Ex Parte Takahashi et al

Patent Trial and Appeal Board

Jun 29, 2017

12353689 (P.T.A.B. Jun. 29, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/353,689 01/14/2009 Toshiyuki TAKAHASHI 019629.000201 3325
24633 7590
HOGAN LOVELLS US LLP
IP GROUP, COLUMBIA SQUARE
555 THIRTEENTH STREET, N.W.
WASHINGTON, DC 20004
EXAMINER
HUHN, RICHARD A
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
07/03/2017 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):
dcptopatent@hoganlovells.com
HLU S Docke ting @ hoganlovells. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIYUKI TAKAHASHI, EIJI WATANABE,
TOMOHIRO ETOU, and YUUKI KIMURA1
Appeal 2015-007431
Application 12/353,689
Technology Center 1700
Before CHUNG K. PAK, CHRISTOPHER L. OGDEN, and
JULIA HEANEY, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 rejecting claims 1, 2, 4, 5, and 7-15. We have
jurisdiction under 35 U.S.C. § 6(b).3
1 Appellants identify the real party in interest as “JNC CORPORATION.”
Appeal Brief filed March 5, 2015 (“App. Br.”) 3.
2 Non-Final Action entered September 4, 2014 (“Non-Final Act.”) 2-9; and
the Examiner’s Answer entered June 4, 2015 (“Ans.”) 2.
3 Although the action appealed from was a non-final rejection, we have
jurisdiction pursuant to 35 U.S.C. §§ 6 and 134 because the claims have
been twice presented and rejected. See Ex parte Lemoine, 46 USPQ2d 1420,
1423 (BPAI 1994).
Appeal 2015-007431
Application 12/353,689
We AFFIRM.
STATEMENT OF THE CASE
The subject matter of the claims on appeal relates to “a positive
photosensitive polymer composition that can be utilized in, for example, a
resist field.” Spec. 13. This photosensitive polymer composition may be
used as parts of display devices, such as insulating films and protective
films, which are said to be excellent in high solvent resistance, high water
resistance, high acid resistance, high alkali resistance, high thermal
resistance, and high transparency. Spec. Tflf 5, 8, 9.
Details of the appealed subject matter are recited in representative
claim l,4 which is reproduced below from the Claims Appendix of the
Appeal Brief (with disputed limitations in italicized form):
1. A photosensitive polymer composition, comprising:
a copolymer (A) obtained by polymerizing 1 to 20 wt %
of a radical polymerizable monomer (al) represented by the
following formula (I), a radical polymerizable monomer
represented by the following formula (II), and another radical
polymerizable monomer (a2); and
a 1,2-quinone diazide compound (B):
R1
H2C
0
4 Appellants do not separately argue the claims on appeal. App. Br. 10-15.
Therefore, for purposes of this appeal, we limit our discussion to claim 1
pursuant to 37 C.F.R. § 41.37(c)(l)(iv) (2013).
2
Appeal 2015-007431
Application 12/353,689
where R1 represents hydrogen or an alkyl group having 1 to 5
carbon atoms in which arbitrary hydrogen may be replaced by
fluorine, R2 represents an alkylene group having 1 to 5 carbon
atoms, R3 represents an alkyl group having 1 to 10 carbon atoms,
and n represents an integer of 1 to 30,
o10 oil
where R4, R5, and R6 each represent hydrogen or an alkyl group
having 1 to 3 carbon atoms in which arbitrary hydrogen may be
replaced by fluorine, R7, R8, R9, R10, and R11 each represent
hydrogen, a halogen, -CN, -CF3, -OCF3, -OH, an alkyl group
having 1 to 5 carbon atoms in which arbitrary -CH2- may be
replaced by -COO-, -OCO-, or -CO- and arbitrary hydrogen may
be replaced by a halogen, or an alkoxy group having 1 to 5 carbon
atoms in which arbitrary hydrogen may be replaced by a halogen,
provided that one or more of R7 to R11 represents -OH, and
wherein the radical polymerizable monomer (a2) consists
essentially of one or more kinds selected from the group
consisting of a radical polymerizable monomer having an
unsaturated carboxylic acid, a radical polymerizable monomer
having an unsaturated carboxylic anhydride, a radical
polymerizable monomer having an epoxy, a radical
polymerizable monomer represented by the following formula
(III), a radical polymerizable monomer containing an N-
substituted maleimide, and a radical polymerizable monomer
containing a dicyclopentanyl:
(H)
3
Appeal 2015-007431
Application 12/353,689
R« R13
H2C=C—c—0-(-CH2)5r:;i--R14 (HI)
0 Rt5
where R12 represents hydrogen or an alkyl group having 1 to 5
carbon atoms in which arbitrary hydrogen may be replaced by
fluorine, R13, R14, and R15 each represent a hydroxyl group, an
alkyl group having 1 to 5 carbon atoms, an alkoxy group having
1 to 5 carbon atoms, or -0-(Si(CjH2j+i)20)pSi(CkH2k+i)3, j
represents an integer of 1 to 5, k represents an integer of 1 to 5,
p represents 0 or an integer of 1 to 10, and m represents an integer
of 1 to 5.
