Ex Parte Shirota

Board of Patent Appeals and Interferences

May 29, 2009

10910338 (B.P.A.I. May. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAMI SHIROTA
____________

Appeal 2009-002418
Application 10/910,338
Technology Center 1700
____________

Heard: May 12, 2009
Decided1: May 29, 2009
____________

Before CHARLES F. WARREN, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002418
Application 10/910,338

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A stripping agent composition for a resist, comprising by weight of
the composition:

(A) from 0.2 to 3% by weight of an amine, wherein said amine is selected
from the group consisting of: aliphatic amines having one to four
nitrogen atoms, monoalkylamines having 1 to 20 carbon atoms,
dialkylamines having 2 to 22 carbon atoms, trialkylamines having 3 to
24 carbon atoms, aromatic amines having one nitrogen atom,
alkylbenzylamines, amines prepared by adding an alkylene oxide
having 2 to 4 carbon atoms to any of the preceding amines, amines
having 1 to 4 nitrogen atoms, alkanolamines, alkoxyalkylamines and
alkoxyalkanolamines; and

(B) from 95 to 99% by weight of an organic solvent having a Hansen’s
solubility of from 18 to 33 MPa1/2,

(C) from 0.01 to 3% by weight of a sugar; and

(D) from 0 to 5% by weight of water.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Maruyama 6,440,326 B1 Aug. 27, 2002

2
Appeal 2009-002418
Application 10/910,338

SUMMARY OF THE DECISION
We affirm.
THE REJECTIONS
Claims 1-4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maruyama.
ISSUES
Whether Appellant has shown that the Examiner reversibly erred in
rejecting claims 1-4 as being obvious over Maruyama by showing that the
claimed range of “95 to 99% by weight of an organic solvent” is not
suggested by Maruyama. If this claimed range is suggested by Maruyama,
is Appellant’s rebuttal evidence in response to the prima facie case of
obviousness convincing?
FINDINGS OF FACTS
Maruyama discloses in column 2, beginning at line 54, the following:
Accordingly, the present invention provides a photoresist
removing composition comprising the quaternary ammonium
hydroxide, the water-soluble amine and the alkylpyrrolidone or
a photoresist removing composition comprising the quaternary
ammonium hydroxide, the water-soluble amine, the
alkylpyrrolidone and the anticorrosive.

When specific amounts of an organic solvent are disclosed,
Maruyama teaches that an amount of organic solvent of from 10 to 90% by
weight, preferably from 20 to 70% by weight. Col. 3, ll. 53-55 of
Maruyama.
3
Appeal 2009-002418
Application 10/910,338

Contrary to Appellant's assertion made on page 16 that adding the
lower amounts of required components other than the organic solvent equals
6% by weight of the composition, the Examiner correctly calculates that
adding the lower limits of ammonium hydroxide, amine, and anticorrosive
used in the compositions taught by Maruyama and necessary for the
composition to function, equals 1.2%. The Examiner correctly finds that
thus, 98.8% by weight is left over for additional hydroxide, amine, and
anticorrosive, as well as the organic solvent component, which would allow
for the use of 95%2 by weight of organic solvent as recited by instant claim
1. Ans. 6.
Appellant discusses some of the examples/comparative examples of
Table 2 on page 16 of the Specification as rebuttal evidence. Br. 22-27.
Appellants use Comparative Example 4 of Table 2 as representative of
Maruyama. Br. 26.

PRINCIPLES OF LAW
A prima facie case of obviousness exists where the claimed ranges
and prior art ranges do not overlap but are close enough that one skilled in
the art would have expected them to have the same properties. Titanium
Metals Corp. of America v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges
disclosed by the prior art”, a prima facie case of obviousness exists. In re

2 Appellant incorrectly calculates an amount of up to 94% because
Appellants use preferred lowest amounts rather than lowest disclosed
amounts. Br. 16.
4
Appeal 2009-002418
Application 10/910,338

Wertheim, 541 F.2d 257, 267 (CCPA 1976); In re Woodruff, 919 F.2d 1575,
1577 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71 (Fed. Cir.
1997).
If a prima facie case of obviousness is established, the burden shifts to
the applicant to come forward with arguments and/or evidence to rebut the
prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990).
Rebuttal evidence and arguments can be presented in the specification, In re
Soni, 54 F.3d 746, 750 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292,
299 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37
C.F.R. § 1.132, e.g., In re Soni, 54 F.3d 746, 750; In re Piasecki, 745 F.2d
1468, 1474 (Fed. Cir. 1984). However, arguments of counsel cannot take
the place of factually supported objective evidence. See, e.g., In re Huang,
100 F.3d 135, 139-40, (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
When considering whether proffered evidence demonstrates
patentability, a side-by-side comparison of the claimed invention with the
closest prior art which is commensurate in scope with the claims is needed,
with an explanation as to why the results would have been unexpected by
one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705; In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA
1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).

