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 .
Claims 1-5 are pending.
The foreign priority application No. 2024-013007 filed on January 31, 2024 in Japan has been received and it is acknowledged.
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 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, and 9 of copending Application No. 19/070,239 (US 2025/0291251). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim the same resist compositions and the same laminates.
The copending Application No. 19/070,239 claims a resist composition comprising (A) a base polymer comprising a repeating unit having a carboxy group, (B) an organic solvent, and (C) a hypervalent iodine compound of formula (I):
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, wherein n is an integer from 0 to 5, R1 and R2 are each independently halogen or a C1-C10 hydrocarbyl group which may contain a heteroatom, R1 and R2 may bond together to form a ring which the carbon atoms to which they are attached and the intervenient atoms, and R3 is a halogen or a C1-C40 hydrocarbyl group which may contain a heteroatom (claim 1).
The copending Application No. 19/070,239 further claims that the repeat unit having a carboxy group is represented by formula (b):
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, wherein RA is hydrogen, fluorine, methyl or trifluoromethyl, Y1 is a single bond, phenylene group, naphthylene group, or *-C(=O)-O-Y11, Y11 is a C1-C10 saturated hydrocarbylene group which may contain at least one selected from a hydroxy moiety, ether bond, ester bond, and a lactone ring (claim 3).
The copending Application No. 19/070,239 further claims that the polymer may comprises repeat units of formula (c2):
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, wherein RA is hydrogen, fluorine, methyl or trifluoromethyl, Y2 may be a single bond, b=1 or 2, c may be 0 (claim 4), which is a repeat unit of formula (3) in claim 1, wherein a=0, b=1 or 2, R11 is a hydroxy group.
The resist composition in claims 1, 3, and 4 of the copending Application No. 19/070,239 is equivalent to the resist composition in claim 1 of the instant application.
The copending Application No. 19/070,239 further claims that the resist composition forms a resist layer on a substrate (claim 9). This the equivalent to the laminate in claim 2 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US 2021/0181628) in view of Hatakeyama et al. (US 2010/0055621).
With regard to claim 1, Nguyen et al. teach a resist composition comprising a hypervalent iodine compound of Chemical Formula 1 and a polymer (par.0025).
The hypervalent iodine compound of Chemical Formula 1 may be represented by the formula M1:
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(par.0040), which is a hypervalent iodine compound of formula (1) in claim 1, wherein n=0, R1 an R2 are C1 hydrocarbyl groups.
The polymer may be represented by the formula:
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(par.0031), which is a polymer comprising a repeating unit of formula (3) in claim 1, wherein RA is a hydrogen atom, a=0, b=1, and R11 is a hydroxy group.
The second repeating unit of the polymer above is a repeating unit comprising an acid labile group.
Nguyen et al. fail to teach that the polymer comprises a carboxy group, as required in claim 1.
Hatakeyama et al. teach a photoresist and a patterning process (abstract).
Hatakeyama et al. teach a base polymer which may comprise an adhesion group, such as a carboxy group, which may raise the glass transition temperature of the base polymer (Tg) and increase its mechanical strength (par.0055-0056). The base polymer may also comprise a repeating unit comprising an acid labile group (par.0079).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include a repeating unit comprising a carboxy group in the polymer of Nguyen et al., in order to increase the mechanical strength of the resin.
Hatakeyama et al. teach that a repeating unit comprising a carboxy group may be represented by the formulas:
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or
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(par.0062, par.0120, par.0122).
The repeating units above are recurring units of formula (2) in claim 1, wherein RA is a methyl group, XA is a single bond or a C10 hydrocarbylene group.
Hatakeyema et al. further teach that the resist composition further comprises an organic solvent (par.0092).
Therefore, the resist composition of Nguyen modified by Hatakeyama is equivalent to the resist composition in claim 1.
With regard to claims 2 and 3, Nguyen et al. teach a resist layer (300) formed on a lower layer (200) formed on a substrate (100)(fig.5, par.0078-0079, par.0088). The lower layer (200) is equivalent to the “underlying film between the substrate and the resist film” in claim 3.
With regard to claim 4, Nguyen et al. teach a process comprising the steps of:
-applying the resist composition on top of the lower layer (200) formed on the substrate (100), and baking to form a resist film (300) (fog.5, par.0078-0079);
-exposing the resist film (300) to light, such as electron beam or extreme ultra violet to obtain exposed portions (310) and unexposed portions (320)(fig.6, par.0080-0082); and
-developing to remove the unexposed portions (320) and to form the resist pattern (300P) (fig.7, par.0083).
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al. (US 2013/0288180) in view of Masuyama et al. (US 2015/0248052).
With regard to claim 1, Hatakeyama et al. teach a polymer comprising recurring units (a) of acid labile group-substituted hydroxystyrene having the general formula (2):
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, wherein R1 is methyl, ethyl propyl, vinyl or ethynyl, the circle designates optionally bridged C1-C12 cycloalkyl group which may contain a double bond, R2 is hydrogen or a straight, branched or cyclic C1-C4 alkyl group, and m is an integer of 1 to 4 (par.0026-0027).
The recurring unit (a) of acid labile group-substituted hydroxystyrene having the general formula (2) of Hatakeyama et al. is a repeat unit of formula (3) in claim 1, wherein RA is hydrogen, a=0, b=1, R11 is -O-R11G, R11G is a C2-C15 hydrocarbyl group.
Hatakeyama et al. further teach that the polymer may further have polymerized therein recurring units (e) having an adhesive group, and a recurring unit (e) may be derived from the monomer:
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(par.0055-0056), which is a repeat unit of formula (2) in claim 1, wherein RA is hydrogen and XA is a single bond.
Hatakeyama et al. further teach a positive resist composition comprising the polymer and an organic solvent (par.0032-0033), but fail to teach that the resist composition comprises a hypervalent iodine compound of formula (1) in claim 1.
Masuyama et al. teach a photoresist composition comprising a resin having an acid-labile group., an acid generator, and a compound of formula (I):
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(abstract, par.0005).
The photoresist composition comprising a compound of formula (I) can show a large focal margin (DOF) when a photoresist pattern is formed (par.0041).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include a compound of formula (I) of Masuyama et al. in the positive resist composition of Hatakeyama et al., in order to increase the focal margin (DOF) of the resist pattern
Masuyama et al. further teach that the compound of formula (I) may be represented by the formula:
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(par.0036, par.0492), which is a hypervalent iodine compound of formula (I) in claim 1, wherein R1 and R2 are C10 hydrocarbyl groups, and n=0.
Therefore, the positive resist composition of Hatakeyama modified by Masuyama is equivalent to the resist composition in claim 1 of the instant application.
With regard to claims 2 and 3, Hatakeyama et al. teach that the positive resist composition is applied onto a substrate and it is dried to form a resist film (par.0099). The substrate may include an antireflective coating (par.0099), which is equivalent to the “underlying film between the substrate and the resist film” in claim 3.
With regard to claims 4 and 5, Hatakeyama et al. teach a process comprising the steps of:
-applying the positive resist composition onto a substrate having an antireflective coating formed thereon and drying to form a resist film;
-exposing the resist film with radiation such as EB or EUV; and
-developing the exposed resist film (par.0099-0101).
The developer may be an organic solvent and a negative pattern is formed (par.0105).
Conclusion
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/ANCA EOFF/Primary Examiner, Art Unit 1722
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