App. Br. 16-17, Claims Appendix.
The Examiner maintains, and Appellants seek review of, the
following grounds of rejection5:
1. Claims 1, 2, 4, 5, 7, and 10-14 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Sano (EP 0 520 626 Al,
5 Although claim 7 is inadvertently omitted in the first two grounds of
rejection set forth by the Examiner, it is clear from the Examiner’s findings
at pages 5 and 7 of the Non-Final Action that claim 7 is included in these
two grounds of rejection. Appellants were also aware that the first two
grounds of rejection extend to claim 7 from the Examiner’s determination
that one of ordinary skill in the art would have been led to employ Etou
’813’s 4-hydroxyphenl vinyl ketone, which is recited in claim 7, as one of
the monomers used in forming the alkali soluble resin (copolymer) of the
photosensitive composition taught by Sano or Endo. Compare Non-Final
Act. 5, 7, with App. Br. 10-15. Indeed, Appellants state that “[cjlaims 1, 2,
4, 5, and 7-15 are pending and have been rejected under 35 U.S.C. § 103(a).
Claims 1, 2, 4, 5, and 7—15 are being appealed.” App. Br. 5.
4
Appeal 2015-007431
Application 12/353,689
published Dec. 30, 1992), Suzuki6 (JP 2004-212677, published July 29,
2004), and Etou ’813 (US 2008/0131813 Al, published June 5, 2008);
2. Claims 1, 2, 7, 8, and 11 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Endo7 (JP 2007-033518 A, published Feb.
8, 2007), Suzuki, and Etou ’813;
3. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Sano, Suzuki, Etou ’813, and Tadashi (Nissan
Chemical Industries, Positively Photosensitive Resin Composition and
Method of Pattern Formation, (Feb. 21, 2006); and
4. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Sano, Suzuki, Etou ’813, and Banba8 (JP 2001-
100416, published Apr. 13, 2001). Non-Final Act. 2-9; Ans. 2; App. Br. 5;
Reply Brief (filed August 3, 2015) (“Reply Br.”) 3.
DISCUSSION
Upon consideration of the evidence relied upon by the Examiner and
Appellants in light of each of Appellants’ contentions,9 we find no reversible
6 Our reference to Suzuki is to the English translation of record relied upon
by the Examiner. On this record, Appellants do not question the correctness
of the English translation. App. Br. 10-15; Reply Br. 4-5.
7 Our reference to Endo is to the Derwent English translation of record relied
upon by the Examiner.
8 Our reference to Banba is to the English translation of record relied upon
by the Examiner.
9 Any new arguments raised in the Reply Brief, which could have been
raised in the Appeal Brief, will not be considered. 37 C.F.R.
§ 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.”); see also Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative)
5
Appeal 2015-007431
Application 12/353,689
error in the Examiner’s rejections of claims 1, 2, 4, 5, and 7-15 under 35
U.S.C. § 103(a). Accordingly, we sustain the Examiner’s § 103(a) rejections
of the above claims substantially for the reasons set forth in the Non-Final
Action and the Answer. We add the following primarily for emphasis and
completeness.
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner’s § 103 rejections. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365—66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to
make a prima facie case, the Board would not have erred in framing the
issue as one of reversible error because it has long been the Board’s practice
to require an appellant to identify the alleged error in the examiner’s
rejections).
In assessing the presence or absence of reversible error in the
Examiner’s § 103(a) rejections, we must evaluate the prior art references
relied upon by the Examiner in light of Appellants’ arguments, taking into
account “demands known to the design community,” “the background
knowledge possessed by a person having ordinary skill in the art,” and “the
inferences and creative steps that a person of ordinary skill in the art would
employ” “in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed.” KSR Int’l Co. v.
(explaining that under the previous rules, which are similar to the current
rules, “the reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.”).
