Ex parte CHOI

Board of Patent Appeals and Interferences

Aug 14, 1998

08134707 (B.P.A.I. Aug. 14, 1998)

Application for patent filed October 12, 1993. 1
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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journal and (2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JIN-O CHOI
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Appeal No. 95-2579
Application 08/134,7071
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ON BRIEF
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Before CAROFF, METZ and WEIFFENBACH, Administrative Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
1-20 which are all of the claims in the application. We reverse.
Appeal No. 95-2579
Application 08/134,707
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The Claimed Subject Matter
The claims on appeal are directed to method of forming a pattern on a substrate using a solution
of a partially imidized polyamic acid. Claim 1 is representative of the claimed subject matter and reads as
follows:
1. A method of forming a pattern on a substrate comprising
(A) forming a first solution which comprises
(1) organic solvent, and
(2) monomers of
(a) diamine, and
(b) dianhydride, tetracarboxylic acid or ester of tetracarboxylic acid;
(B) polymerizing said monomers to form a polyamic acid soluble in said organic solvent;
(C) imidizing 10 to 95% of the amic acid groups in said polyamic acid to form a partially
imidized polyamic acid;
(D) forming a second solution of said partially imidized polyamic acid, which is more
concentrated than said first solution;
(E) applying said second solution to a substrate;
(F) evaporating the solvent from said second solution to form a coating of said partially
imidized polyamic acid on said substrate;
(G) using a process requiring exposure to light, removing a portion of said coating to form
a pattern on said substrate; and
(H) fully imidizing said partially imidized polyamic acid in said coating on said substrate.
Appeal No. 95-2579
Application 08/134,707
In the answer and in the brief, the examiner and appellant enter into a dialog regarding a Japanese reference (an abstract2
to a Japanese patent, JP 03197530), cited by appellant in an information disclosure statement (paper no. ½) submitted
before the first action on the merits. First, while appellant did attach a copy of the reference to his reply brief, we note
that we were unable to find the original reference submitted with the information disclosure statement in the application
file wrapper. Second, we have not considered the reference in reviewing the rejection for obviousness since the
reference is not included in listing of prior art of record relied upon for the rejection. Ex parte Raske, 28 USPQ2d 1304,
1304-05 (Bd. App. & Int. 1993); In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n. 3 (CCPA 1970).
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References of Record
The examiner relies on the following references as evidence of obviousness:
Peterson 4,073,788 Feb. 14, 1978
Lee 4,829,131 May 9, 1989
Chion et al. (Chion) 0 224 680 Jun. 10, 1987
(Published European Patent Application)
Yamada et al (Yamada) 0 349 010 Jan. 3, 1990
(Published European Patent Application)
Rhee et al. (Rhee), “Synthesis of Alternating Aromatic Copolyimides,” Macromolecules, Vol. 26,
Number 2, Pages 404-406 (1993).

The Rejections2
Claims 1-6 and 8-12 stand rejected under 35 U.S.C. § 103 as being unpatentable over Chion in
view of Peterson or Rhee.
Claims 7, 13-15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Chion in view
of Peterson or Rhee and further in view of Yamada or Lee.
Claims 13-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Chion in view of
Yamada or Lee.
Appeal No. 95-2579
Application 08/134,707
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Opinion
We have carefully considered the respective positions advanced by appellant and the examiner.
For the reasons set forth below, we will not sustain any of the examiner's rejections.
According to appellant, “in the method of this invention the solutions of polyamic acids are partially
imidized before they are applied to the substrate” (p. 3, lines 14-16). Independent claims 1 and 13 require
partially imidizing the polyamic acid [step (C) of the claimed method] and forming a second solution of
partially imidized polyamic acid which is more concentrated than the first solution [step (D) of the claimed
method] before applying the second solution to a substrate. On page 11, lines 18-27 of the specification,
appellant discloses the concentration step as follows:
Concentration can be accomplished by gently heating under vacuum at about 80 to about
130E C. Concentration is preferably achieved by precipitating the partially imidized
polyamic acid from the first solution, preferably by the addition of water. The precipitated
partially imidized polyamic acid is collected, usually by filtration, and can be washed (e.g.,
in methanol), and dried, if desired. It is then dissolved in a second organic solvent ... to
form the second solution of about 20 to about 50 wt% solids.

Chion, the examiner’s principle reference, teaches on page 5, lines 20-24 that
[p]artial imidization preferably to a level of about 10 to about 30 percent of the polyamic
acid may be accomplished during the coating process wherein the polyamic acid based
photoresist solution is deposited on the semiconductor substrate. Thus after the polyamic
acid based photoresist solution is coated on the semiconductor substrate, the substrate is
heated at a temperature of about 85-95EC for about 15 to about 30 minutes to effect
about 10 to about 20% imidization of the polyamic acid.
Appeal No. 95-2579
Application 08/134,707
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From this teaching the examiner concludes that Chion teaches appellant’s step (C) of the claimed method.
The examiner further concludes that the following disclosure on page 5, lines 32-34 of Chion teaches step
(D), i.e., forming a more concentrated solution:
Partial neutralization of the free carboxylic acid groups of the polyamic acid may be
accomplished by reacting one equivalent of a basic organic compound such as an amine
compound such as triethylamine to one equivalent of the polyamic acid before incorpora-
tion of the polyamic acid in the photoresist solution.
We do not share the examiner’s view of the teachings of Chion as it relates to steps (C) and (D) of
appellant’s claimed method.
We find that Chion does not teach partially imidizing the polyamic acid before it is applied to the
substrate. While Chion does disclose that the partial imidization may be accomplished during the coating
process, Chion does not suggest or teach explicitly or implicitly that the partial imidization may be
accomplished before the coating process. As for step (D) of appellant’s method, the examiner has failed
to explain how the teachings of Chion on page 5, lines 32-34 would have led a person having ordinary skill
in the art to form a more “concentrated solution” as interpreted in light of appellant’s disclosure.
The teachings of Peterson, Rhee, Yamada and Lee do not make up for the deficiencies of Chion.
Accordingly, we find that the examiner has not established a prima facie case of obviousness to sustain
the rejection of the claims 1-6 and 8-12 under 35 U.S.C. § 103 over Chion in view of Peterson or Rhee,
the rejection of claims 7, 13-15 under 35 U.S.C. § 103 over Chion in view of Peterson or Rhee and further
Appeal No. 95-2579
Application 08/134,707
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in view of Yamada or Lee, and the rejection of claims 13-20 under 35 U.S.C. § 103 over Chion in view
of Yamada or Lee. In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984). For the foregoing
reasons, the decision of the examiner is reversed.
REVERSED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
ANDREW H. METZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CAMERON WEIFFENBACH )
Administrative Patent Judge )
Appeal No. 95-2579
Application 08/134,707
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OCCIDENTAL CHEMICAL CORPORATION
PATENT DEPARTMENT
360 RAINBOW BOULEVARD SOUTH
NIAGARA FALLS, NY 14302