DETAILED CORRESPONDENCE
This Office action is in response to the amendment received June 4, 2026.
The rejection on the grounds of non-statutory double patenting as being unpatentable over U.S. Patent No. 11,054,742 and U.S. Patent No. 12,253,800 is withdrawn based on the submitted terminal disclaimer received June 4, 2026.
Prosecution is reopened due to art found for claims 10-20.
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 10, 14 and 16 are rejected under 35 U.S.C. 102 (a) (1) as being clearly anticipated by TSANG et al (2015/0353679).
The claimed invention recites the following:
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TSANG et al report a photoimageable polycarbonate polymer comprising a photoacid generator / thermal acid generators or thermally activated base generator and a solvent, as reported in para. [0093] and more specifically in para. [0098], namely trifluoromethane sulfonate and perfluoro butyl sulfonate, shown below:
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Specifically, Example 10 on page 18 discloses a composition comprising an additive GSID-26-1 formulated with a polycarbonate polymer:
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None of the claims above are allowed.
Claim 17 is rejected under 35 U.S.C. 102 (a) (1) as being clearly anticipated by KOMURO et al (2013/0189619).
The claimed invention is recited below:
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KOMURO et al anticipates the claimed material composition comprising a photoacid compound and a base component (A), see page 91, Table 1, Examples 1-4, below:
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wherein applicants are directed to page 91, para. [0899] for the Synthesis Example 2 wherein triphenylsulfonium N-[2-adamantan-1-ylcarbonyloxyethyl ] trifluoromethanesulfonamide is disclosed as seen below:
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No claims are allowed.
Claims 11-13, 15, and 18-20 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 metallic photoresist, the ligands and photobase generator of claims 11-13.
Likewise, claims to the sulfonium of claim 15, the solvent of claim 18 and the photobase generator of claim 19 and the quenchers of claim 20 are not disclosed in the cited references of record.
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
June 18, 2026
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