Ex parte Torimitsu et al.

Board of Patent Appeals and Interferences

Jan 28, 1999

08117546 (B.P.A.I. Jan. 28, 1999)

Application for patent filed September 7, 1993. 1
According to the appellants, the application is a continuation
of Application No. 07/777,572, filed October 16, 1991, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KAZUE TORIMITSU, YUKO URANO and HIDEO KIKUCHI
____________
Appeal No. 95-3082
Application No. 08/117,5461
____________
HEARD: January 12, 1999
____________
Before WEIFFENBACH, OWENS and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 4 through 15, which are
the only claims remaining in this application.
Appeal No. 95-3082
Application No. 08/117,546
2
According to appellants, the invention is directed to a
positive photoresist composition comprising a mixture of an
alkali-soluble resin and a phenol ester of 1,2-naphthaquinone-
(2)-diazide-6-sulfonic acid (hereafter the “6-isomer”, see the
brief, page 2). Appellants submit that use of the 6-isomer
surprisingly forms a photoresist composition that has
increased sensitivity and a reduced amount of film loss upon
exposure to radiation (Id.).
Claim 13 is illustrative of the subject matter on appeal
and is reproduced below:
13. A positive photoresist composition comprising a
mixture of an alkali-soluble resin and an effective amount of
a photosensitive agent comprising a phenol ester of 1,2-
naphthoquinone-(2)-diazide-6-sulfonic acid, said resin and
photosensitive agent being present in a ratio of 100:2-80.
The following reference has been cited by the examiner to
support the rejection under 35 U.S.C. § 102(e):
Hosaka et al. (Hosaka) 5,215,857 Jun. 1, 1993
(effective filing date of Jul. 18,
1986)
Appeal No. 95-3082
Application No. 08/117,546
The new ground of rejection on pages 3-4 of the answer2
has been withdrawn in view of appellants’ reply brief and
amendment in response to the new ground of rejection (dated
Nov. 10, 1994, Paper No. 24). See the Supplemental Examiner’s
Answer dated
Jan. 19, 1995 (Paper No. 26).
3
Claims 4 through 15 stand rejected under 35 U.S.C. §
102(e) as anticipated by Hosaka. We reverse this rejection2
for reasons which follow.
OPINION
The photoresist composition recited in appealed claim 13
requires a 100:2-80 mixture of an alkali-soluble resin (most
commonly novolac, see the brief, page 2) and an effective
amount of a phenol ester of the 6-isomer.
The examiner states that Hosaka describes, teaches and
suggests the essential requirements of the claimed subject
matter by disclosing a radiation-sensitive composition
comprising a solution of 100 parts by weight of an alkali-
soluble resin and
5 to 100 parts by weight of a 1,2-quinone diazide compound as
a radiation-sensitive compound, specifically claiming esters
of
Appeal No. 95-3082
Application No. 08/117,546
Appellants state that “it is agreed that, if this3
reference [Hosaka] fails to directly anticipate the invention,
the application would be patentable thereover.” in view of the
data submitted demonstrating the surprising and unexpected
results of the invention (paragraph bridging pages 3-4 of the
brief). The examiner states that the Declaration evidence has
been considered but is incapable of overcoming a rejection
under § 102 (answer, page 3). However, the advisory action
dated July 27, 1994 (Paper No. 21) states that “[t]he 35
U.S.C. 103 rejections are withdrawn in view of the additional
Declaration evidence showing unexpected results.” (paragraph 3
of the advisory action). See the final rejection and the
Kikuchi Declarations dated July 7, 1994 (Paper No. 20), June
30, 1994 (attachment to Paper No. 18), and January 6, 1994
(attachment to Paper No. 13).
4
the 6-isomer in claim 4 (answer, paragraph bridging pages 2-
3).
Appellants argue that the listing, in a claim, of the
inventive materials (i.e., the 6-isomer), along with a number
of possible alternative materials fails to establish a case of
“direct anticipation” (brief, page 5). Appellants submit that
their invention is a “selection invention” and thus is prima
facie obvious but not anticipated (brief, page 6). 3
Appellants assert that claim 4 of Hosaka contains four
possible 1,2-quinonediazide isomers, that claim 4 of Hosaka is
directed to esters in general and not the phenol esters of
appealed claim 13, and the “exhaustive list” of preferred
Appeal No. 95-3082
Application No. 08/117,546
5
compounds in columns 4-5 of Hosaka fails to disclose any 6-
isomers and a great number are not phenol esters (brief, pages
5-6).
Anticipation is a question of fact. In re King, 801 F.2d
1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986). “Under 35
U.S.C. § 102, every limitation of a claim must identically
appear in a single prior art reference for it to anticipate
the claim.” Gechter v. Davidson, 116 F.3d 1454, 1457, 43
USPQ2d 1030, 1032 (Fed. Cir. 1997). Implicit in our review of
the examiner’s anticipation analysis is that the claim must
first have been correctly construed to define the scope and
meaning of each contested limitation. Gechter v. Davidson,
supra; In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674
(Fed. Cir. 1994).
The term “phenol ester” in appealed claim 13 has been
construed by the examiner as described by the “ester” in claim
4 of Hosaka (answer, page 4). Appellants argue that “the
invention is directed only to phenol esters, while the
Appeal No. 95-3082
Application No. 08/117,546
127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir.4
1997).
J. Kosai, “Light-Sensitive Systems”, pp. 339-357, John5
Wiley & Sons, Inc., New York, 1965.
6
reference would allow, for example alcohol esters.” (brief,
page 6). As stated by our reviewing court in In re Morris:4
[T]he PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words
