Ex Parte Misumi et al

Patent Trial and Appeal Board

Feb 29, 2016

11792752 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111792,752 06/11/2007
513 7590 03/02/2016
WENDEROTH, LIND & PONACK, LLP,
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Koichi Misumi
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2007_0941A 4778
EXAMINER
KELLY, CYNTHIA HARRIS
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
03/02/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ddalecki@wenderoth.com
eoa@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOICHI MISUMI
and TOSHIKI OKUI
Appeal2014-000860
Application 11/792,752 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BEYERL YA. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
uECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1 and 3---6 under 35 U.S.C. § 103(a) as unpatentable over Wang et al. 2 in
view ofKodama. 3 An oral hearing was held on February 11, 2016. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is Tokyo Ohka Kogyo Co.,
Ltd. Appeal Brief dated April 15, 2013 ("App. Br."), at 2.
2 US 6,517,992 Bl, issued February 11, 2003 ("Wang").
3 US 2005/0266336 Al, published December 1, 2005 ("Kodama").
Appeal2014-000860
Application 11/792,752
Independent claim 1, the sole independent claim on appeal, is reproduced
below from the Claims Appendix of the Appeal Brief. The limitations at issue are
italicized.
1. A chemical-amplification positive-working photoresist
composition for the formation of a photoresist layer on a substrate
surface which comprises:
(A) a photoacid generating agent; (B) an alkali-insoluble resin
capable of being imparted with an increased alkali solubility by
interacting with an acid; (C) an alkali-soluble resin; and (D) an
organic solvent,
wherein the component (B) is a resin containing the monomeric
units represented by thefollowingformula:
wherein R1 is a hydrogen atom or a methyl group, R2 is an alkyl
group having 1 to 5 carbon atoms and X is a divalent hydrocarbon
group to form a cyclic structure of 5 to 20 carbon atom members
including the carbon atom to which the group denoted by X is bonded,
and
wherein the component (C) includes (C1) a copolymer of
hydroxystyrene and styrene, and contains at least 80% by mass of
hydroxystyrene units,
with the proviso that the content of the component (C1) relative
to 100 parts by mass of the total amount of the components (B) and
(C) does not exceed 15 parts by mass.
App. Br. 21 (emphasis added).
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Appeal2014-000860
Application 11/792,752
B. DISCUSSION
The Examiner finds Wang discloses a chemically amplified positive resist
composition comprising (A) a photoacid generating agent, (B) an alkali-insoluble
resin, (C) an alkali-soluble resin, and (D) an organic solvent. As for component
(C), the Examiner finds Wang discloses a copolymer of hydroxystyrene/styrene in
a ratio of 8:2. Ans. 4. 4
The Examiner finds Wang does not disclose the specific alkali-insoluble
resin (i.e., component (B)) recited in claim 1 and relies on Kodama for its
disclosure of an alkali-soluble resin within the scope of claim 1. Id. at 5---6.
The Examiner finds Wang and Kodama teach similar compositions (i.e.,
positive resist compositions). Id. at 6; see also id. at 18. Thus, the Examiner
concludes:
[I]t would have been obvious to one of ordinary skill in the art to use
the acid-cleavable [i.e., alkali-insoluble] resin of Kodama in the resist
of Wang to control alkali-solubility of the alkali-insoluble resin
capable of being imparted with increased alkali solubility by
interacting with an acid.
Id. at 6.
The Examiner also finds Wang does not specifically teach that the
hydroxystyrene/styrene copolymer (i.e., component (C)) is present in an amount of
no more than 10 parts by mass based on a total of components (B) and (C). 5
Nonetheless, referring to Wang Examples 3, 6, 8, and 11, the Examiner finds
4 Examiner's Answer dated August 20, 2013.
5 Claim 1 recites that "the content of the component (C1) [i.e., a
hydroxystyrene/styrene copolymer] relative to 100 parts by mass of the total
amount of the components (B) and (C) does not exceed 15 parts by mass." App.
Br. 21 (emphasis added). Claim 6, which depends from claim 1, recites that
component (C1) "does not exceed 10 parts by mass." Id. at 22.
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Appeal2014-000860
Application 11/792,752
Wang discloses that the alkali-soluble resins (i.e., component (C)) are present in
amounts of 5 to 20 pbw. Ans. 4. The Examiner concludes that "it would have
been obvious to one of ordinary skill in the art to employ the hydroxystyrene/
styrene copolymer in amounts not to exceed 10 parts by mass with reasonable
expectation of success." Id. at 4--5.
The Appellants recognize that the amounts of alkali-soluble resin (C) in
Wang Examples 3, 6, 11, 12, and 15 fall within the range recited in claim 1.
Nonetheless, the Appellants argue that resins (B) and (C) in those examples "are
both distinct from the resinous components recited in Appellant's claims." App.
Br. 12. More specifically, the Examiner finds that Wang does not disclose the
alkali-insoluble resin recited in claim 1 (i.e., component (B)) and resin (C) in
Wang Examples 3, 6, 11, 12, and 15 is poly(p-hydroxystyrene), not a copolymer of
hydroxystyrene and styrene as recited in claim 1. See Wang, col. 50, 1. 30.
In the other Example relied on by the Examiner (i.e., Wang Example 8),
resin (C-2) is a copolymer of hydroxystyrene and styrene as recited in claim 1. See
id. at col. 50, 1. 31. However, the Appellants argue that the resin "is used in an
amount of 20 parts by weight, which does not fall within the recited range." App.
Br. 12. For these reasons, the Appellants argue that Wang does not suggest the
amount of component (C1) recited in claim 1.
The Appellants' arguments are persuasive of reversible error. At the heart of
the matter is the fact that Wang does not disclose a range for the amount of alkali-
soluble resin (i.e., component (C)) in the positive resist composition. Contra In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("Aprimafacie case of
obviousness typically exists when the ranges of a claimed composition overlap the
ranges disclosed in the prior art."). Wang merely discloses discrete amounts for
two specific alkali-soluble resins in Table 1 (i.e., C-1 and C-2). There is no dispute
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Appeal2014-000860
Application 11/792,752
on this record that the amount of C-2 (i.e., hydroxystyrene/styrene copolymer)
disclosed in Wang Table 1 falls outside the range recited in claim 1. Thus, absent
the Appellants' disclosure, there would have been no reason to use the claimed
amount of a hydroxystyrene/styrene copolymer in the modified Wang composition.
For this reason, the§ 103(a) rejection of claims 1 and 3---6 is not sustained.
C. DECISION
The decision of the Examiner is reversed.
REVERSED
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