Ex Parte Taniguchi et al

Patent Trial and Appeal Board

Apr 24, 2017

13616317 (P.T.A.B. Apr. 24, 2017)

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.
13/616,317 09/14/2012 Ryosuke Taniguchi 121105 8148
38834 7590 04/26/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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):
patentmail @ whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYOSUKE TANIGUCHI, TOMOHIRO KOBAYASHI,
JUN HATAKEYAMA, KENJI FUNATSU, and
MASAHIRO KANAYAMA
Appeal 2015-004368
Application 13/616,317
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JULIA HEANEY, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—3, 5—8, and 11—19 under 35 U.S.C. § 103(a) as
unpatentable over at least the basic combination of Momose (JP 2008-
095087; published Apr. 24, 2008; as translated) with Tanaka (US
2011/003251 Al; published Jan. 6, 2011).1 An oral hearing was conducted
April 18, 2017. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
1 While the Examiner applied additional references to claims 5, 7, 8, and 19
(Final Action 5—10; Ans. 5—10), Appellants’ arguments are all directed to the
basic combination of Momose and Tanaka (App. Br. 9—11).
Appeal 2015-004368
Application 13/616,317
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied prior art.2 We sustain
the Examiner’s § 103 rejections based on the findings of fact, conclusions of
law, and rebuttals to arguments expressed by the Examiner in the Final
Action and the Answer.
We add the following for emphasis.
Appellants have not disputed the Examiner’s factual findings with
respect to the applied references (generally App. Br.). Rather, Appellants
argue that there is no reason to use the known onium salt photoacid
generator (PAG) exemplified in Tanaka as a second PAG in Momose (App.
Br. 11; Reply Br. 3). We have no doubt, however, that the Examiner has
established a prima facie case of obviousness for the use of two known
photoacid generators (PAGs), including the specific onium salt PAG
exemplified in Tanaka, in the known resist composition exemplified in
Momose for reasons set out in the Answer (Ans. 2—5; 12, 13; App. Br. 10,
11; Reply Br. 3, 4). See also, In re Kerkhoven, 626 F.2d 846, 850, (CCPA
1980) (“It is generally considered prima facie obvious to combine two
compounds each of which is taught by the prior art to be useful for the same
2 See claim 1, reproduced in the Claims App’x., App. Br. 16, 17, for details
thereof. Appellants argue all the claims as a group, including those
separately rejected (e.g., App. Br. 15). Accordingly, all the claims stand or
fall with claim 1.
2
Appeal 2015-004368
Application 13/616,317
purpose, in order to form a composition which is to be used for the very
same purpose.”).
“Once a prima facie case of obviousness has been established, the
burden shifts to the applicant to come forward with evidence of
nonobviousness to overcome the prima facie case.” In re Huang, 100 F.3d
135, 139 (Fed. Cir. 1996). As indicia of obviousness or nonobviousness,
such secondary considerations as commercial success, long felt but
unresolved needs, copying by others, unexpected results, etc. may be
relevant to the question of obviousness or nonobviousness. Graham v. John
Deere, 383 U.S. 1, 17—18 (1966). Here, Appellants allege unexpected
results over the prior art applied due to the claimed combination of “a
special polymer, a photoacid generator, and an onium salt, as recited in
claims 1,18, and 19,” relying upon test results presented in a Declaration by
co-inventor Ryosuke Taniguchi filed Dec. 19, 2013 (App. Br. 11).
The burden of showing unexpected results rests on the person who
asserts them by establishing that the difference between the claimed
invention and the closest prior art was an unexpected difference. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, it is well established
that the showing of unexpected results must be commensurate in scope with
the claims. See In re Peterson, 315 F.3d 1325, 1330-331 (Fed. Cir. 2003).
As the Examiner explains, Appellants’ proffered evidence is not sufficient to
satisfy their burden (Ans. 17—19).
In the appeal before us, it is questionable whether the results shown
by the Taniguchi Declaration data are properly characterized as unexpected.
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny
superior property must be unexpected to be considered as evidence of non-
3
Appeal 2015-004368
Application 13/616,317
obviousness”). We here emphasize that nowhere in the Specification do the
Appellants characterize the combination of onium component D with
component B as achieving results that are unexpected. It is only the
Appellants’ attorney in the Briefs who describes these results as unexpected.
Declarant Taniguchi merely describes the results as “there can be obtained
good effects” (Taniguchi 9). Indeed, the addition of component D was
described as a preferred (i.e., optional) embodiment (Spec. 9:7—8; see also,
claim 1 as originally filed). Under these circumstances, we view this
Declaration data as merely representing the optimization of the addition of a
known onium salt PAG with another known PAG which would have been
within the skill of and, thus, obvious to the artisan.
Furthermore, Appellants have not shown how the single tested
inventive sample (Run 3) is commensurate in scope with the claims. For
example only, each independent claim recites a “positive resist composition
comprising” components (A) through (D), thus permitting the inclusion of
other unrecited components; each component may be present in any amount;
and the photoacid generator component (B) and solvent component (C) are
generic and, thus, include very large numbers of species.3
In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
3 We appreciate Appellants’ position that the closest prior art for comparison
is not a combination of Momose and Tanaka (Reply Br. 5). However, in
light of the deficiencies outlined in the Decision with Appellants’ proffered
evidence of unexpected results, the Examiner’s statement bridging pp. 14—15
of the Answer criticizing Run 1 as “not commensurate in scope with the
rejection” is harmless error.
4
Appeal 2015-004368
Application 13/616,317
necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v.
Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009)
(“[EJvidence of unexpected results and other secondary considerations will
not necessarily overcome a strong prima facie showing of obviousness”);
Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1372 (“[T]his secondary
consideration does not overcome the strong showing of obviousness in this
case. Although secondary considerations must be taken into account, they do
not necessarily control the obviousness conclusion.”); see also Newell Cos.
v. Kenney Mfg. Co., 864 F.2d 757, 769 (Fed. Cir. 1988).
Here, the case of obviousness established by the Examiner is so strong
that Appellants’ alleged unexpected results are ultimately insufficient. As
explained by the Examiner, Tanaka describes that the addition of an onium
PAG encompassed by the claims as resulting in the “obtainment of
rectangular pattern lines in profile with a higher resolution” and a “higher
sensitivity” (Tanaka 1158; Ans. 12). Likewise, Momose teaches that its
polymer provides a rectangular pattern line (Momose abstract, || 7—10; Ans.
17, 18). Momose further teaches multiple PAGs may be used and that an
onium salt PAG is a preferred PAG (Momose 260, 261). Thus, the
obviousness conclusion is strong and the results are expected, not
unexpected (e.g., Ans. 19).
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
5