DETAILED CORRESPONDENCE
This Office action is in response to the amendment submitted November 26, 2025.
The rejection for claims 1-6 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,135,502 is withdrawn in view of the terminal disclaimer submitted on November 26, 2025 which overcomes the nonstatutory double patenting rejection over U.S. Patent 12,135,502.
The rejection for claims 7-14 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. U.S. Patent 12,085,855 is withdrawn in view of the terminal disclaimer submitted on November 26, 2025.
New grounds for rejection are made below based on new prior art found.
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(s) 1, 3, and 4 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by HATAKEYAMA et al (2019/0113846).
The claimed invention recites the following:
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HATAKEYAMA et al anticipates the claimed invention at Example 1-1, for Polymers 1-4 disclosed on page 77, para. [0164] to [0170] wherein the monomer unit having a radical-active functional group and an acid labile group is shown below:
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The monomer is disclosed as the penultimate monomer at the bottom left of page 39 as the precursor/monmer unit for making the copolymer/resin, see below:
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Claims 1 recites a resin comprising a monomer unit having a radical-active functional group and an acid labile group wherein the radical-active functional group is an alkene group or an alkyne group and a linker group connecting the alkene group to the resin, see the numbered boxed section of the monomer below :
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1-alkene group
2- acid labile group
3- linker group.
Claim 3 for the acid labile group being a C1- C20 linear, branched, or cyclic alkyl group is met by the tetracyclo [6.2.1.13,6.02,7] dodecane structure above.
Claim 4 wherein the radical-active functional group is attached to the acid labile group is met by the structure above, see the structure above with the attached groups.
None of the listed claims above are allowed.
Claims 2, 5 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
None of the prior art references of record disclose the recites monomer units recited in claim 2, 5 and 6.
Claims 7-20 are seen as allowable over the prior art of record.
None of the prior art references of record disclose the claimed method of claims 7 and 15 comprising the monomer units selected from the Markush list in those claims.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
SOYANO et al (2003/0203307) disclose copolymers having monomer units meeting claim 1 for the alkene group, the acid labile group and the linker, see pages 6-9, structures (i-1) thru (i-33), such as (i-1) here:
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SHIMA et al (7,144,675) disclose radiation sensitive composition having resin meeting claim 1 for the alkene group, an acid labile group and a linker group from claim 1, see the abstract.
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, Mark Huff, can be reached at telephone number 571-272-1385. 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.12,135,502
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
March 5, 2026