Ex Parte Nishimura et al

Patent Trial and Appeal Board

Jan 9, 2018

13045962 (P.T.A.B. Jan. 9, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/045,962 03/11/2011 Yukio NISHIMURA 438015US 3918
22850 7590 01/11/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
CHU, JOHN S Y
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
01/11/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUKIO NISHIMURA, YASUHIKO MATSUDA, HIROKI
NAKAGAWA, TOMOHISA FUJISAWA, YUKARI HAMA,
and KAZUKI KASAHARA
Appeal 2017-004055
Application 13/045,962
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—5, 9—20, and 22—24 of
Application 13/045,962 under 35 U.S.C. § 103(a) as obvious. Non-Final
Act. (Jan. 15, 2016) 2-4. Appellants1 seek reversal of this rejection pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 JSR Corporation is identified as the real party in interest. Appeal Br. 1.
Appeal 2017-004055
Application 13/045,962
BACKGROUND
The present application generally relates to a radiation-sensitive resin
composition useful in forming a resist pattern. Spec. H 2—3. The resin
composition includes a resin having no fluorine-containing monomers, a
photoacid generator, a fluorine-containing resin, and a lactone compound.
Id. ^ 12. The lactone component is taught to cause the fluorine-containing
resin (which imparts water repellency) to be segregated to the surface of the
resist film. Id. 1 81.
The subject resin composition is taught to have excellent resolution, to
be suitable for use in liquid immersion lithography, and to exhibit small line
width roughness (“LWR”), high defect resistance, small post-exposure bake
(“PEB”) temperature dependence, and high pattern collapse resistance. Id.
110.
Claim 1 is representative of the pending claims and is reproduced
below with certain limitations bolded for emphasis:
1. A radiation-sensitive resin composition comprising:
a resin that does not comprise a fluorine-containing
repeating unit and that comprises a repeating unit that becomes
alkali-soluble due to an acid;
a photoacid generator;
a fluorine-containing resin that comprises a fluorine-
containing repeating unit and a repeating unit that becomes
alkali-soluble due to an acid; and
a lactone compound, a content of the lactone
compound in the radiation-sensitive resin composition being
about 31 to about 200 parts by mass based on 100 parts by
mass of the resin.
Appeal Br. 23 (Claims App.) (emphasis added).
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Application 13/045,962
REJECTIONS
On appeal, the Examiner maintains the following rejection:
Claims 1—5, 9—20, and 22—24 are rejected under 35 U.S.C. § 103(a) as
obvious over Wada et al. (US 8,053,161 B2, issued Nov. 8, 2011). Non-
Final Act. 2-4.
DISCUSSION
In making the foregoing rejection, the Examiner found that Wada
teaches to use y-butyrolactone as a solvent. Id. at 3. The Examiner further
found that Wada teaches an exemplary embodiment (Example 18) having a
fluorine-containing resin that becomes alkali-soluble due to an acid. Id. The
Examiner additionally found that Wada discloses another exemplary
embodiment (Example 23) that teaches the use of y-butyrolactone as one
component of a solvent composition in a quantity such that y-butyrolactone
equals 31.3 parts by weight to 100 parts by weight of resin, thus, falling
within the range of lactone content recited in claim 1. Id. The Examiner
determined that it would have been obvious to one of skill in the art to use
any of the organic solvents taught by Wada in a ratio as taught by Example
23. Id. at 3^4.
The Examiner further found that a Rule 1.132 declaration submitted
by Appellants was insufficient to rebut the prima facie case of obviousness.
Id. at 4. The Examiner determined that the comparative examples in the
declaration use a non-acid labile resin for the fluorine containing resin while
Wada teaches examples of fluorine containing resins with acid labile groups.
Appellants argue that the Examiner has failed to make a prima facie
case of obviousness. Appeal Br. 8—11. Appellants assert that Wada teaches
the use of multiple organic solvents at various concentrations. Appellants
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Application 13/045,962
further assert that the prior art does not teach the use of lactone compounds
for the segregation of fluorine-containing compounds to the surface of a
composition so as to impart water repellency. Accordingly, Appellants
argue that a person of ordinary skill in the art would not have been
motivated to optimize the quantity of butyrolactone solvent so as to fall
within the range of claim 1.
It is obvious to those skilled in the art to substitute one known
equivalent for another. See In re Omeprazole Patent Litigation, 483 F.3d
1364, 1374 (Fed. Cir. 2007) (“[T]his court finds no . . . error in [the]
conclusion that it would have been obvious to one skilled in the art to
substitute one ARC [alkaline reactive compound] for another.”). Further,
“[u]nder the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007).
Here, the sole reference, Wada, teaches a broad range of solvents.
Wada 94:59-67. Wada further teaches that “these solvents may be used
alone or two or more solvents may be used in combination,” id. at 95:60-61,
and that a mixed solvent may comprise a solvent containing a hydroxyl
group and a solvent not containing a hydroxyl group, id. at 95:62—65. Wada
sets forth certain exemplary embodiments in Table 3.
Table 3 of Wada includes Examples 18 and 23 which teach solvent
systems comprised primarily of propylene glycol monomethyl ether acetate
(“PGMEA,” designated “SL-2” in Table 3 of Wada) and propylene glycol
monomethyl ether (“PGME,” designated “SL-4” in Table 3 of Wada). Non-