6
Appeal 2015-007431
Application 12/353,689
Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994) (“[A] prior art reference must be ‘considered
together with the knowledge of one of ordinary skill in the pertinent art.’”)
(quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
I. Rejections 1 and 2
Here, Sano discloses a radiation-sensitive (photosensitive)
composition useful for “forming a coating in an optical device” or for
“forming a microfocusing lens or a lens array formed of a [(sic.)] regularly
arranged lenses.” Sano 2,11. 3-5 (emphasis added). One example of the
coating, according to Sano, is an overcoat layer for a liquid crystal display
device, which can be patterned, developed and etched. Sano 2,11. 6-36;
Endo 2. Another example of such coating, according to Endo, is an
interlayer insulating film or a protective film for electronic components,
such as liquid crystal display elements. Endo 2. Endo also mentions using
its photosensitive composition “for on-chip color filters of facsimile and
electronic-reproduction machine.” Id.
There is no dispute that Sano discloses a photosensitive (radiation-
sensitive) polymer composition comprising the recited 1,2-quinone diazide
compound (B) and an alkali soluble resin (copolymer) prepared by
copolymerizing, inter alia, the recited radical polymerizable monomer (a2)
(a radical polymer monomer having an epoxy or dicyclopentanyl
methacrylate), at least one radical polymerizable unsaturated carboxylic acid
or acid anhydride (acid component monomer), and another radical
polymerizable monomer, such as a monoolefmic unsaturated compound.
Compare Non-Final Act. 3-6, with App. Br. 13-14. See also Sano 3,11. 9-
30, 4,11. 27-30, 6,11. 31-55, 12,11. 31-55. Nor is there any dispute that
7
Appeal 2015-007431
Application 12/353,689
Endo discloses a photosensitive composition comprising the recited 1,2-
quinone diazide compound (B) and an alkali soluble resin (copolymer)
prepared by copolymerizing, inter alia, the recited radical polymerizable
monomer (a2) (a radical polymer monomer having an epoxy) and another
radical polymerizable monomer such as methyl methacrylate. Compare
Non-Final Act. 5-6, with App. Br. 13-14. See also Endo 1-2. The
photosensitive composition taught by Sano or Endo is used to form a coating
that has excellent clearness or transparency, heat resistance, light resistance,
chemical resistance (e.g., water resistance, solvent resistance, acid
resistance, and alkali resistance), and adhesion to a substrate. Sano 2,11. 6-
39; Endo 2.
The Examiner acknowledges that neither Sano nor Endo mentions
including the recited amount of a radical polymerizable monomer (al)
included by the recited formula (I) and a radical polymerizable monomer
included by the recited formula (II), in addition to the above-mentioned
monomers, to form an alkali soluble resin (copolymer) suitable for its
photosensitive composition that can be used to form a coating in an optical
device or form color filters of facsimile and electronic-reproduction
machine. Non-Final Act. 4, 6.
To account for these missing features in either Sano or Endo, the
Examiner relies upon the disclosures of Suzuki and Etou ’813. Non-Final
Act. 4-7. The Examiner finds that Suzuki teaches employing 5 to 20% of an
alkyl polyoxyethylene polyoxypropylene (meth)acrylate (corresponding to
the recited amount of the radical polymerizable monomer (al) encompassed
by formula (I) recited in claim 1) that can be used with other radical
polymerizable monomers, such as an acid component monomer and an
8
Appeal 2015-007431
Application 12/353,689
ethylenically unsaturated monomer, (inclusive of those used in Sano or
Endo) to prepare an alkali soluble resin (copolymer) used in a photosetting
(photoresist) composition suitable for forming, inter alia, “a color filter
[layer or coating] which causes no pinhole repellence on the surface coated
with an overcoat layer and has satisfactory development margin and
development latitude (abstract).” Non-Final Act. 4, 6; Suzuki || 7, 8, 19,
20. According to Suzuki, this color filter layer or coating can be patterned,
can be used in a liquid crystal display, and has a transparency equal to the
overcoat layer in a light range, heat resistance equal to ITO (transparent
electrode) sputtering, etc., and requisite adhesiveness, in addition to the
above-mentioned excellent developing properties and the overcoat pinhole
crawling prevention properties. Suzuki || 4, 19, 22. The Examiner also
finds that Etou ’813 teaches employing, inter alia, 4-hydroxyphenyl vinyl
ketone (Etou ’813’s radical polymerizable monomer A encompassed by
formula (II) recited in claim 1), that can be used with another radical
polymerizable monomer to form an alkali soluble resin (copolymer) having
high solvent resistance, high water resistance, high acid resistance, high
alkali resistance, high thermal resistance, high transparency, and excellent
adhesiveness with a substrate. Non-Final Act. 4, 5, 7; Etou ’813 ^fl[ 12-15,
38, 41-52, 54—80. As stated in Etou ’813 (147):
The monomer (A) [(4-hydroxyphenyl vinyl ketone)] may be
used in the form of a single kind of monomer or may be used in
combination of two or more kinds of monomers. By the use of
an alkali soluble polymer prepared using such a radical
polymerizable monomer, a patterned transparent film having a
high solubility to an aqueous alkali solution in the developing
process, i.e., having a high developing property, can be easily
obtained. In addition, the resulting film shows solvent resistance,
high water resistance, high acid resistance, high alkali resistance,
9
Appeal 2015-007431
Application 12/353,689
high thermal resistance, and high transparency, as well as high
adhesiveness with a substrate.
