Ex parte KURATA et al.

Board of Patent Appeals and Interferences

Sep 17, 1998

07813749 (B.P.A.I. Sep. 17, 1998)

Application for patent filed December 30, 1991.1
-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journal and (2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte TETSUYUKI KURATA and HIROSHI KOEZUKA
________________
Appeal No. 95-3170
Application No. 07/813,7491
________________
ON BRIEF
________________
Before KIMLIN, GARRIS and WARREN, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 2-
16, all the claims remaining in the present application.
Claim 16 is illustrative:
16. An exposed photoresist, said exposed photoresist
having been formed by (a) applying on a substrate a
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photoresist having a non-linear optical property which
increases with respect to increasing light intensity, and (b)
exposing the photoresist using a reduction optical system with
a mask.
In addition to the admitted state of the prior art found
in the present specification, the examiner relies upon the
following reference as evidence of obviousness:
Diemeer et al. (Diemeer) 5,142,605 Aug. 25, 1992
(filed Sep. 7, 1989)
Appellants' claimed invention is directed to an exposed
photoresist formed by using a reduction optical system to
expose a photoresist having a non-linear optical property
which increases with respect to increasing light intensity.
According to appellants, "the exposed photoresist according to
the present invention obtains a high resolution of from 0.25-
0.35 Fm, even in a resist having a thickness of approximately
1 Fm" (page 3 of principal Brief).
Appealed claims 2-16 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being based upon a non-enabling
disclosure. In addition, the appealed claims stand rejected
under 35 U.S.C. § 103 as being unpatentable over Diemeer in
view of the admitted prior art.
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Upon careful consideration of the opposing arguments
presented on appeal, we will sustain neither of the examiner's
rejections.
Regarding the rejection of the appealed claims under §
112, first paragraph, we are in essential agreement with the
position set forth by appellants in their Reply Brief. In
essence, the examiner has not carried his initial burden of
establishing with objective evidence or compelling scientific
reasoning that one of ordinary skill in the art would not be
able to practice the claimed invention without undue
experimentation. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ
367, 369 (CCPA 1971). The examiner's statement that forms the
basis of his legal conclusion, that it is not possible for one
skilled in the art to produce the claimed photoresist from the
brief description found in the specification, is without
factual support (page 5 of Answer).
We now turn to the examiner's rejection of the appealed
claims under 35 U.S.C. § 103. The examiner appreciates that
Diemeer, the primary reference, fails to disclose (1) the
claimed photoresist that has a non-linear optical property
which increases with respect to increasing light intensity and
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(2) exposing a photoresist using a reduction optical system.
In the words of the examiner, the teachings of Diemeer "differ
from those of the applicant in that the applicant teaches the
use of similar photoresists and the exposure of the
photoresists using a reduction optical system" (page 4 of
Answer). However, the examiner has failed to explain in what
specific respects the photoresists of appellants and Diemeer
are "similar." Lacking in the examiner's position is any
rationale that establishes that the photoresists of Diemeer or
the admitted prior art have the presently claimed "non-linear
optical property which increases with respect to increasing
light intensity." In the absence of such rationale, it cannot
be reasonably concluded that the claimed photoresist would
have been obvious to one of ordinary skill in the art in view
of the photoresist of Diemeer, notwithstanding their purported
"similarity." Likewise, the examiner's statement that "[t]he
use of the reduction optical system is disclosed in the
specification and is known to be used with similar
photoresists as those of the claimed invention" (page 4 of
Answer), is without the requisite factual support. Again, the
examiner has not established the specific similarity between
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the claimed photoresist and the photoresists of the admitted
prior art that are subjected to an exposure to a reduction
optical system. Consequently, we find that the prior art
relied upon by the examiner fails to establish a prima facie
case of obviousness for the claimed subject matter.
One final point remains. In the event of further
prosecution of the subject matter at bar, the examiner should
consider whether the exposed photoresist disclosed by Diemeer
inherently has a "non-linear optical property which increases
with respect to increasing light intensity," as presently
claimed. We say this because appellants' specification
attributes the claimed property to the photoresist structure
having a nitrostilbene functional group, and the photoresist
material of Diemeer possesses nitrostilbene functional groups.
For the appropriate, controlling legal principle, the examiner
should consult In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed.
Cir. 1990) and In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA
1977).
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
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EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
clm
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Stephen A. Becker
Lowe, Price, LeBlanc & Becker
99 Canal Center Plaza, Ste. 300
Alexandria, VA 22314