Ex Parte Ohashi et al

Patent Trial and Appeal Board

Aug 29, 2018

13768545 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/768,545 02/15/2013 Masaki Ohashi
38834 7590 09/05/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
UNITED ST A TES OF AMERICA
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.
P4522USOO 4513
EXAMINER
CEPL UCH, ALYSSA L
ART UNIT PAPER NUMBER
1772
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAKI OHASHI and TOMOHIRO KOBAYASHI
Appeal2017-000187
Application 13/7 68,545 1
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL G. McMANUS, and
SHELDON M. McGEE, Administrative Patent Judges.
Opinion of the Board by SMITH, Administrative Patent Judge.
Opinion Dissenting by McGEE, Administrative Patent Judge.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejections of claims 1, 3-9, and 13-17. Appeal Br. 4--14, 16-17.
An oral hearing was conducted on August 16, 2018.
We have jurisdiction. 35 U.S.C. § 6.
1 Appellant is the Applicant, Shin-Etsu Chemical Co., Ltd., which is also
identified as the real party in interest. Appeal Br. 3.
Appeal2017-000187
Application 13/768,545
We reverse.
STATEMENT OF THE CASE
According to the Specification, Appellant's invention relates to
polymers containing an anionic compound and an alkylsulfonium cationic
compound. Spec. 1: 15-23. According to the Specification, the claimed
polymers are useful as the base resin in a photolithographic resist
composition. Spec. 6:25-32.
Independent claim 1 is illustrative of the appealed subject matter, and
is reproduced below:
1. A sulfonic acid anion-containing polymer comprising a recurring
unit which is one selected from the group consisting of the following
formulae:
and
On appeal, the Examiner maintains two rejections: claims 1, 3-9, 13,
14 and 17 under 35 U.S.C. § 103(a) as unpatentable as obvious over the
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Application 13/768,545
combined disclosures of Hirano2 and Kodama3 and claims 1, 3-9, 13-17
under 35 U.S.C. § I03(a) over the combination of Ohsawa4 and Kodama. 5
Ans. 7-8.
Because we select claim 1 as representative, and because Appellant
does not separately argue the dependent claims in either rejection of claim 1,
we need not address the dependent claims. 37 C.F.R. § 4I.37(c)(l)(iv). The
dependent claims will stand or fall with claim 1.
OPINION
The Examiner finds that both Hirano and Ohsawa discloses the
claimed anionic polymeric component, and Kodama discloses the claimed
cationic polymeric component of claim 1. Final Act. 2--4, 5---6. The
Examiner concludes that it would have been obvious to the skilled artisan
"to add the cation of Kodama to the anion" disclosed in each of Hirano and
Ohsawa "because Kodama teaches that this cation provides high sensitivity,
high resolving power, and a good profile." Final Act. 4, 6 citing Kodama
Appellant does not challenge whether the Examiner met the Office's
initial burden of establishing a prima facie case of obviousness. Rather,
Appellant relies on evidence of unexpected results as sufficient evidence of
secondary considerations of non-obviousness. Appellants specifically rely
2 Hirano et al., US 2012/0076997 Al, pub. March 29, 2012.
3 JP 2004-I57158A, pub. June 3, 2004, as translated.
4 Ohsawa et al., US 2009/0269696 Al, Oct. 29, 2009.
5 The Examiner has withdrawn the rejection of claims 1, 3-9, 13-17 under
35 U.S.C. § I03(a) over the combination of Ohashi and Kodama. Ans. 8.
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Application 13/768,545
on the declaration of Masaki Ohashi, filed October 29, 2015, and the data
presented in the Specification to establish that the claimed subject matter
exhibits unexpected results over the prior art, thereby rebutting the
obviousness conclusion. Appeal Br. 4--14, 16-17; Reply Br. 2--4.
The dispositive issue before us on appeal is whether Appellant has
demonstrated that the claimed polymer is unexpectedly superior to the
polymers disclosed in the prior art.
Because Appellant has not asserted the Examiner has failed to carry
the burden of establishing a prima facie case of obviousness and because the
Appellant has proffered evidence of nonobviousness, we must now consider
anew the issue of obviousness with due regard for all evidence relevant to
the ultimate conclusion. In re Rinehart, 531 F.2d 1048, 1052, (CCPA 1976).
After consideration of Appellant's data in the Specification and the
declaration, we determine the evidence presented is sufficient to overcome
the Examiner's rejection. Our reasons follow.
The Specification provides the criteria utilized in analyzing the
evidence presented in both the Specification and the Declaration. The
relevant portions of the Specification is reproduced below:
After a 80-nm pitch line-and-space pattern designed such that
the line pattern after transfer increased at an increment of 2 nm from
3 6 nm to 44 nm was printed at the optimum exposure, the line width
of the resist pattern was measured under SEM [ sic, Scanning Electron
Microscope]. The line width of the resist pattern was plotted relative
to the line width of the mask, from which a slope was computed by
linear approximation and reported as a mask error enhancement
factor (MEEF). A smaller value of MEEF is better because it
indicates that the influence of a finish error of the mask pattern is
minimized. Further a width variation of lines of a 40-nm 1: 1 line-and-
space pattern was measured under SEM and reported as line width
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Application 13/768,545
roughness (LWR). A smaller value of LWR is better because it
indicates minimized fluctuation of a line pattern. The collapse limit
was a minimum width (nm) of lines which could be resolved without
collapse when the line size was narrowed by increasing the exposure
dose. A smaller value indicates better collapse resistance.
