DETAILED CORRESPONDENCE
This Office action is in response to the RCE received June 22, 2026.
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 19-22, 24-28 and 30-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,242,189 and claims 1-18 of U.S. Patent No. 12,013,635 in view of MEYERS et al (20107/0102612).
MEYERS et al disclose alcohol solvents with tin alkoxide metal ligands as seen in para. [0042] and [0043] wherein the formation of the hydrolyzed organotin alkoxide release alcohol when hydrolyzed by water and can be dissolved in a protic solvent such as an alcohol as taught to the skilled artisan for the coating composition.
The claims of the current application are generic to the claims of U.S. Patent 12,242,189 and 12,013,635 wherein the other components of the reaction are not recited, but their presence is necessary to form the organotin compound with hydrolyzable groups. The claim is in essence a product-by-process claim wherein the final product of the reaction of the compound of Chemical formula (I) would be the organotin compound with hydrolysable group defined as X.
It would have been prima facie obvious to one of ordinary skill in the art of metal containing photosensitive compositions to add alcohol as a solvent as taught by MEYERS et al with the reasonable expectation for an organometal tin containing composition having high resolution at a relatively low radiation does and is useful for EUV patterning.
Although the claims at issue are not identical, they are not patentably distinct from each other as recited above and would extend the grant to an obvious invention beyond the 20-year term from filing.
The rejection is repeated wherein the ODP continues to extend the grant of the two cited U.S. Patents above due to the product-by-process claims wherein the compounds derived from the reaction of Chemical Formula 2 would yield a product that would be the same as those claimed in the U.S. Patents namely, being Chemical Formula 1.
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 19-22, 24-28, and 30-37 are rejected under 35 U.S.C. 103 as being unpatentable over MEYERS et al (2017/0102612)).
The claimed invention now recites the following:
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526
714
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MEYERS et al disclose a tin containing composition comprising a precursor as prepared from Example 4, page 15, para. [0122] to [0128] and reported in Example 5 comprising the BuSn (NEt2)3 meeting the claimed Chemical Formula 2 above in claim 19. The composition comprises a solvent, wherein the water would come from the water vapor as reported in para. [0008]:
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386
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434
370
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.
The products from the precursor compound of Chemical Formula 2 would be the same or similar to those disclosed in MEYERS et al whether the water came from vapor or liquid water since the claim recites a derived product from the compound of Chemical Formula 2.
With respect to the method claim 31, Example 5 disclose a patterning process wherein the coating compositions are deposited on a silicon wafers, exposed to EUV light, post-exposure baked and then contacted with 5-heptanone to form a negative image. Applicants are directed to para. [0100] wherein the pattern process can be followed by an etching step to transfer the pattern to the substrate, see below:
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It would have been prima facie obvious to one of ordinary skill in the art of organometallic compositions having a tin compound derived from t-Bu Sn (Et2 )3 dissolved in a solvent and contacted with water vapor, exposed and developed to have patterned images which can be transferred to the substrate with the reasonable expectation of same or similar results for high patterns with low LWR for high-integration and improved circuit function.
The rejection is repeated wherein MEYERS et al disclose alcohol solvents in a reaction with a compound derived from the same organotin precursor, t-Bu Sn (Et2 )3 . This would yield the same product suitable for formation of a photoresist pattern when exposed to deep UV radiation as reported in paras. [0042] and [0043] wherein the formation of the hydrolyzable organotin alkoxide release alcohol when hydrolyzed by water and can be dissolved in a protic solvent such as an alcohol as taught to the skilled artisan for the coating composition.
It would have been prima facie obvious to one of ordinary skill in the art of metal containing photosensitive compositions to add alcohol as a solvent as taught by MEYERS et al with the reasonable expectation of success for forming an organometal tin containing hydrolyzable ligands having high resolution at a relatively low radiation dose and is useful for EUV patterning.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JIANG et al (2023/0143592) is cited to disclose the stability of an organotin composition with the addition of water a content of 100 ppm to 10000 ppm.
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 on 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 a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
June 27, 2026
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