Ex parte BAIER et al.

Board of Patent Appeals and Interferences

Jul 22, 1998

08078808 (B.P.A.I. Jul. 22, 1998)

Application for patent filed June 17, 1993. According to appellants, the1
application is a continuation of Application 07/981,903, filed November 23, 1992,
now abandoned, which is a continuation of Application 07/664,259, filed March 4,
1991, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARK E. BAIER, ROBERT D.
MILLER and GREGORY M. WALLRAFF
_____________
Appeal No. 95-1326
Application 08/078,8081
______________
ON BRIEF
_______________
Before RONALD H. SMITH, PAK and WARREN, Administrative Patent
Judges.
RONALD H. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-6,
all the pending claims in the application.
The subject matter relates to a method for forming a
positive tone resist image in a film of poly(C -C alkylphenyl) 2 12
Appeal No. 95-1326
Application 08/078,808
2
silane. Claim 1, the only independent claim, is illustrative of
the appealed claims and reads as follows:
1. A process for generating a positive tone resist
image in a film of poly(C -C alkylphenyl) silane comprising the2 12
steps of (a) forming a film of poly(C -C alkylphenyl) silane;2 12
(b) imagewise exposing the film to radiation at a wavelength of
about 200-500 nm. and (c) developing the image.
Claims 1-6 stand rejected under 35 USC § 103 over seven
references listed in the answer and in the brief. We reverse.
Appellants admit that the prior art discloses polysilanes
for use as a photoresist and teaches (methyl phenyl) silane as
the closest prior art compound for use as a photoresist. On page
5 of the brief, appellants concede that the examiner has
established a prima facie case of obviousness in view of the
prior art references. However, appellants urge that they have
submitted experimental comparative data which demonstrates that
the claimed process possesses an unexpected degree of
effectiveness compared to the closest compound disclosed by the
prior art. It is appellant's position that the comparative data
is sufficient to rebut the prima facie case of obviousness. We
agree.
The examiner acknowledges on page 7 of the answer that the
evidence "shows an unexpected result for the polymers of the
Appeal No. 95-1326
Application 08/078,808
3
instant invention ... as compared to the prior art polymers."
However, the examiner points out that the comparative evidence
utilizes a wavelength of exposure of 254 nm., whereas claim 1
recites exposing at a wavelength of about 200-500 nm. It is the
examiner's position that the evidence presented by appellants is
not commensurate in scope with the claims.
After carefully considering the examiner's position, we have
decided that the comparative evidence is sufficient to rebut the
prima facie case of obviousness. As noted by the Court in In re
Chupp, 816 F.2d 643, 646, 2 USPQ2d 1437, 1439 (Fed. Cir. 1987),
it is not required that a compound "must produce superior results
in every environment in which the compound may be used". Rather,
evidence that a compound is unexpectedly superior in one of a
spectrum of properties, as here, can be sufficient to rebut a
prima facie case of obviousness. Appellants have demonstrated
the superiority of the claimed compounds for use as photoresists.
Appeal No. 95-1326
Application 08/078,808
4
The decision of the examiner is reversed.
REVERSED
)
RONALD H. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 95-1326
Application 08/078,808
5
Robert B. Martin
IBM Corporation
Department K02/802
650 Harry Road
San Jose, CA 95120-6099