Ex Parte Kubota et al

Board of Patent Appeals and Interferences

Feb 25, 2005

09851274 (B.P.A.I. Feb. 25, 2005)

-1-
The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte HIROSHI KUBOTA, KATSUYA TAKEMURA
and TAKAO YOSHIHARA

Appeal No. 2005-0488
Application No. 09/851,274

ON BRIEF

Before KIMLIN, WALTZ and JEFFREY T. SMITH, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-4 and
9-20, all the claims pending in the present application. Claim 1
is illustrative:
1. A resist material comprising one or more surfactants
having a fluorine substituent and between 10 and 2000 ppm of a
non-ionic surfactant comprising one or more non-ionic surfactants
having neither a fluorine substituent nor a silicon-containing
substituent.
Appeal No. 2005-0488
Application No. 09/851,274
-2-
The examiner relies upon the following references as
evidence of obviousness:
Kawabe et al. (Kawabe) 6,159,656 Dec. 12, 2000
Chen et al. (Chen) 6,174,661 B1 Jan. 16, 2001
(filed Dec. 28, 1998)
Appellants' claimed invention is directed to a resist
material comprising at least one surfactant having a fluorine
substituent and a non-ionic surfactant in the recited amount.
The non-ionic surfactant cannot have either a fluorine or
silicon-containing substituent. According to appellants, the
present invention provides "a resist material and a pattern
formation method in which the coating property is improved, the
occurrences of microbubbles in the solution is [sic, are]
suppressed, and further occurrences of a variety of defects
causing the yield reduction in the device manufacturing step are
low" (page 2 of Brief, paragraph four).
Appealed claims 1-4 and 9-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kawabe taken with Chen.
Appellants submit at page 2 of the Brief that "[f]or the
purposes of this Appeal with respect to the outstanding
obviousness rejection, claims 1-4 and 9-20 are to be considered
standing or falling together, and accordingly, are grouped
together in Group I" (last paragraph). Accordingly, even though
Appeal No. 2005-0488
Application No. 09/851,274
-3-
the ARGUMENT section of appellants' Brief discusses various
claims on appeal, all the appealed claims stand or fall together
with claim 1, and we will limit our consideration to the
examiner's rejection of claim 1.
We have thoroughly reviewed each of appellants' arguments
for patentability, as well as the specification evidence relied
upon in support thereof. However, we are in complete agreement
with the examiner that the claimed subject matter would have been
obvious to one of ordinary skill in the art within the meaning of
§ 103 in view of the applied prior art. Accordingly, we will
sustain the examiner's rejection for the reasons set forth in the
Answer, which we incorporate herein, and we add the following
primarily for emphasis.
There is no dispute that Kawabe, like appellants, discloses
a resist material comprising a surfactant having a fluorine
substituent and provides the further teaching that "a non-ionic
surfactant can be further added for the purpose of improving the
applicability of each photosensitive resin composition of his
invention or improving developability" (page 3 of Answer, last
paragraph). Also, as emphasized by the examiner, Kawabe
specifically discloses examples of non-ionic surfactants which
have neither a fluorine nor a silicon-containing substituent,
Appeal No. 2005-0488
Application No. 09/851,274
-4-
e.g., polyoxyethylene lauryl ether, polyoxyethylene stearyl
ether, etc. (see column 45, lines 1-7). Indeed, all the examples
listed by Kawabe in the cited paragraph have neither a fluorine
nor a silicon-containing substituent. Accordingly, we are in
complete agreement with the examiner that it would have been
obvious for one of ordinary skill in the art to formulate a
resist material within the scope of appealed claim 1. As for
the recited amount of non-ionic surfactant of between 10 and
2000 ppm, we concur with the examiner that it would have been
obvious for one of ordinary skill in the art to resort to routine
experimentation to determine an optimum amount of non-ionic
surfactant for achieving the desired level of applicability and
developability. Moreover, it is well settled that where
patentability is predicated upon a change in a condition of a
prior art composition, such as a change in concentration or the
like, the burden is on the applicant to establish with objective
evidence that the change is critical, i.e., it leads to a new,
unexpected result. In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (CCPA 1955). In the present case, as
stated by the examiner, appellants have not proffered any such
evidence which demonstrates that amounts of non-ionic surfactant
Appeal No. 2005-0488
Application No. 09/851,274
-5-
within the claimed range produce an unexpected result.
Appellants' disclosure at page 10 of the specification that
"[t]he amount of the non-ionic surfactant containing neither a
fluorine substituent nor a silicon containing substituent may be
in the range of 10 to 2000 ppm" would seem to allay any
suggestion of criticality (second paragraph, emphasis added).
Appellants submit that "merely failing to discuss or even
acknowledge a non-ionic surfactant having neither a fluorine
substituent nor a silicon-containing substituent clearly does not
constitute a 'teaching' or even a 'suggestion' of a non-ionic
surfactant having neither a fluorine substituent nor a silicon-
containing substituent" (page 5 of Brief, second paragraph).
However, the examiner's rejection is based upon much more than
Kawabe simply being silent about the nature of the non-ionic
surfactant. Rather, Kawabe expressly discloses a specific number
of non-ionic surfactants having neither a fluorine substituent
nor a silicon-containing substituent which correspond to the non-
ionic surfactants disclosed in the present specification. The
fact that appellants may have discovered an additional advantage
of including the non-ionic surfactants disclosed by Kawabe in a
resist material comprising a surfactant having a fluorine
Appeal No. 2005-0488
Application No. 09/851,274
-6-
substituent does not militate against the obviousness of
formulating the claimed resist material. It is not required for
a finding of obviousness that the motivation of one of ordinary
skill in the art be the same as appellants' motivation. In re
Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996);
In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990) (en banc), cert. denied, 500 U.S. 904 (1991).
Appellants further contend that Examples 1-6 and Comparative
Examples 1-6 of the present specification are evidence of
nonobviousness. Appellants maintain that Comparative Example 6
illustrates "that a surfactant having a fluorine substituent
without an addition of the non-ionic surfactant results in a
large number of contaminants on the pattern surface and a large
number of liquid particles" (page 8 of Brief, first paragraph).
However, appellants point to no evidence that such a result would
be considered unexpected by one of ordinary skill in the art,
particularly in light of the Kawabe teaching with respect to the
advantages of adding the specified non-ionic surfactants. See
In re Merck & Co., 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed.
Cir. 1986), In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16
(CCPA 1972). Comparative evidence must establish not only
Appeal No. 2005-0488
Application No. 09/851,274
-7-
superior results, but also that the results would be truly
unexpected in view of the prior art.
In conclusion, based on the foregoing and the reasons well-
stated by the examiner, the examiner's decision rejecting the
appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv) (effective Sep. 13, 2004; 69 Fed. Reg. 49960
(Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
ECK:clm
Appeal No. 2005-0488
Application No. 09/851,274
-8-
Myers, Bigel, Sibley & Sajovec
P.O. Box 37428
Raleigh, NC 27627