in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written
description contained in the applicant’s
specification.
The specification does not contain any definition of the term
“phenol ester” but does refer to a book and many patents to5
show “usable phenols” (pages 11-12). The examples in the
specification use 4,4',4'’- trihydroxy-triphenylmethane, 2,2-
bis(2,4-dihydroxyphenyl)propane, 2,4,4'-trihydroxy-
diphenylmethane, 2,3,4,4'-tetrahydroxydiphenylmethane, and
2,3,4,4'-tetrahydroxy-benzophenone as phenols used for
esterifying various 1,2-naphthaquinone diazide compounds
(pages 18-27). “Without an express intent to impart a novel
meaning to claim terms, an inventor’s claim terms take on
their ordinary meaning.” York Prods., Inc. v. Central Tractor
Appeal No. 95-3082
Application No. 08/117,546
See The Condensed Chemical Dictionary, 10th Ed., Hawley,6
p. 796, Van Nostrand Reinhold Co., 1981, a copy of which is
attached to this decision.
See column 5, lines 40-46. Pyrones and diazines are7
considered heterocyclic groups and neither per se contains a
benzene ring.
7
Farm & Family Ctr., 99 F.3d 1568, 1572, 40 USPQ2d 1619, 1622
(Fed. Cir. 1996). The ordinary chemical dictionary meaning of
the term “phenol” is a class of aromatic organic compounds in
which one or more hydroxy groups are attached directly to the
benzene ring. 6
Therefore our inquiry as to whether Hosaka anticipates
the subject matter of appealed claim 13 must focus on the
subject matter encompassed by the claim, as discussed above,
and what subject matter is described by the reference. Hosaka
describes hundreds of esters of 1,2-naphthaquinone diazide in
columns 4-5 but the pyrone and diazine esters would not have7
been considered “phenol esters” by the artisan in view of the
ordinary meaning of this term as discussed above.
Furthermore, Hosaka teaches that additional esters of 1,2-
quinonediazides can be found in the same reference book as
cited by appellant on page 11 of the specification (see column
Appeal No. 95-3082
Application No. 08/117,546
8
5, lines 46-51). Appellants disclose that “[a]lcohols,
phenols, and primary or secondary amines used in the above
reaction [with the quinonediazide sulfonyl halide] include
those compounds” which are described by Kosai on pages 339-357
(specification, page 11, last paragraph). Appellants also
acknowledge that “commercial i-line photoresists use
predominantly phenol esters” of the 4- and 5-isomers of 1,2-
naphthaquinone diazide (specification, page 2, emphasis
added). Therefore, for the foregoing reasons, we cannot agree
with the examiner that the term “esters” in claim 4 and in the
disclosure of Hosaka necessarily should be construed as
substantially identical to the term “phenol esters” as recited
in the appealed claims. From this record, we agree with
appellants that a portion of the esters disclosed by Hosaka
are not “phenol esters” within the common meaning of this
term.
We agree with the examiner that the list of isomers of
1,2-naphthaquinone diazide in claim 4 of Hosaka “is of a size
that a skilled artisan would readily envisage the instant
Appeal No. 95-3082
Application No. 08/117,546
See In re Sivaramakrishnan, 673 F.2d 1383, 1384-85, 2138
USPQ 441, 442 (CCPA 1982); In re Schaumann, 572 F.2d 312, 315-
16, 197 USPQ 5, 8-9; and In re Petering, 301 F.2d 676, 681,
133 USPQ 275, 280 (CCPA 1962).
9
invention” (answer, page 4). However, we do not agree with8
the examiner that the list of compounds in claim 4 of Hosaka
is such a size that a skilled artisan would readily envisage
the subject matter on appeal because the term “esters” in
Hosaka includes more compounds than the “phenol esters” of the
appealed claims. The selection of phenol esters from the
various esters disclosed in Hosaka by one of ordinary skill in
the art would necessitate picking and choosing and combining
various disclosures not taught by the reference. This picking
and choosing is proper for a rejection under § 103 but
improper for a rejection under § 102. In re Arkley, 455 F.2d
586, 587, 172 USPQ 524, 526 (CCPA 1972).
The examiner bears the initial burden of presenting a
prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); see also In
re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3
(Fed. Cir.
Appeal No. 95-3082
Application No. 08/117,546
10
1990). The examiner fails to present any evidence or
reasoning to support the conclusion that the “esters” of the
isomers in claim 4 of Hosaka must necessarily be phenol
esters, within the common meaning of this term (answer, page
4).
For the foregoing reasons, we conclude that the examiner
has failed to establish that every limitation of appealed
claim 13 is “described” in Hosaka within the meaning of that
word in
35 U.S.C. § 102(e). See Gechter v. Davidson, supra, and In re
Arkley, supra. Accordingly, the examiner’s rejection of
claims 4 through 15 under 35 U.S.C. § 102(e) as anticipated by
Hosaka is reversed.
REVERSED

CAMERON WEIFFENBACH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
Appeal No. 95-3082
Application No. 08/117,546
11
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
jrg
Appeal No. 95-3082
Application No. 08/117,546
12
Jordan B. Bierman
Bierman & Muserlian
600 Third Avenue
New York, NY 10016
NOTE: JENINE GILLIS

Copy of Dictionary Reference is in Appeal No. 95-3082
the envelope.
Serial No. 08/117,546
Judge WALTZ
Judge OWENS

Judge WEIFFENBACH
Received: 1/25/99
Revised: 1/26/99

DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
Group Art Unit: 1506
Index Sheet-2901 Rejection(s): ___________
Acts 2: ____
Palm: ____
Mailed: Updated Monthly Disk (FOIA): ____
Updated Monthly Report: ___
Appeal No. 95-3082
Application No. 08/117,546
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