Ex parte Ohtawa et al.

Board of Patent Appeals and Interferences

Sep 17, 1998

08204922 (B.P.A.I. Sep. 17, 1998)

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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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte SHIGERU OHTAWA
JUNICHI ONODERA and KOUJI HARADA
______________
Appeal No. 95-3945
Application 08/204,9221
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ON BRIEF
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Before WEIFFENBACH, WARREN and WALTZ, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. ' 134 from the decision of the examiner finally rejecting
claims 22 through 27.
The examiner has premised his rejection of the appealed claims under 35 U.S.C. '1032 on his

1 Application for patent filed March 2, 1994. According to appellants, this application is a continuation
of application 07/871,142, filed April 20, 1992, now Patent No. 5,344,747, issued September 6,
1994, which is a division of application 07/622,320, filed December 6, 1990, now Patent No.
5,147,759, issued September 15, 1992, which is a continuation of application 07/332,917, filed April
4, 1989, now abandoned.
2 In his letter of March 1, 1995 (Paper No. 12), the examiner withdrew the new ground of rejection of
the appealed claims under the judicially created doctrine of obviousness-type double patenting over
Appeal No. 95-3945
Application 08/204,922
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contention that Aas set forth in [In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985)] a
[photopolymerizable] composition, even if non-obvious from the prior art,[3] does not impart non-
obviousness to an old and obvious process@ as evinced by Takeda[4] (answer, page 3; see also page 5,
first full paragraph). In the absence of an analysis establishing the prima facie obviousness of the
claimed invention as a whole, thus including consideration of the non-obvious photopolymerizable
composition specified in the appealed claims, the examiner=s rejection cannot be sustained. In re
Brouwer, 77 F.3d 422, 426, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d 1565,
1569-71, 37 USPQ2d 1127, 1131-32 (Fed. Cir. 1995).
The examiner=s decision is reversed.
Reversed
CAMERON WEIFFENBACH )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Holly D. Kozlowski
Lowe, Price, LeBlanc & Becker
Suite 300, 99 Canal Center Plaza
Alexandria, VA 22314

Ohtawa >747 (answer, Paper No. 9, page 4) in view of the terminal disclaimer filed by appellants
(Paper No. 11).
3 The claimed method of forming a dry film resist specifies a photopolymerizable composition which is
encompassed by the claims of Ohtawa >759.
4 Takeda, Ohtawa >759 and Ohtawa >747 are listed at page 3 of the answer.