5
Appeal 2009-002418
Application 10/910,338

ANALYSIS
Appellant states that claim 1 recites an organic solvent in an amount
of from 95% to 99% by weight of the composition. Appellant argues that
Maruyama teaches at most 90% by weight of an organic solvent, and
preferably 20-70% by weight. Appellant argues that “[t]he use of more than
90% by weight of organic solvent is essentially precluded by the teachings
of Maruyama”, and that therefore Maruyama teaches away from higher
percentages as claimed. Br. 15. See also Reply Br. 8.
The Examiner states that it would have been obvious to one of
ordinary skill in the art to have used an organic solvent in an amount of from
95% to 99% by weight because one skilled in the art would have a
reasonable expectation of success based on the Maruyama’s teaching of 90%
by weight of organic solvent. Ans. 3.
We observe that Maruyama discloses in column 2, beginning at line
54, the following:
Accordingly, the present invention provides a photoresist
removing composition comprising the quaternary ammonium
hydroxide, the water-soluble amine and the alkylpyrrolidone or
a photoresist removing composition comprising the quaternary
ammonium hydroxide, the water-soluble amine, the
alkylpyrrolidone and the anticorrosive.

In the above excerpt, Maruyama does not set forth an upper limit on
the amount of organic solvent. That is, Maruyama does not indicate
particular amounts of organic solvent.
When specific amounts are disclosed, Maruyama teaches that an
amount of organic solvent of from 10 to 90% by weight, preferably from 20
to 70% by weight. Col. 3, ll. 53-55 of Maruyama.
6
Appeal 2009-002418
Application 10/910,338

The Examiner correctly calculates that if the lowest amount of each of
the components of the composition of Maruyama were used, the
composition would allow for 95% by weight of organic solvent. 3 Ans. 6.
The Examiner concludes that 90% makes obvious an amount of from
95 to 99% as claimed by Appellant. Br. 3. The Examiner also concludes
that the calculated amount of 95% would suggest the claimed amount of
from 95 to 99% as claimed by Appellant. Br. 6. We agree. A prima facie
case of obviousness exists where the claimed ranges and prior art ranges do
not overlap but are close enough that one skilled in the art would have
expected them to have the same properties. Titanium Metals Corp. of
America v. Banner, 778 F.2d at 782. In the case where the claimed ranges
“overlap or lie inside ranges disclosed by the prior art”, a prima facie case of
obviousness exists. In re Wertheim, 541 F.2d at 267; In re Woodruff, 919
F.2d at 1577; In re Geisler, 116 F.3d at 1469-71.
Hence, we agree with the Examiner’s conclusion of obviousness.
If a prima facie case of obviousness is established, the burden shifts to
the applicant to come forward with arguments and/or evidence to rebut the
prima facie case. See, e.g., In re Dillon, 919 F.2d at 692. Rebuttal evidence
and arguments can be presented in the specification, In re Soni, 54 F.3d at
750, by counsel, In re Chu, 66 F.3d at 299, or by way of an affidavit or
declaration under 37 C.F.R. § 1.132, e.g., Soni, 54 F.3d at 750; In re
Piasecki, 745 F.2d at 1474. However, arguments of counsel cannot take the

3 Appellants incorrectly calculate an amount of up to 94% because
Appellants use preferred lowest amounts rather than lowest disclosed
amounts.
7
Appeal 2009-002418
Application 10/910,338

place of factually supported objective evidence. See, e.g., In re Huang, 100
F.3d at 139-40; In re De Blauwe, 736 F.2d at 705.
When considering whether proffered evidence demonstrates
patentability, a side-by-side comparison of the claimed invention with the
closest prior art which is commensurate in scope with the claims is needed,
with an explanation as to why the results would have been unexpected by
one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d at
392; In re De Blauwe, 736 F.2d at 705; In re Grasselli, 713 F.2d at 743; In
re Clemens, 622 F.2d at 1035; In re Freeman, 474 F.2d at 1324; In re
Klosak, 455 F.2d at 1080. In the instant case, Appellant refers to Table 2 on
page 16 of the Specification. Br. 23-25. Appellant uses Comparative
Example 4 as representative of Maruyama, and states that this example is
within a preferred range of Maruyama and is sufficiently close to the
examples of Maruyama. However, Comparative Example 4 is not the
closest prior art, and a comparison with the closest prior is required. For
example, Maruyama uses an amount of 70% organic solvent in Example 6 in
Table 1-1 in columns 5-6 of Maruyama. Comparative Example 4 of
Appellant’s Table 2 only uses an amount of 20% organic solvent. Also,
Appellants do not explain how their results are unexpected. Finally, as
pointed out by the Examiner on pages 6-7 of the Answer, examples
commensurate in scope with the claims are required for an adequate
comparison, and Appellants have not shown how the examples used in the
comparison are commensurate in scope with the claims.
In view of the above, we agree with the Examiner that the rebuttal
evidence is unconvincing.
8
Appeal 2009-002418
Application 10/910,338

We therefore affirm the rejection.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner reversibly erred in
rejecting claims 1-4 as being obvious over Maruyama by showing that the
claimed range of “95 to 99% by weight of an organic solvent” is not
suggested by Maruyama. Appellant’s rebuttal evidence in response to the
prima facie case of obviousness is unconvincing.

DECISION
The rejection of claims 1-4 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Maruyama 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

tc

BIRCH STEWART KOLASCH & BIRCH
P.O. BOX 747
FALLS CHURCH, VA 22040-0747
9