Spec. 83-84 ( emphasis added).
We now tum to the specifics of the data relied on by Appellant to
rebut the obviousness rejection based on Hirano and Kodama. The
Declaration included an example having the cited recurring unit of resin P-
56 of Hirano and an example including the cited acid generator compound I-
34 of Kodama. Appeal Br. 5
According to Appellant, Table III of the Declaration demonstrates that
the polymer which falls within the scope of the claims, i.e., "inventive
Example 2-1," exhibited a significantly improved MEEF (2.2), Collapse
Limit (32 nm) and LWR (3.8 nm) as compared to Comparison B having the
cited recurring unit of Hirano: MEEF (3.8), Collapse Limit (39 nm) and
LWR (6.1 nm); and compound I-34 acid generator compound (PAG-3) of
Kodama which exhibited: MEEF (3 .2), Collapse Limit ( 40) and L WR ( 6.2
nm). Appeal Br. 6 and 8. Appellant contends that the data shows
significantly superior results that are unexpected from both Hirano and
Kodama. Id.
Appellant additionally relies on data contained within the
Specification directed to the same categories discussed in the Declaration.
Id. 8-9. Regarding the rejection based on Ohsawa and Kodama, Appellant
similarly contends that data contained within the Specification evinces
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Application 13/768,545
unexpectedly superior results of the claimed polymer over those disclosed
by Ohsawa, and in the same categories discussed with respect to the
rejection based on Hirano and Kodama, i.e., MEEF, Collapse Limit and
LWR. Id. at 11-14.
The Examiner contends the evidence presented is insufficient to
demonstrate unexpected results over the polymers disclosed by Hirano and
Ohsawa. Rather, the Examiner's position is that one or more of the alleged
superior properties would have been expected when considering the teaching
of Kodama. The Examiner specifically states:
Hirano is used to teach the polymer comprising the anion,
Kodama is used to teach the cation of the acid generator, and to
provide motivation for using that cation. Kodama teaches that a
composition comprising an acid generator having an anion together
with a cation, which is equivalent to the claimed cation, provides a
composition having high sensitivity, high resolution, excellent profile,
and the inhibition of particles over time (paragraph [0005]). The
inhibition of the development of particles over time is related to
improvements in LWR as evidenced by Iwata (JP 2010-256872)
(English abstract). Therefore Kodama teaches each of the benefits
purportedly shown by the declaration. Therefore the declaration does
not provide evidence of unexpected results, as one of ordinary skill in
the art at the time of the invention would expect that a composition
with high sensitivity, high resolution, excellent profile, and inhibition
of the development of particles, as shown in the declaration, would be
obtained by combining the teachings of Hirano and Kodama.
Ans. 8-9. Emphasis added.
The Examiner has not indicated ( acknowledged or denied) the data
relied upon by the Appellant provides superior/unexpected results over
Hirano and Ohsawa. Ans. Generally. Rather than provide a discussion of
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Application 13/768,545
the significance of the data, the Examiner contends that "Kodama teaches
each of the benefits purportedly shown by the declaration." Ans. 8-9 and
13. The Examiner's reliance upon the teaching of Kodama in ,r 5 ( as
evidenced by I wato) is insufficient to establish the results obtained from the
data presented in both the Specification and the Declaration would have
been expected. In reaching this conclusion, the Examiner has not explained
these similarities between the compositions of Kodama and Iwato. Iwato
discloses the problem to be solved is achieved by radiation sensitive resin
compositions that include very specific components. See Abstract.
Notwithstanding this failure, the Examiner has not indicated that either
reference suggests the results obtained by the data presented by the
Appellant would have been expected. That is, the Examiner has not
explained what results would have been deemed "superior" by the cited
references.
Consequently, we agree with Appellant that "the Examiner did not
consider the evidence of unexpected results over Hirano and Ohsawa."
Reply Br. 2. Under these circumstances, we are constrained to reverse the
Examiner's§ 103(a) rejections set forth in the Answer. See In re Sullivan,
498 F.3d 1345, 1353 (Fed. Cir. 2007) (Failure to meaningfully address
submitted evidence is error.); In re Rinehart, 531 F.2d 1048, 1053-54
(CCPA 1976) (Failure to consider the rebuttable evidence in the affidavit
relied upon by Appellant is error.)
For the foregoing reasons and those presented by Appellant we
reverse the appealed rejections.
