et al and claims 5-9 of HATAKEYAMA et al.
Claims 9-17 recite a resist composition which is recited in OTOMO et al and HATAKEYAMA et al.
Claims 18-20 to a pattern process are seen in claims 10-12 of OTOMO et al and claims 12-13 of HATAKEYAMA et al.
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive compositions to duplicate the resist composition of OTOMO et al or HATAKEYAMA et al with the reasonable expectation of having a same or similar invention which improperly extends the grant to the claimed resist composition and process of forming a pattern.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,953,832. Although the claims at issue are not identical, they are not patentably distinct from each other because the U.S. Patent claims a resist composition comprising repeat units which are the same or similar based on the disclosed groups.
HATAKEYAMA et al claim repeating units having a side chain group wherein the aromatic ring contains an iodine substituent and a carboxylate end unit, see claim 1 below:
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A patent to either of the U.S. Patent application would extend the grant to the same or similar invention beyond the statutory length of 20 years from filing.
Claims 2-4 to the repeating unit -b are met by claim 6 of HATAKEYAMA et al by reciting the claimed repeating unit having a sulfonium or iodonium salt of a sulfonic acid with Z3 meeting Z2B of claim 4, see below:
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Claims 5 and 6 are met by claim 4 in HATAKEYAMA et al which disclose acid-labile containing repeating units, see below:
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Claim 7 is met by claim 5 of HATAKEYAMA et al for the repeating units having an adhesive group selected from the group consisting of hydroxy, carboxy, lactone ring, carbonate bond, etc.
Claims 8-17 to a resist composition are the same as the recited claims from HATAKEYAMA et al, claims 1-10
Claims 18 and 19 to the process are met by claims 11 and 12 in HATAKEYAMA et al.
It would have been prima facie obvious to one of ordinary skill in the art of photosensitive compositions to duplicate the resist composition of HATAKEYAMA et al with the reasonable expectation of having a same or similar invention which improperly extends the grant to the claimed resist composition and process of forming a pattern.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
HATAKEYAMA et al (10,871,711) disclose resist compositions comprising photoacid generators having aromatic groups with iodine substituents and a repeating unit having sulfonium or iodonium salts of sulfonic acid.
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.
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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 28, 2026
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