10013543 (B.P.A.I. Mar. 20, 2008)

Ex Parte Hashimoto et al

Board of Patent Appeals and InterferencesMar 20, 2008

10013543 (B.P.A.I. Mar. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KOUICHI HASHIMOTO, TAKAHIRO FUKUOKA, KOJI AKAZAWA, YOSHI NAKAGAWA and TATSUYA KUBOZONO ____________ Appeal 2008-0157 Application 10/013,543 Technology Center 1700 ____________ Decided: March 20, 2008 ____________ Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and CHARLES F. WARREN, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-4. Claim 1is illustrative: 1. A curable re-release adhesive comprising a radiation-reactive polymer comprising a main chain and a plurality of intramolecular side Appeal 2008-0157 Application 10/013,543 chains, each side chain having a terminal carbon-carbon double bond, a chain length of 6 or more in terms of number of atoms, and the same or a different number of atoms as each other side chain in the polymer; and said re-release adhesive having a shrinkage force of 30 MPa or less as developed upon curing with radiation, wherein said side chains are introduced into the radiation-reactive polymer by a method comprising copolymerizing a monomer containing a reactive functional group (a) with a comonomer to synthesize a polymer having the functional group (a) in its side chains, and then reacting the polymer having the functional group (a) with a compound having a functional group (b) that is reactive with the functional group (a) and one carbon-carbon double bond while maintaining the carbon-carbon double bond, such that the terminal carbon-carbon double bond of each side chain of the radiation-reactive polymer is the only carbon-carbon double bond of each side chain. The Examiner relies upon the following references in the rejection of the appealed claims: Ishiwata 5,149,586 Sep. 22, 1992 Kazuhiro (JP '173) JP A-9-298173 Nov. 18, 1991 Winslow 5,741,543 Apr. 21, 1998 Appellants' claimed invention is directed to a curable re-release adhesive comprising a radiation-reactive polymer. The polymer comprises a main chain and a plurality of intermolecular side chains. Each of the side chains has a terminal carbon-carbon double bond, a chain length of six or more atoms, and the same or a different number of atoms of each other side chain in the polymer. Also, the terminal carbon-carbon double bond of each side chain is the only carbon-carbon double bond in each side chain. Appealed claims 1 and 3 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by JP '173. Claims 1 and 3 also stand rejected under 2 Appeal 2008-0157 Application 10/013,543 35 U.S.C. Â§ 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. Â§ 103(a) as being unpatentable over Winslow. In addition, all the appealed claims stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Ishiwata in view of JP '173. Appellants have not separately argued any particular claim on appeal. Accordingly, all the appealed claims stand or fall together with claim 1. We have thoroughly reviewed each of Appellants' arguments for patentability. However, we find that the Examiner's rejections are well founded and supported by the prior art evidence relied upon. Accordingly, we will sustain the Examiner's rejections for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. We consider first the Examiner's rejections of claims 1 and 3 under Â§ 102 over JP '173. Appellants do not dispute the Examiner's factual determination that JP '173 describes an adhesive sheet comprising a radiation-reactive polymer which comprises an acrylic copolymer having side chains comprising ethylenic unsaturation. It is Appellants' contention that the reference does not describe a copolymer wherein (1) each side chain has a terminal carbon-carbon double bond, (2) each side chain has a chain length of 6 or more in terms of the number of carbon atoms, and (3) the terminal carbon-carbon double bond of each side chain is the only such double bond of each side chain. However, Appellants have not refuted the Examiner's factual finding that there is extensive correspondence between the operable monomers disclosed in Appellants' Specification and the monomers described in JP '173 such that it is reasonable to conclude that the 3 Appeal 2008-0157 Application 10/013,543 reference fairly describes copolymers within the scope of the appealed claims.1 The Examiner points out that "[e]ach monomer disclosed in paragraph [0021] has only one carbon-carbon double bond that will be at the terminal of the side chains produced by reaction with the hydroxy or carboxy functional groups in the acrylic main chain" (Ans. 4, first para.). Appellants do not specifically address the reference disclosure in paragraph [0021] of methacryloiloxy-ethyl isocyanate, alpha-dimethylbenzyl isocyanate, methacryloyl