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Application 13/768,545
DECISION
The Examiner's final decision to reject claims 1, 3-9, and 13-17 is
reversed.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAKI OHASHI and TOMOHIRO KOBAYASHI
Appeal2017-000187
Application 13/768,545
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL G. McMANUS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge, dissenting.
I respectfully dissent.
While I agree with the majority that the dispositive issue in this appeal
is whether Appellant has demonstrated that the claimed polymer is
unexpectedly superior to those disclosed in the prior art, I disagree with my
colleagues' conclusion that Appellant has made such a showing. Therefore,
I would affirm the Examiner's rejections of the appealed claims.
In my view, the majority improperly faults the Examiner's
consideration of Appellant's data because the Examiner did not "provide a
discussion of the significance of the data." Slip Op. 7. Based on this
apparent lack of discussion, the majority concludes that the Examiner failed
to consider Appellant's evidence. Id. I disagree with this conclusion.
Appeal2017-000187
Application 13/768,545
Here, I believe there is ample evidence in the appeal record that the
Examiner meaningfully considered the data upon which Appellant relies.
See, e.g., Final Act. 11-13; Ans. 8-14. For example, the Examiner identifies
each of the purported benefits of the claimed polymer, i.e., better pattern
profile, low values of both mask error enhancement factor (MEEF) and line
width roughness (L WR), and high resolution. 6 Final Act. 11; Ans. 8-9. The
Examiner then cites to paragraph 5 of Kodama, as well as an evidentiary
reference 7 establishing a nexus between the measured L WR parameter and
Kodama's disclosed benefit of inhibiting particle development over time,
and determines that "Kodama teaches each of the benefits purportedly
shown by the declaration." Final Act. 11. See also Ans. 8-9, 10-11, 13-14.
The Examiner further analyzes the differences between the claimed
composition and that of Kodama and determines that Kodama is not the
closest prior art. Final Act. 11-12; Ans. 9-10, 11-13.
In my view, neither Appellant nor the majority explain how the
Examiner could have determined: 1) that Kodama is not the closest prior art,
or 2) that the proffered results would have been expected vis-a-vis Kodama's
disclosure, had the data not been meaningfully considered. I emphasize in
particular the Examiner's observations in the Response to Arguments section
of the Final Office Action noting an error in the data relied on by Appellant.
6 The Declaration in Table III reports the "collapse limit" in nanometers
which, according to the Specification is "a minimum width (nm) of lines
which could be resolved without collapse." Spec. 84:5---6 ( emphasis added).
7 English abstract of JP 2010-256872 to Iwato.
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See Final Act. 12 (noting that "the declaration in Table I[SJ recites that P-11
contains A-1 as the Unit 1, however, this unit is not correct for claim 1," and
that "the declaration shows the structure of unit A-2, and the [Specification]
recites that the polymer P-11 contains A-2, so for purposes of record, the
polymer P-11 was considered as it contains A-2, as that unit meets the
limitations of claim 1. "). The Examiner's statements appear to have
prompted Appellant to file a supplemental inventor declaration - the
Declaration appended to the Appeal Brief9 - which corrects the error
identified by the Examiner. Compare 1st Inventor Deel. 6, Table I, with 2nd
Inventor Deel. 6, Table I. Such circumstances weigh heavily in favor of the
Examiner's meaningful consideration of Appellant's data.
I furthermore disagree with the majority's position that the Examiner
somehow needed to explain the compositional differences between the resins
of Kodama and Iwato. Slip Op. 7. Iwato was merely relied on by the
Examiner as an evidentiary reference to evince that "[ t ]he inhibition of the
development of particles over time" as a disclosed benefit of Kodama "is
related to improvements in LWR." Final Act. 11; Ans. 9. Significantly,
Appellant never contested the Examiner's determination tying the concepts
of line-width roughness (L WR) and particle inhibition over time with any
specificity in the Appeal or Reply Briefs.
Thus, in my view, the Examiner undisputedly finds that Kodama
teaches one or more of the same benefits (e.g., LWR) associated with using
8 Declaration dated May 12, 2015 and filed May 29, 2015 ("1st Inventor
Deel.")
9 Declaration dated October 14, 2015 ("2nd Inventor Deel.").
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the cation recited in sole independent claim 1. Kodama ,r 5. Accordingly, I
believe the preponderance of the evidence supports the Examiner's
determination that "the declaration does not provide evidence of unexpected
results," because such results would have been expected by the skilled
artisan. Ans. 9. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed.
Cir. 2007) ("[B]y definition, any superior property must be unexpected to be
considered as evidence of non-obviousness."). See also In re Merchant, 575
F.2d 865, 869 (CCPA 1978) ("[t]hough particular results appear unexpected
in a comparison with the closest single prior art reference, the teaching of
another reference [i.e., Kodama] may establish that those results would have
been expected by those skilled in the art."). See also In re Skoner, 517 F.2d
94 7, 950 ( CCP A 197 5) ( explaining that "[ e ]xpected beneficial results are
evidence of obviousness.").
Thus, on the present record, I would affirm the appealed rejections,
and I therefore dissent, with respect.
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