See also Ans. 3.
Based on these findings, the Examiner determines that one of ordinary
skill in the art would have been led to employ, inter alia, the recited
monomers taught by Suzuki and Etou ’813 as one of the monomers used in
forming the alkali soluble resin (copolymer) of the photosensitive
composition taught by Sano or Endo, with a reasonable expectation of
successfully imparting the desired properties, i.e., excellent clearness or
transparency, heat resistance, light resistance, chemical resistance (e.g.,
water resistance, solvent resistance, acid resistance, and alkali resistance),
adhesion to a substrate, and developing properties, to the photosensitive
composition taught by Sano or Endo. Non-Final Act. 4-7.
Appellants contend as follows:
In the March 4, 2014 declaration [(“first Etou
Declaration”)], . . . Mr. Etou notes that one skilled in the art
would not look to Suzuki (JP 2004-212677) to combine it with
any of the other cited references . . . because although the Endo,
Sano, and Etou [’813] references relate to a photoresist
composition, Suzuki does not. Suzuki relates to a photosetting
composition for a color filter and has no suggestion that it could
be used alone or in combination with another chemical substance
as a photosensitive composition.
App. Br. 13 (citing the first Etou Declaration | 5). However, contrary to
Appellants’ contention and the opinion in the Etou Declaration, Suzuki
discloses a photoresist composition. Suzuki 120 (“the photoresist
constituent containing . . . (b) alkalis soluble resin . . . alkalis soluble resin
[having] (i) Acid component monomer (ii) Alkyl polyoxyethylene
10
Appeal 2015-007431
Application 12/353,689
polyoxypropylene (meta) acrylate”). This alkali soluble resin, like the alkali
soluble resins taught by Sano, Endo, and Etou ’813, can be patterned and
developed, and can employ monomers that allow the alkali resin to have,
inter alia, good transparency, heat resistance, adhesiveness, and patterning
and developing properties. Suzuki || 4, 22. In fact, Appellants do not
contest the Examiner’s finding that “[t]he Suzuki reference is drawn to
photosensitive [or photopolymerizable] compositions” because its
compositions, like the photosensitive compositions taught by Sano, Endo,
and Etou ’813, employ photopolymerization initiators and alkali soluble
resins that include various ethylenically unsaturated monomers. Compare
Ans. 4, with Reply Br. 4-5.
Although Suzuki, by itself, does not teach all of the recited monomers
for forming an alkali soluble resin corresponding to the recited copolymer
used in a photosensitive composition, it teaches that its radical
polymerizable monomer, alkyl polyoxyethylene polyoxypropylene (meta)
acrylate, which can be used with some of the same radical polymerizable
monomers taught by Sano or Endo, is useful for preparing an alkali soluble
resin (copolymer) having the properties desired by Sano or Endo, as
indicated supra, for preparing a photoresist composition useful for forming a
coating in an optical device or forming color filters of a facsimile and
electronic-reproduction machine. Indeed, there is no dispute that “Suzuki
and the other reference[s] . . . [are] drawn to similar photopolymerizable
compositions.” Compare Ans. 4, with Reply Br. 4-5.
It follows that the conclusory statement in the first Etou Declaration
relied upon by Appellants does not adequately explain or identify reversible
error in the Examiner’s reasons for employing the monomer taught by
11
Appeal 2015-007431
Application 12/353,689
Suzuki in forming the alkali soluble resin of the photoresist or photosensitive
composition taught by Sano or Endo.
