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 .
Claim Status
Claims 1-13 were filed on 5/28/2024. In a preliminary amendment filed on the same day, claims 3-6 and 9-10 were amended and claims 14-20 were newly added. Claims 1-20 are pending.
Priority
The instant application was filed on 5/28/2024 and claims the benefit of priority to:
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See filing receipt dated 10/17/2024. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1, 2, 12, and 13 are objected to because of the following informalities:
in claims 1, 2, 12, and 13, all instances of parentheses should be removed.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 9, and 12-20, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 2, formula (1), variable Z is defined as “Z represents an alkylene group having 1 to 6 carbon atoms, a divalent organic group containing a ring selected from the group consisting of an aromatic ring which may have a substituent, an aliphatic ring which may have a substituent, and a heterocyclic ring which may have a substituent, or a divalent organic group containing the ring and an alkylene group having 1 to 6 carbon atoms”. It is not clear what “the ring” refers to in the final option of “a divalent organic group containing the ring and an alkylene group having 1 to 6 carbon atoms”. Does that refer to any of the previously mentioned rings? Or does it refer to a specific ring? The same issue occurs in claim 12.
In claim 2, formula (2), variable Z is defined as “Z represents a ring selected from the group consisting of an aromatic ring which may have a substituent, an aliphatic ring which may have a substituent, and a heterocyclic ring which may have a substituent, or a trivalent organic group containing the ring and an alkylene group having 1 to 6 carbon atoms”. It is not clear what “the ring” refers to in the final option of “a trivalent organic group containing the ring and an alkylene group having 1 to 6 carbon atoms”. Does that refer to any of the previously mentioned rings? Or does it refer to a specific ring? The same issue occurs in claim 13.
Claim 9 recites “a method for manufacturing a substrate including a patterned resist film, the method comprising:
A step of forming a resist underlayer film by applying the composition for forming a resist underlayer film for i-line according to claim 1 onto a substrate containing copper on a surface of the substrate and baking the composition;
A step of forming a resist film by applying a resist onto the resist underlayer film and baking the resist;
A step of exposing the resist underlayer film and a semiconductor substrate coated with the resist; and
A step of developing the resist film after exposure and performing patterning.”
The “step of exposing the resist underlayer film and a semiconductor substrate coated with the resist” is not clear. The previous step recites that “step of forming a resist film by applying a resist onto the resist underlayer film and baking the resist”, therefore it appears as if the resist is applied to the resist underlayer film to form a resist film. It is then unclear how “the resist underlayer film” can be exposed to “a semiconductor substrate coated with the resist”, if the underlayer film is converted to a resist film in the previous step. Is the resist film on the semiconductor in addition to the resist film formed in the previous step?
The same issue occurs in claim 19.
Claims 14-18 and 20 are rejected for depending from an indefinite claim and failing to cure the deficiency.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 1 and 3-6 are is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Endo (WO2022/186231, published on 9/9/2022; US2023/0393479, published on 12/7/2023= English Equivalent).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
In synthesis example 4 in [0153], Endo teaches the following compound:
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. This compound corresponds to the reaction product between a compound of (A) in claim 1, wherein R1 is a hydrogen atom and n is 0 such that X is absent, and a polyglycidyl methacrylate polymer which is at least a bifunctional glycidyl ester type epoxy resin. Endo teaches this compound (1-4) is used to prepare a resist underlayer film-forming composition in comparative example 2 in [0160]. The composition comprises hexamethoxymethylmelamine, a crosslinking agent and, p-toluene sulfonic acid, a cross-linking agent and acid (claim 3).
The limitations “for forming a resist underlayer film for i-line” in claim 1 is an intended use which does not appear to further limit the structural limitations of the claimed composition. Likewise, claims 4-6 recite an intended use for the composition which does not appear to further limit the structural limitations of the composition Therefore, the example of Endo is interpreted to meet the intended use limitations. Also see MPEP 2111.02. Regarding claims 5 and 6, Endo teaches that the composition in [0160], comprising compound (1-4), is used to prepare a resist underlayer film and that the process comprises baking. See [0166-0168]. Also see MPEP 2131.
Subject Matter free from the Prior Art
The inventions of claims 2 and 7-20 appear to be free from the prior art. The closest prior art to the claimed invention are the teachings in Endo, as discussed above. However, the only example in Endo which falls within the claims is a comparative example (comparative example 2), which shows worse etching selectivity than the inventive compounds in Endo. See [0166-0168]. Therefore, there is no motivation to further modify the comparative example 2 compound (1-4) to arrive at the claimed compounds.
Conclusion
Claims 1-6, 9, and 12-20 are rejected. Claims 7, 8, and 10-11 are objected to but otherwise free from the prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
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/AMY C BONAPARTE/ Primary Examiner, Art Unit 1692
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