isocyanate, and glycidyl (meta)acrylate, let alone explain why the reference specific disclosure of such monomers for the side chain would not result in the claimed side chains having a terminal carbon-carbon double bond with a chain length of 6 or more atoms, and with the terminal carbon- carbon double bond being the only carbon-carbon double bond of each side chain. While Appellants point out at pages 10 and 11 of the Principal Brief that JP '173 also suggests possible structures for the side chains that are not within the scope of the appealed claims, the Examiner correctly notes that the reference does not exemplify or mention using monomers that would provide side chains having more than 1 carbon-carbon double bond. In our view, the Examiner has properly determined that JP '173 fairly describes within the meaning of Â§ 102 curable adhesives comprising a radiation- reactive polymer within the scope of the appealed claims. We now turn to the rejection of claims 1 and 3 under Â§Â§ 102/103 over Winslow. There is no dispute that Winslow, like Appellants, discloses a 1 The Examiner cites the monomers disclosed at pages 12, 13, 15, and 16 of the Specification and the monomers described in the reference at paragraphs [0013-0018] and [0019-0022]. 4 Appeal 2008-0157 Application 10/013,543 curable adhesive comprising a radiation-reactive copolymer having side chains with carbon-carbon double bond unsaturation. As with JP '173, there is substantial correspondence between the monomers used by Appellants and Winslow for forming the main and side chains of the copolymer. Also, as explained by the Examiner, Winslow expressly teaches that the pendent, side chains of the copolymer are formed with unsaturated groups such as (meth)acryloyl, (meth)acryloxy, etc., which groups provide terminal carbon- carbon unsaturation and a chain length of 6 or more atoms (see, for example, col. 6, ll. 3 et seq.). Furthermore, Appellants have not refuted the Examiner's finding that Winslow's use of such pendant groups to form side chains on the copolymer results in each side chain having a carbon-carbon double bond only at the terminal position and each side chain having a length of 6 or more atoms. Manifestly, the referenceâ€™s mere failure to describe the nature of the disclosed side chains with the same language recited in the appealed claims does not undermine the Examiner's position that the adhesive copolymers of Winslow have side chains that meet the requirements of the appealed claims. While appellants maintain that Winslow teaches or suggests other copolymer that are outside the scope of the appealed claims, this does not rebut the Examiner's position that Winslow fairly describes the claimed adhesive copolymers. To the extent it can be argued that Winslow's disclosure falls short of the description required by Â§ 102, we are convinced that one of ordinary skill in the art would have found it obvious to formulate Appellants' adhesive copolymers from the disclosure of Winslow. Appellants' argument that "Winslow provides no motivation to modify its teachings such that a specific polymer (to the exclusion of other alternatives) is prepared" 5 Appeal 2008-0157 Application 10/013,543 according to the claimed invention states no reason why copolymers within the scope of the appealed claims would have been nonobvious to one of ordinary skill in the art (Principal Br. 15, second para.). Furthermore, it is not clear what modification of Winslow's disclosure is necessary for preparing the claimed copolymers, and Appellants have not provided any such explanation. As for the Examiner's Â§ 103 rejection of all the appealed claims over Ishiwata in view of JP '173, we concur with the Examiner that it would have been obvious for one of ordinary skill in the art to use the unsaturated side chains disclosed by JP '173 in formulating the acrylic copolymer of Ishiwata for the benefits articulated by JP '173, namely, removing the adhesive material from a polished wafer while protecting the fine patterns formed on the wafer surface from damage and without leaving excessive adhesive on the surface (see Ans. 6, second para.). We note that Appellants have not refuted the Examiner's rationale but rely upon the argument asserted against the Â§ 102 rejection over JP '173 which, for the reasons set forth above, are unavailing. As a final point, with respect to the Â§ 103 rejections, we note that Appellants base no argument upon objective evidence of nonobviousness, such as unexpected results. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner's decision rejecting the appealed claims is affirmed. 6 Appeal 2008-0157 Application 10/013,543 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED cam SUGHRUE MION PLLC 2100 PENNSYLVANIA AVENUE, NW WASHINGTON, DC 20037-3213 7