Final Act. 3^4. Example 18 includes a solvent mixture that is 40% PGMEA,
59% PGME, and 1% propylene carbonate. Wada, Table 3. Example 23
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Application 13/045,962
includes a solvent mixture that is 40% PGMEA, 58% PGME, and 2%
butyrolactone.2 Id. The Examiner then concludes that it would have been
obvious to use any of the listed solvents at the same ratio as in Example 23
with a reasonable expectation of similar results. Non-Final Act. 3^4;
Answer 6—7.
Each of the solvent components listed in Table 3 is taught to be used
in a preferred embodiment. Wada 95:43—96:14. While Wada includes a
teaching that mixed solvents may contain two or more components and may
contain both a solvent having a hydroxyl group and a solvent not containing
a hydroxyl group, Appellants cite to no teachings that any particular solvent
is preferably used with any particular resin or resins. Accordingly, we
discern no error in the Examiner’s finding that it would have been obvious to
a person of skill in the art to modify Example 18 so as to substitute the
solvent system of Example 23 for the listed solvent system. That several
solvent systems are listed does not limit the disclosure of any such
enumerated solvents. Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (“That the [reference] discloses a multitude of effective
combinations does not render any particular formulation less obvious.”).
Nor must the motivation posited by the Examiner for use of a lactone
component (solvation) be the same as the patent applicant (segregation of
fluorine-containing resin to the surface of the composition).
2 The Examiner finds that this corresponds to 31.3 parts by weight
butyrolactone to 100 parts by weight of the resin. Non-Final Act. 3. The
Examiner does not find that the fluorine-containing resin of Example 23 has
a unit that becomes alkali-soluble due to an acid. Id.
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Application 13/045,962
Accordingly, Appellants have failed to show error in the prima facie
case of obviousness.
Appellants additionally seek to rebut the prima facie case of
obviousness by arguing that the claimed compositions yield “superior and
unexpected results.” Appeal Br. 11. Appellants rely upon the Declaration of
Hiromitsu Nakashima, dated November 11, 2015 (hereinafter “Nakashima
Declaration”) in support of their argument. The Nakashima Declaration
describes the formulation and testing of six resin compositions designated
A-F. See Nakashima Decl., Table A.
Each of the six resin compositions varies only in the content of
lactone compound. Id. The resin having no fluorine-containing monomers
of the examples (designated “A-5”) appears to have the same monomers as
Resin 2 of the Wada reference (used in Wada’s Example 18). Compare
Wada, Table 1 to Nakashima Decl. 1 6. Such monomers, however, are
present at different ratios. Id.', Appeal Br. 14, 16. Further, the fluorine-
containing resin of the Nakashima Declaration differs from that of Wada,
Examples 18 (Resin C-5), 23 (Resin C-9), and 37 (Resin C-l). Compare
Nakashima Decl. 1 6 to Wada Tables 2 and 3.
Establishing unexpected results requires providing a side-by-side
comparison of the claimed invention with the closest prior art which is
commensurate in scope with the claims, and showing that the result would
have been unexpected by one of ordinary skill in the art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984). Moreover, "[i]t is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice." In re De
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Application 13/045,962
Blauwe, 736 F.2d at 705, quoted with approval in In re Soni, 54 F.3d 746,
750 (Fed. Cir. 1995).
Here, the Nakashima Declaration (at | 3) mentions Wada but lacks
any explicit comparison of embodiments practicing the claims to Wada or
any prior art reference. In their opening brief, Appellants portray the
declaration as comparing embodiments of the claims to “a radiation-
sensitive resin composition which contains the lactone compound in an
amount of about 16 parts, which corresponds to Example 18 of Wada, or 626
parts by mass based on 100 parts by mass of the resin, which corresponds to
Example 37 of Wada.” Appeal Br. 11. The resin compounds of the
declaration, however, differ meaningfully from those of Wada. Moreover,
the concentration of lactone in the examples of the declaration differs
somewhat from that of Wada’s Examples 18 and 37. Id. at 11—12.
Accordingly, the declaration lacks a “side-by-side” comparison with the
compositions of Wada.
Appellants additionally argue that the declaration presents “an
acceptable indirect comparison.” Appeal Br. 11—17; Reply 2—\. Appellants
argue that the Specification shows that the particular resins “do not
substantially affect the result.” Appeal Br. 16. To the extent this is accurate,
it suggests that the claimed compositions would not yield unexpected results
relative to Wada’s Example 23 which includes y-butyrolactone in the
relevant quantity but lacks “a repeating unit that becomes alkali-soluble due
to an acid.” Answer 8. The declaration lacks any composition made
according to, or approximating, Wada’s Example 23. Accordingly, we do
not regard the Nakashima Declaration as an acceptable indirect comparison.
Further, we adopt the Examiner’s factual findings made regarding the
Nakashima Declaration. Answer 7—9.
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In view of the foregoing, Appellants have not rebutted the prima facie
case of obviousness.
CONCLUSION
The rejection of claims 1—5, 9-20, and 22—24 as obvious over Wada is
affirmed.
AFFIRMED
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