Again referring to paragraph 5 of the first Etou Declaration,
Appellants contend as follows:
Mr. Etou states that there would have been no motivation
to combine Suzuki with any of the cited references because there
would have been no expectation of success. There is no
suggestion in any of these references that making the claimed
novel composition would lead to a composition that could be
patterned, as well as having traits such as transparency, high
solvent resistance, high water resistance, high alkali resistance,
high heat resistance, high transparence, low dielectric property
and adhesiveness to a substrate.
App. Br. 13. However, this contention is also not well taken.
As is apparent from the language of paragraph 5 of the first Etou
Declaration relied upon by Appellants, it does not take into account Suzuki’s
disclosure of using its monomer to form an alkali soluble resin suitable for a
color filter layer or coating that can be patterned and developed, that can be
used in a liquid crystal display, and that has a transparency equal to the
overcoat layer in a light range, heat resistance equal to ITO (transparent
electrode) sputtering, and the requisite adhesiveness, in addition to excellent
developing properties. Compare the first Etou Declaration | 5, with Suzuki
14, 19, 22. Nor does it take into account the combined disclosures of either
Sano or Endo, Suzuki, and Etou ’813 which would have suggested using
their monomers to form an alkali soluble resin (copolymer) that can impart
excellent transparency, heat resistance, light resistance, chemical resistance
(e.g., water resistance, solvent resistance, acid resistance, and alkali
resistance), adhesion to a substrate, and patterning and developing
12
Appeal 2015-007431
Application 12/353,689
properties, to a photosensitive composition as indicated supra. On this
record, neither Appellants nor the first Etou Declaration proffers any sound
scientific basis or objective evidence to show that there is no reasonable
expectation of success in forming an alkali soluble resin suitable for a
photosensitive composition with the monomers suggested by the collective
teachings of either Sano or Endo, Suzuki, and Etou ’813. App. Br. 10-15;
the first Etou Declaration | 5.
Appellants further contend that
the July 10, 2014 Declaration [executed by Etou, one of the
inventors listed in the instant application (“second Etou
Declaration”)] provides evidence of unexpected benefits (see
discussion above). The test results provided in the Declarations
show that all of the components are necessary and that a
synergistic composition is achieved. The results show that the
monomer of the formula II, which was not taught by either Endo
or Sano [cited prior art], is important to providing the unexpected
benefits, which is not taught or suggested by any of the cited
prior art.
App. Br. 13-14. According to Appellants,
Mr. Etou prepared “Comparative Examples 11-18” which are the
same as Examples 1-8 of Endo et al. regarding the components
and the concentrations. The inventors tested these compositions
and found that, according to Mr. Etou, the transparency of the
cured film greatly improves by using the compositions of the
present invention as compared to the films prepared using the
Endo composition. See Etou Declaration, filed July 10, 2014[,]
paras. 7-9.
In addition, Mr. Etou performed other experiments to
show the unexpected benefits achieved by using the monomer of
Formula II. See Etou Declaration, filed July 10, 2014[,] paras.
10-14. Because neither Endo nor Sano teach[es] the monomer
of formula II, a comparison of either the compositions of Endo
or Sano ... are applicable and should have been considered. . . .
13
Appeal 2015-007431
Application 12/353,689
Mr. Etou notes in paragraph 15 that the monomer of
formula II is very important for creating a positive photosensitive
polymer composition having a great transparency.
App. Br. 11-12. On this record, we are not persuaded that the Examiner has
erred in finding that Appellants have not demonstrated that the second Etou
Declaration shows unexpected results.
Appellants bear the burden of showing that the claimed invention
imparts unexpected results relative to the closest prior art. In re Baxter
TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art”) (citing In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984)); In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972) (“the burden of showing unexpected results rests on he who
asserts them”); In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It was
incumbent upon [AJppellants to submit clear and convincing evidence to
support their allegation of unexpected property”) (citing In re Lohr, 317 F.2d
388 (CCPA 1963)). “[I]t is not enough to show that results are obtained
which differ from those obtained in the [closest] prior art: that difference
must be shown to be an unexpected difference.” Klosak, 455 F.2d at 1080
(citing In re D ’Ancicco, 439 F.2d 1244 (CCPA 1971)); see also In re
Skoner, 517 F.2d 947, 948 (CCPA 1975)(explaining that “[ejxpected
beneficial results are evidence of obviousness . . . [j]ust as unexpected
beneficial results are evidence of unobviousness”) (citing In re Gershon, 372
F.2d 535 (CCPA 1967)). “[UJnexpected results must be established by
factual evidence.” In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984),
quoted with approval in In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995); In re
14
Appeal 2015-007431
Application 12/353,689
Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997) (whether an invention has
produced unexpected results is a question of fact).
