Yoshitaka Komuro et al.

Patent Trials and Appeals Board

Jul 28, 2020

13179864 - (D) (P.T.A.B. Jul. 28, 2020)

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.
13/179,864 07/11/2011 Yoshitaka Komuro SHIGA7.254AUS 1361
20995 7590 07/28/2020
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHITAKA KOMURO and YOSHIYUKI UTSUMI
____________

Appeal 2019 -005962
Application 13/179,864
Technology Center 1700
____________

Before CATHERINE Q. TIMM, RAE LYNN P. GUEST, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
December 7, 2018 decision finally rejecting claims 1–9 (“Final Act.”). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Tokyo Ohka Kogyo Co.,
Ltd. as the real party in interest (Appeal Br. 3).
Appeal 2019-005962
Application 13/179,864

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a resist composition including a
base component (A) and an acid-generator component (B) which generates
acid upon exposure (Abstract). Acid generator component (B) comprises an
acid generator (B1) having a specific formula. Details of the claimed
invention are described in claim 1, which is reproduced below from the
Claims Appendix of the Appeal Brief:
1. A resist composition comprising a base component (A) which
exhibits changed solubility in an alkali developing solution under
action of acid and an acid-generator component (B) which
generates acid upon exposure,
the acid-generator component (B) comprising an acid
generator (B1) comprised of a compound represented by general
formula (bl-1) shown below:

wherein Y0 represents CF2; R0 represents an alkyl group, an alkoxy
group, a halogen atom, a halogenated alkyl group, a hydroxy group
or an oxygen atom (=O); p represents 0; and Z+ represents an
organic cation represented by the general formula (b1-c1) shown
below:

wherein each of R1" to R3" independently represents an
unsubstituted phenyl group or an alkyl-substituted
phenyl group, provided that two of R1" to R3" represents an
unsubstituted phenyl group, and the remaining one of Rl" to R3"
represents an alkyl-substituted phenyl group.
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REJECTIONS
I. Claims 1–9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamaguchi.2
II. Claims 1–9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kodama.3
DISCUSSION
Rejection I. The Examiner finds that Yamaguchi teaches the claimed
resist composition,4 except that in the compound corresponding to acid
generator (B1): (i) the C=O and –O– bonds are switched, and (ii) the
sulfonyl containing side chain is on a tertiary carbon atom of the
homoadamantane nucleus, instead of on secondary carbon atom. The
difference is shown below:

Compound (b1-1) from claim 1 Anion of Yamaguchi’s compound Y-60

2 Yamaguchi et al., JP 2010-039146, published February 18, 2010. We refer
to the translation of record, as do Appellant and the Examiner.
3 Kodama, JP 2008-268744, published November 6, 2008. We refer to the
translation of record, as do Appellant and the Examiner.
4 With respect to the cation, the Examiner finds that the cation of
Yamaguchi’s compound Y-62 meets the limitations of the claimed cation,
where R1” and R3” are unsubstituted phenyl groups and R2” is a methylphenyl
group (Final Act. 3).
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The Examiner acknowledges the difference in attachment location and
reversal of the C=O and O bonds but determines that the similarity between
the chemical structures is sufficiently close that one of ordinary skill in the
art would have been motivated to make the claimed compound (Final Act.
3–4, citing the rationale set forth in In re Payne, 606 F.2d 303 (CCPA 1979),
namely, “the expectation that compounds similar in structure will have
similar properties”). In other words, we understand the Examiner to have
determined that the claimed compound would have been expected to have
similar acid generating properties as Yamaguchi’s compound taught by the
prior art, and would thus be obvious substitutes.
Appellant does not dispute these findings, but argues that “the
Specification and Kormuro’s [Rule 132] declaration have shown that the
resist pattern formed using the claimed compounds is surprisingly superior
compared to that formed using…Yamaguchi’s compounds” (Appeal Br. 7).
It is well settled that Appellant has the burden of showing unexpected
results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). The burden requires Appellant to
proffer factual evidence that actually shows unexpected results relative to
the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991), and that is reasonably commensurate in scope with the
protection sought by the claims on appeal, In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re
Hyson, 453 F.2d 764, 786 (CCPA 1972).
Appellant argues that acid generator (B)-4, used in Comparative
Example 4 of the Specification, has a similar structure with the acid
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Application 13/179,864

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generator from Yamaguchi relied on by the Examiner in the rejection (i.e.
the cation of Yamaguchi compound Y-62 and the anion of Yamaguchi
compound Y-60):

Y-60 Y-62

Indeed, acid generator (B)-4 also has the sulfonyl containing side chain on a
tertiary carbon atom of the homoadamantane nucleus, instead of on
secondary carbon atom as in the claimed compound. The difference
between the Yamaguchi compound and compound (B)-4 is that the positions
of the =O and –O– groups on the ring are reversed. Appellant points to a
comparison between compound (B)-4 (Comparative Example 4) and
compound (B)-5 (Example 46) in the Specification as demonstrating
surprising results. Compound (B)-5 has the following structure:

The difference between compound (B)-5 (which is falls within the scope of
what is recited in claim 1) and compound (B)-4 (which Appellant contends
corresponds to the prior art) is that in compound (B)-5, the -O-C(O)-CF2-
SO3 group is attached at a different position on the ring system than it is in
compound (B)-4.
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Appellant also points (Appeal Br. 9–10) to a comparison between
compound (B)-2 (Comparative Test 1) and Compound (B)-1’ (which falls
within the scope of claim 1 and thus is identical to (B)-5 of Example 46
above), as set forth in the Rule 132 Declaration of Yoshitaka Komuro
(“Komuro Decl.”):

Once again, these compounds differ in the position of
the -O-C(O)-CF2-SO3 group on the ring system.
Appellant, citing the Komuro Declaration, argues that the results
obtained using compounds covered by claim 1, are better than the results
using the comparative compounds (Appeal Br. 8–10). Appellant contends:
[A] person of ordinary skill in the art would have expected that
the differences between the compounds used in the present
invention and those in the prior art would be random. However,
the results indicate that the claimed compositions are uniformly
superior to the prior art compositions. As noted above, each
difference in comparison between Example 46 and
Comparative Example 4 in the specification and between Test
Experiment 1 and Comparative Test Example 1 in Komuro's
declaration would be considered significant. Even if the
differences were small, they were significant in light of the
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requirements of the uses to which they are put. In addition, the
LS pattern formed using the resist composition containing (B)-
1' exhibits excellent rectangularity, while the LS pattern made
using the resist composition containing (B)-2' has a rounded top
as shown in Fig. A of Komuro's declaration.
Thus, excellent lithography properties and excellent
shape of resist pattern were obtained by the acid generator of
claimed invention compared to that of Yamaguchi. These are
unexpected results that could not have been predicted by those
having ordinary skill in the art.
(Appeal Br. 10).
Upon careful consideration of the evidence and arguments submitted
by Appellant and by the Examiner, we determine that the preponderance of
the evidence of record supports the rejection.
First, as acknowledged by Appellant, the comparative examples used
for the showings are different from the compound in Yamaguchi relied on
by the Examiner. In particular, the Yamaguchi compound and compound
(B)-4 differ in that the positions of the =O and –O– groups on the ring are
reversed. Thus, the comparison relied upon by Appellant is not to the
closest prior art.
Second, notwithstanding Appellant’s assertion that the showing is
commensurate in scope with the claims (Appeal Br. 11), it is apparent that
the data relied on by Appellant relates solely to compositions in which the
cation contains two phenyl groups and a methyl phenyl group. However, the
claims are not limited to such cations, but instead recite that the third ligand
on the cation can be any alkyl-substituted phenyl group. In view of
Appellant’s showing that minor differences in structure — for example the
position of the -O-C(O)-CF2-SO3 group on the ring system — can have a
significant effect on the properties of the resist composition, we determine
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that a showing limited to compounds having only a single one of the alkyl-
substituted phenyl groups is not commensurate in scope with the claims.
Therefore, for the foregoing reasons we affirm the rejection over
Yamaguchi.
Rejection II. With respect to the rejection over Kodama, Appellant
again relies on a showing of unexpected results (Appeal Br. 12). The
Examiner relies on the following compound as disclosed by Kodama:

Appellant relies on compound (B)-2 as disclosed in the Specification
and used in Comparative Example 2 to correspond to Kodama’s compound:

(Appeal Br. 12). These compounds differ in the identity of the substituted
ligand on the cation (methyl for the compound described the Specification
versus t-butyl in the compound described by Kodama). Both compounds
differ from the claimed structure in the makeup of the ring structure of the
anion.
Appellant relies on a comparison between compound (B)-2 and
compound (B)-5 (used in Example 46):
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(Appeal Br. 13).
However, this showing suffers from the same deficiencies as the one
used seeking reversal of the rejection over Yamaguchi.
First, the compound tested is not the same as the prior art compound,
because the substitution on the third ligand of the cation is different. As
noted above, Appellant’s evidence presented in the Appeal Brief shows that
differences in structure can lead to differences in properties. Thus, the
comparison with compound (B)-2 is not with the closest prior art, which is
disclosed in Kodama.
Second, as is the case with Rejection I, the showing is not
commensurate in scope with the claims, because only a single cation is used,
even though many cations would fall within the scope of the claims.
Because small differences in structure are said to create differences in
properties, a showing limited to a single cation cannot demonstrate
patentability of a broader claim.
Accordingly, we affirm the rejection over Kodama.
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CONCLUSION
In summary:

Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–9 103(a) Yamaguchi 1–9
1–9 103(a) Kodama 1–9
Overall
Outcome
1–9

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED