Ex parte Breyta et al.

Board of Patent Appeals and Interferences

Aug 31, 1999

08059861 (B.P.A.I. Aug. 31, 1999)

Application for patent filed May 10, 1993. According1
to appellants, the application is a continuation of
Application 07/864,721, filed April 7, 1992, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GREGORY BREYTA, DANIEL J. DAWSON,
MOAHMOUD M. KHOJASTEH, RANEE WAI-LING KWONG, ELWOOD H.
MACY, DAVID P. MERRITT, WAYNE M. MOREAU, STANLEY E.
PERREAULT,
HARBANS S. SACHDEV, ROBERT L. WOOD and HIROSHI ITO
________________
Appeal No. 96-2105
Application 08/059,8611
________________
ON BRIEF
________________
Before DOWNEY, OWENS and ROBINSON, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-2105
Application 08/059,861
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This is an appeal from the examiner’s final rejection of
claims 1-17, which are all of the claims in the application.
THE INVENTION
Appellants’ claimed invention is directed toward a
process for forming a photoresist composition by
stoichiometric carbonation of a polymer having hydroxyaromatic
groups. The carbonation is carried out using a dialkyl
dicarbonate in the presence of an unhindered tertiary amine
catalyst selected from a recited group, and the reaction
mixture does not contain more than 0.02 equivalents of an
organic amine base per equivalent of dialkyl dicarbonate.
Claim 1 is illustrative and reads as follows:
1. A process for the stoichiometric carbonation of a
microlithographically useful polymer comprising
hydroxyaromatic groups comprising the steps of
(a) mixing together in a reaction vessel
(1) a hydroxyaromatic material,
(2) a stoichiometric amount of a dialkyl dicarbonate to
give the desired degree of substitution,
(3) a catalytic amount of an unhindered tertiary amine,
wherein the amine is selected from the group consisting of
Appeal No. 96-2105
Application 08/059,861
In the answer, the examiner incorrectly refers to this2
reference as “Brunswald”.
Appellants and the examiner have treated this undated3
reference as prior art, and we likewise do so.
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amines comprising substituted and unsubstituted heterocyclic
compounds, diethylmethyl amine, trimethyl amine, and polymers
having unhindered amino groups, and
(4) a solvent
with the proviso that the reaction mixture does not
contain an organic amine base in an amount exceeding 0.02
molar equivalents based on the dialkyl dicarbonate, and
(b) stirring the reaction mixture,
(c) precipitating the alkyl carbonate of the
hydroxyaromatic material, and
(d) recovering the alkyl carbonate of the polymeric
hydroxyaromatic material.
THE REFERENCES
References relied upon by the examiner
Brunsvold et al. (Brunsvold) 4,931,379 Jun. 5, 19902
Hiroshi Ito, “Solid-State Thermolysis of Poly(p-t-Butoxy-
carbonyloxystyrene) Catalyzed by Polymeric Phenol: Effect of
Phase Separation”, 24 J. Polym. Sci. 2971-80 (Nov. 1986).
Reference relied upon by appellants
Jerry March, Advanced Organic Chemistry 361 (McGraw-Hill, 2d
ed., undated).3
Appeal No. 96-2105
Application 08/059,861
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THE REJECTION
Claims 1-17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Brunsvold in view of Ito.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejection is not well
founded. Accordingly, we do not sustain this rejection.
We need only to address appellants’ broadest claim, which
is claim 1.
The portion of Brunsvold relied upon by the examiner is
example 2A (col. 6, lines 16-48), in which poly(styrene-co-N-
(4-t-butyloxycarbonyloxyphenyl)-maleimide is prepared from a
reaction mixture of poly(styrene-co-N-(4-hydroxy-phenyl)-
maleimide, 4-dimethylaminopyridine, di-t-butylpyrocarbonate,
and triethylamine. The amounts of 4-dimethylaminopyridine and
triethylamine used in this example are not disclosed.
Appeal No. 96-2105
Application 08/059,861
We do not find in the relied-upon portion of the4
reference a disclosure of use an excess of a base.
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Appellants point out (brief, page 7) that in Brunsvold’s
example 1A (col. 5, lines 5-46), 1.05 molar equivalents of an
acylating reagent, i.e., isopropylchloroformate, and 1.05
molar equivalents of triethylamine are used. Appellants argue
that “[t]he usual understanding in the art is to use an excess
of acylating reagents and an excess of a base as a proton
scavenger
to drive the reaction to completion” (brief, page 7). In
support of this argument, appellants rely upon March, which
discloses that in the alcoholysis of acyl halides, “[a] base
is frequently added to combine with the HX which is formed”,
where X is a halide. Appellants conclude that Brunsvold4
discloses the use of 4-dimethylaminopyridine only in admixture
with triethylamine, wherein the amount of triethylamine is at
least equivalent to the amount of the acylating agent (brief,
page 8). Thus, in appellants’ view, Brunsvold would not have
fairly suggested, to one of ordinary skill in the art, use of
Appeal No. 96-2105
Application 08/059,861
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a reaction mixture which contains no more than 0.02 molar
equivalents of an organic amine based on the dialkyl
dicarbonate.
Ito, which the examiner relies upon (answer, page 4) for
motivation to form a copolymer of p-t-butoxycarbonyloxystyrene
and p-hydroxystyrene, does not disclose use of an amine
catalyst. The examiner argues that an acid is generated in
Brunsvold’s example 1A, whereas no acid is generated in
Brunsvold’s example 2B (answer, pages 5-6). Thus, the
examiner argues, an excess of base would not be needed in
example 2B to drive the reaction to completion (see id.).
Appellants do not challenge the examiner’s argument that
an acid is generated in Brunsvold’s example 1A but not in
example 2A. Nevertheless, the examiner’s argument is not
persuasive because the examiner has not provided any evidence
or technical explanation as to why, if no acid is generated in
Brunsvold’s example 2A, Brunsvold includes triethylamine in
the reaction mixture. Because the examiner has not set forth
any evidence or technical reasoning as to what the function of
the triethylamine is in Brunsvold’s example 2A, the examiner
has provided no basis for arguing that it would have been
Appeal No. 96-2105
Application 08/059,861
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prima facie obvious to one of ordinary skill in the art to use
no more than 0.02 equivalents of organic amine base per
equivalent of dialkyl dicarbonate in that example.
Accordingly, we conclude that the examiner has not
carried his burden of establishing a prima facie case of
obviousness of the process recited in any of appellants’
claims. Since no prima facie case of obviousness has been
established, we need not address the affidavits of Khojasteh
and Moreau. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048,
1052, 189 USPQ 143, 147 (CCPA 1976).
DECISION
The rejection of claims 1-17 under 35 U.S.C. § 103 over
Brunsvold in view of Ito is reversed.
REVERSED
MARY F. DOWNEY )
Administrative Patent Judge )
)
)
Appeal No. 96-2105
Application 08/059,861
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)
TERRY J. OWENS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
DOUGLAS W. ROBINSON )
Administrative Patent Judge )
Appeal No. 96-2105
Application 08/059,861
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Dale M. Crockatt
IBM Corporation
Intellectual Property Law Dept.
1580 Route 52
Hopewell Junction, NY 122533-6531
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