Here, Appellants do not dispute the Examiner’s finding that Etou ’813
teaches that its monomer (A) (4-hydroxypheyl vinyl ketone) encompassed
by formula (II) recited in claim 1 is useful for forming an alkali soluble resin
(copolymer) that has “high solvent resistance, high water resistance, high
acid resistance, high alkali resistance, high thermal resistance, high
transparency and excellent adhesiveness with a substrate (abstract).”
Compare Non-Final Act. 4—5, 7, with App. Br. 10-15. Nor do Appellants
dispute the Examiner’s determination that one of ordinary skill in the art
would have been led to employ monomer (A) (4-hydroxypheyl vinyl ketone
taught by Etou ’813, together with the other monomers suggested by Sano
and Suzuki or Endo and Suzuki, in forming an alkali soluble resin
(copolymer) suitable for a photoresist or photosensitive composition, with a
reasonable expectation of successfully obtaining the “above mentioned
advantages.” Compare Non-Final Act. 5, 7, with App. Br. 10-15.
Consistent with this uncontested finding and determination regarding Etou
’ 813’s disclosure of 4-hydroxypheyl vinyl ketone included in formula (II)
recited in claim 1, the Examiner finds that
the Etou reference [(Etou ’813)] discloses that the monomers at
issue (those according to the presently recited chemical formula
(II)) impart “high transparency,” ... to the polymers [(alkali
soluble resins)] (Etou abstract, [0047]). Therefore, in light of
Etou, one of ordinary skill in the art would have had a reasonable
expectation that the combination of Etou’s monomers with those
of the other references would have led to compositions having
high[er] transparency.
15
Appeal 2015-007431
Application 12/353,689
Ans. 3. Nevertheless, neither Appellants nor the second Etou Declaration
provides any adequate explanation or refers to any objective evidence to
show why the transparency achieved, as shown in the second Etou
Declaration, is beyond what is reasonably expected from the teachings of
Etou ’813. App. Br. 10-15; Reply Br. 4-5. The fact that the use of the
monomer taught by Etou ’813 (a monomer included by formula (II) recited
in claim 1) in the copolymer of the claimed photosensitive composition
imparts an improvement over those exemplified by Endo or Sano is not
sufficient to show that such improvement is unexpected by one of ordinary
skill in the art. Klosak, 455 F.2d at 1080. “Mere improvement in properties
does not always suffice to show unexpected results.” In re Soni, 54 F.3d at
751. On this record, Appellants do not adequately explain or identify
reversible error in the Examiner’s finding that the improvement in
transparency is reasonably expected by one of ordinary skill in the art from
the teachings of Etou ’ 813.10
Accordingly, we find no reversible error in the Examiner’s
determination that the preponderance of evidence weighs most heavily in
10 In event of further prosecution of the claimed subject matter, the Examiner
is advised to determine whether Appellants have demonstrated that the
showing in the second Etou Declaration is reasonably commensurate in
scope with the claimed subject matter. See, e.g., In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were
unexpected, Harris needed to show results covering the scope of the claimed
range. Alternatively Harris needed to narrow the claims.”); In re Greenfield,
571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small
number of) species gives unexpected results is inadequate proof, for ‘it is the
view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.’”) (quotingIn re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
16
Appeal 2015-007431
Application 12/353,689
favor of obviousness of the subject matter recited in claims 1, 2, 4, 5, 7, 8,
and 10-14 within the meaning of 35 U.S.C. § 103(a).
II. Rejections 3 and 4
Appellants rely upon the same arguments advanced in connection
with claim 1 discussed above to impart patentability to the subject matter
recited in claims 9 and 15. App. Br. 14-15. Appellants then argue that the
additional reference, namely Tadashi or Banba, “does not cure the
deficiencies of the combination of Sano, Suzuki and Etou [’813].” Id.
Accordingly, based on the same findings and reasons indicated supra,
we find no reversible error in the Examiner’s determination that the
preponderance of evidence weighs most heavily in favor of obviousness of
the subject matter recited in claims 9 and 15 within the meaning of 35
U.S.C. § 103(a).
ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1, 2, 4,
5, and 7-15 under 35 U.S.C. § 103(a) is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
17