10466473 (B.P.A.I. Mar. 27, 2012)

Ex Parte Iwai et al

Board of Patent Appeals and InterferencesMar 27, 2012

10466473 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TAKESHI IWAI, NAOTAKA KUBOTA, SATOSHI FUJIMURA, and HIDEO HADA __________ Appeal 2010-007552 Application 10/466,473 Technology Center 1700 ____________ Before PETER F. KRATZ, MICHAEL P. COLAIANNI, and GEORGE C. BEST, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-3, and 5-22. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appellants’ invention is said to be directed to a positive type resist composition suitable for use in a process using a wavelength of no more than 200 nm such as an ArF excimer laser (Spec. 1). App App 1. in a p acid and is a c (I) sh wher eal 2010-0 lication 10 Claim 1 A positiv (A) a res rincipal c ; (B) an ac (C) an o opolymer (a as an aci dissoluti methyl-2 (a a lactone (a a hydrox wherein own belo ein, R1 re 07552 /466,473 is reprodu e type res in compon hain, for w id genera rganic solv including 1) a struct d dissocia on inhibiti -adamanty 2) a struct containin 3) a struct yl group c said struct w: presents an ced below ist compo ent with o hich solub tor compo ent compo ural unit d ble dissolu ng group w l group; ural unit d g polycyc ural unit d ontaining ural unit ( ethyl gro 2 : sition com nly units d ility in alk nent which nent, whe erived from tion inhib hich is el erived from lic group; erived from polycyclic a1) is repr up, prising: erived fro ali increa generates rein said r an acryl iting group iminated m an acryl and an acryl group, esented by m an acry ses under acid on e esin comp ate ester co , a polycy ore easily ate ester co ate ester co a chemic late ester action of xposure; onent (A) mprising, clic than a 2- mprising mprising al formula App App comp below struc said unit is wi 1 2 3 1 The respo § 10 rejec Offic appe eal 2010-0 lication 10 said stru rising a la said stru and, whe tural unit structural (a2) is wit thin a rang Appellan . Claims 1 unpatent . Claims 1 unpatent . Claims 1 unpatent Examine nse to an 3 rejection tion has n e Action, aled by Ap 07552 /466,473 ctural unit ctone con ctural unit rein if a c (a2) and sa unit (al) is hin a range e from 10 ts appeal -3, and 5- able over 3-22 are r able over -3 and 5-1 able over r’s letter to administra was inadv ot been wi we unders pellants. (a2) is a u taining bic (a3) is rep ombined t id structur within a r from 20 to 50 mol the follow 11 are reje Uetani (US ejected un Fujimori ( 1 are reje Uetani.1 Appellan tive Board ertently le thdrawn. tand that t 3 nit derived ycloalkyl resented b otal of said al unit (a3 ange from to 60 mol% %. ing rejecti cted unde 2001/004 der 35 U.S US 6,692, cted under ts dated A remand a ft out of th Though th he § 103 r from an group, and y a chemi structura ) is deeme 30 to 60 m , and said ons: r 35 U.S.C 4070 A1, .C. § 102( 897 B2, is 35 U.S.C pril 15, 20 nd of reco e Final O e appeal is ejection ov acrylate es cal formul l unit (al), d 100 mo ol%, said structura . § 102(b) pub. Nov e) as bein sued Feb. . § 103(a) 10 mailed rd indicat ffice Actio taken fro er Uetani ter a shown said l%, then structural l unit (a3) as being . 22, 2001) g 17, 2004). as being in es that this n, but the m the Fina has been . l Appeal 2010-007552 Application 10/466,473 4 4. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Uetani in view of Fujimori. For reasons evident infra, we focus on claim 1 in the context of rejection (3). With regard to rejection (4), Appellants rely on arguments made regarding the rejections of claim 1 under 35 U.S.C. § 102 over Uetani or Fujimori (App. Br. 15). REJECTIONS (1) AND (2) ISSUE Did the Examiner reversibly err in finding that Uetani or Fujimori anticipate the claimed invention within the meaning of 35 U.S.C. § 102? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES The Examiner’s findings regarding Uetani and Fujimori are presented on pages 3 to 6 of the Answer. The Examiner finds that Uetani exemplifies combining methacrylate containing monomers with acrylate containing monomers and Fujimori exemplifies combining only methacrylate containing monomers to form the resin used in the resist composition (Ans. 3; 4-5). The Examiner finds that methacrylate refers to both acrylate and methacrylate compounds such that one of ordinary skill would readily envisage a terpolymer as exemplified in Uetani’s example 12 or Fujimori’s example 16 made solely from acrylate monomers (Ans. 4, 6). Appellants argue that Uetani and Fujimori fail to disclose a limited class of polymeric compounds having only units derived from an acrylate Appeal 2010-007552 Application 10/466,473 5 ester as required by claims 1 or 13 sufficient to anticipate the claimed invention (Ans. 9; 14-15). We do not disagree with the Examiner that Uetani and Fujimori teach positive type photoresist compositions that include general formulas where, if the substituents are selected correctly, an acrylate monomer would result. However, the Examiner fails to point to any portion of Uetani or Fujimori that teaches to put only acrylate monomers together to form the resin used in the photoresist. Net MoneyIN Inc. v. VeriSign Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (“[I]n order to anticipate under 35 U.S.C. § 102 [a prior art reference] must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim’” (citations omitted)). Indeed, as found by the Examiner, Uetani teaches using a blend of methacrylate and acrylate containing compounds as in Example 12. Fujimori teaches Example 16 as including only methacrylate containing monomers (Ans. 4, 6). Even though the various acrylate materials may be arrived at by correctly selecting the various substituents to arrive at the claimed invention, we note that the Examiner makes no finding that the class of compounds would have been limited as in In re Petering, 301 F.2d 676, 681 (CCPA 1962), so as to anticipate. We find the Examiner’s mere statement that “[t]he term (meth)acrylate conventionally refers to both the acrylate and methacrylate compounds” (Ans. 4) as a basis for finding anticipation to be lacking evidentiary support. On this record, the preponderance of the evidence favors Appellants’ argument that Uetani and Fujimori fail to describe the claimed invention Appeal 2010-007552 Application 10/466,473 6 within the meaning of § 102. We reverse the Examiner’s § 102 rejections over Uetani and Fujimori. REJECTIONS (3) AND (4) ISSUE Did the Examiner reversibly err in determining that the invention as recited in claim 1 would have been obvious over the teachings of Uetani as considered in light of Appellants’ evidence of secondary considerations? We decide this issue in the negative and denominate the rejection as a new ground in light of our additional analysis regarding Appellants’ evidence of unexpected results. FINDINGS OF FACT AND ANALYSIS Appellants argue that there is no reason to select acrylates for use in Uetani’s photoresist because Uetani does not discriminate between acrylates and methacrylates (App. Br. 6). Appellants contend that conventional knowledge in the art would not have motivated one skilled in the art to select acrylates because the glass transition temperature (Tg) of acrylates are not suitable for resists and that is why the prior art focuses on using methacrylates (App. Br. 7). Appellants argue that Uetani fails to recognize that methacrylates cause surface roughness problems or the benefits of using acrylates such that the prior art would have taught away from using acrylates (App. Br. 8). We have fully considered Appellants’ arguments and find ourselves in agreement with the Examiner. Appellants’ arguments that Uetani fails to discriminate between acrylates and methacrylates concede that Uetani Appeal 2010-007552 Application 10/466,473 7 teaches acrylate and methacrylates (App. Br. 8). Uetani further teaches that the resist may be made of both methacrylate and acrylate containing materials as found by the Examiner in Uetani’s Example 12. Accordingly, we agree with the Examiner that Uetani teaches acrylate ester units in making resists and it would have been within the skill level of one of ordinary skill in the art to combine the various resist materials to arrive at the claimed resist made of only units derived from acrylate esters. Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That [the prior art] discloses a multitude of effective combinations does not render any particular formulation less obvious.”). We do not agree with Appellants that Uetani teaches away from or that there is no reason in Uetani for using acrylates in polymers. Uetani teaches that the patent disclosure exemplifies only methacrylate-containing resins (Uetani ¶ [0014]). Though Uetani only exemplifies methacrylate- containing resins, that does not detract from the fact that acrylate-containing monomers are disclosed by Uetani. Appellants do not direct us to any teaching in Uetani that specifically discourages the use of the acrylates included in Uetani’s disclosure for making the resin used in the resist. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Accordingly, we conclude that the Examiner has established a prima facie case of obviousness over Uetani. We now consider Appellants’ evidence of secondary considerations contained in the declaration of Kazuhito Sasaki (hereinafter the “Sasaki Declaration”). Appellants contend that the Sasaki Declaration shows unexpected results with regard to the claimed photoresists’ ability to provide good line edge roughness, resolution and line slimming over the prior art (App. Br. 8). Appeal 2010-007552 Application 10/466,473 8 Appellants contend that the evidence in the Sasaki Declaration shows “excellent effects” of the present invention relative to the prior art (App. Br. 11). The Examiner finds the evidence contained in the Sasaki Declaration unpersuasive because the comparative data contains monomers that are all acrylate containing materials such that it is unclear if the showing of unexpected results is commensurate with the scope of the claims (Ans. 12). Appellants’ evidence is not probative of nonobviousness because declarant Sasaki fails to indicate that the results achieved were unexpected. In re Nolan, 553 F.2d 1261, 1267 (CCPA 1977). Rather, declarant Sasaki states that the results achieved were “superior” to the resist compositions similar to the present invention but outside the range of the present invention. However, an allegation of superiority of a result is not necessarily an indication that the result would have been unexpected. Only attorney argument presents the issue of unexpectedness of the claimed invention, which is insufficient to establish that the results were unexpected. Moreover, we note that Appellants have only provided a comparison of two kinds of lactones2 (Sasaki Dec. 5). However, claim 1 includes any bicyclic lactones. Accordingly, the evidence is not commensurate in scope with the claimed invention. Having reweighed the evidence of obviousness anew in light of Appellants’ evidence of unexpected results, we concur with the Examiner 2 We further note that the copy quality of the photographs of the examples provided on page 6 of the Sasaki Declaration is very poor. For example, the photograph of invention example 1 and comparative example 1 can hardly be seen; the pictures provided are simply black boxes. In the event of further prosecution, Appellants are strongly encouraged to provide evidence of better clarity. Appeal 2010-007552 Application 10/466,473 9 that the claimed invention would have been obvious over Uetani. We affirm the Examiner’s § 103 rejection of claims 1-3 and 5-11 over Uetani. However, we denominate the § 103 rejection over Uetani as a NEW GROUND OF REJECTION in light of our additional analysis regarding the Appellants’ evidence of secondary considerations. With regard to rejection (4), Appellants do not specifically address the Examiner’s obviousness rejection of claim 12, but rather rely on arguments made regarding the § 102 rejections. Appellants’ arguments regarding the § 102 rejections do not persuade of reversible error in the Examiner’s rejection of claim 12 under § 103 over the combination of Uetani and Fujimori. Indeed, Appellants do not specifically address the Examiner’s stated rejection based on combining Fujimori’s prebake temperature and time with Uetani’s method. On this record, we affirm the § 103 rejection of claim 12. DECISION The Examiner’s decision is affirmed-in-part and a NEW GROUND of REJECTION is denominated. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of Appeal 2010-007552 Application 10/466,473 10 the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . ORDER AFFIRMED-IN-PART & NEW GROUND OF REJECTION 37 C.F.R. § 41.50(b) ssl