Ex Parte Meagley et al

Board of Patent Appeals and Interferences

Feb 6, 2008

10666019 (B.P.A.I. Feb. 6, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT P. MEAGLEY
and ERNISSE S. PUTNA
____________

Appeal 2008-0818
Application 10/666,019
Technology Center 1700
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Decided: February 6, 2008
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and KAREN M.
HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 2, 5, 13-16, 18, and 23-28. However, Appellants
state that only claims 14-16, 18, and 24 are the subject of this appeal (App.
Br. 5). We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appeal 2008-0818
Application 10/666,019

Appellants claim a method of forming a photoresist with a photoacid
generator with a cation having a base atom coupled to at least three entirely
sigma-bonded non-cyclic moieties. Representative claim 14 reads as
follows:
14. A method comprising:

forming a photoresist with a photoacid generator with a cation having
a base atom coupled to at least three entirely sigma-bonded non-cyclic
moieties.

The reference set forth below is relied upon by the Examiner as
evidence of obviousness:
Kodama 6,858,370 B2 Feb. 22, 2005

The appealed claims are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kodama.
The issue on this appeal is whether Kodama contains a teaching or
suggestion of a cation embodiment (para. bridging cols. 12-13) which is
entirely sigma-bonded as required by the appealed claims. This is the only
issue raised by Appellants (App. Br. 9; Reply Br. 1-2).
The Examiner correctly finds (Ans. 3-4) that the substituents of
Kodama’s cation may be alkyl groups having from 1 to 10 carbon atoms
such as methyl, ethyl, propyl, butyl and pentyl (col. 13, ll. 19-22). The
Examiner additionally finds (Ans. 3-4), and Appellants do not argue
otherwise (Reply Br. 1-2), that such alkyl groups necessarily would be
sigma-bonded to the base sulfur atom of Kodama's cation. Therefore, we
agree with the Examiner that it would have been obvious for one with
ordinary skill in this art to form Kodama's cation with the aforementioned
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Appeal 2008-0818
Application 10/666,019

alkyl groups as substituents in view of Kodama's express teaching to do so
and that the resulting cation would have a base atom coupled to three
entirely sigma-bonded non-cyclic moieties (i.e., alkyl moieties) as required
by representative claim 14.
Concerning this matter, Appellants emphasize that "a variety of
structures are suggested [by Kodama] including, for example, carbonyl and
vinyl groups that would not be sigma bonded" (Reply Br. 1-2). While
Appellants are correct, this fact does not negate Kodama's explicit teaching
that the cation substituents also may be structures such as alkyl groups
which would be sigma bonded according to the finding expressly made by
the Examiner (Ans. 3-4) and not contested by Appellants on the record
before us (see the App. Br. and the Reply Br. in their entireties).
In light of the foregoing, we hereby sustain the Examiner's § 103
rejection of all appealed claims as being unpatentable over Kodama.
The decision of the Examiner is affirmed.
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)(iv).
AFFIRMED

cam

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