Rohm and Haas Electronic Materials LLC

Patent Trials and Appeals Board

Oct 27, 2021

2021003642 (P.T.A.B. Oct. 27, 2021)

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.
14/027,400 09/16/2013 James W. THACKERAY 58726-104001US(73526-
US)
8571
14324 7590 10/27/2021
Mintz Levin/Rohm&Haas/Dow
Mintz Levin
One Financial Center
Boston, MA 02111
EXAMINER
CEPLUCH, ALYSSA L
ART UNIT PAPER NUMBER
1772
NOTIFICATION DATE DELIVERY MODE
10/27/2021 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):
IPDocketingBos@mintz.com
IPFileroomBos@mintz.com
mintzdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES W. THACKERAY,
JIN WUK SUNG, PAUL J. LaBEAUME,
and VIPUL JAIN
____________

Appeal 2021-003642
Application 14/027,400
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5, 7–10, 24, and 26–282 of
Application 14/027,400. Final Act. (January 22, 2020). We have jurisdiction
under 35 U.S.C. § 6.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Rohm & Haas Electronic Materials LLC as the real party in
interest. Appeal Br. 1.
2 Appellant has cancelled claims 23 and 25. Amendment After Final Action
Under 37 C.F.R. § 1.116 (filed April 22, 2020; entered May 12, 2020).
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A video hearing was held on October 4, 2021. A hearing transcript has
been added to the ’400 Application’s prosecution history.
For the reasons set forth below, we affirm.
I. BACKGROUND
The ’400 Application describes photoresist compositions comprising
two or more distinct acid generating compounds, particularly (a) a polymer-
bonded acid generator and (b) an acid generator that is not bonded to the
polymer and comprises one or more acid-labile groups. Spec. 1. In
particular, the Specification states that preferred polymer bound and non-
polymer bound acid generator compounds include thioxanthones having the
structure depicted in Formula (IB):
Wherein:
 Z is a counter anion;
 R is a non-hydrogen substituent;
 each T and each T′ are the same or different non-hydrogen
substituent;
 each L and each L′ are the same or different acid-labile group, with
T, L, T′, and L′ non-hydrogen groups may be taken together to
form a ring;
 m and m′ are each independently 0, 1, 2, 3, or 4; and
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 n and n′ are each independently 0, 1, 2, 3, or 4.
Id. at 4. The Specification further states that embodiments where one or both
of m and m′ are 0 are particularly preferred. Id.
Claim 1 is representative of the ’400 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. A photoresist composition comprising:
(a) a polymer comprising an acid generator bonded thereto;
and
(b) an acid generator compound that is not bonded to the
polymer and that comprises a thioxanthone moiety and one or
more acid-labile groups,
wherein the (a) bonded acid generator comprises i) a
thioxanthone moiety and ii) an acid-labile group.
Appeal Br. 11.
II. REJECTION
On appeal, the Examiner maintains3 the following rejection:
 Claims 1, 2, 5, 7–10, 24, and 26–28 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Tsuchimura
’075,4 Tsuchimura ’149,5 and Tsubaki.6 Final Act. 6.

3 Because claim 23 has been canceled, the rejection of claim 23 under 35
U.S.C. § 112, ¶ 4, Final Act. 5, is moot.
4 JP 2012-048075, published March 8, 2012. We cite the machine translation
that is of record.
5 US 2010/0248149 A1, published September 30, 2010.
6 WO 2013/047091 A1, published April 4, 2013.
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III. DISCUSSION
A. Claim 1
In rejecting claim 1, the Examiner found that Tsuchimura ’075
describes a photoresist composition comprising a resin having a cation, an
anion and an acid generator compound bound to the polymer. Final Act. 6
(citing Tsuchimura ’075 ¶¶ 29, 31, 322). The Examiner found that
Tsuchimura ’075’s polymer comprises a cation monomer having general
formula A3:
Id. at 6–7 (citing Tsuchimura ’075 ¶¶ 38, 51); see also Tsuchimura ’075
¶¶ 16–17. The Examiner further found that Tsuchimura ’075 teaches that, in
formula A3, Z may be a carbonyl group. Id. at 7 (citing Tsuchimura ’075
¶ 48). When Z is a carbonyl group, Tsuchimura ’075’s polymer comprises a
sulfonium cation within a thioxanthone moiety. Id.
The Examiner found that Tsuchimura ’075 does not describe the
polymer-bonded acid generator A3 as comprising an acid-labile group. Final
Act. 7.
The Examiner also found that Tsuchimura ’149 describes the
photoresist composition comprising a polymer and an acid generator. Final
Act. 7. The Examiner further found that Tsuchimura ’149’s polymer
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comprises a sulfonium ion in which the sulfur is part of a thioxanthone
moiety. Id. (citing Tsuchimura ’149 ¶¶ 59, 72). The Examiner found that
Tsuchimura ’149 describes the thioxanthone moiety as including an acid-
decomposable group. Id. at 7–8 (citing Tsuchimura ’149 ¶ 11).
Based on these findings, the Examiner concluded that it would have
been obvious to a person having ordinary skill in the art to incorporate
Tsuchimura ’149’s acid-labile group into the polymer-bonded cation of
Tsuchimura ’075 because the use of an acid-labile group is said to increase
the sensitivity and resolution of the photoresist and provide a resist film with
a small number of development defects. Final Act. 8 (citing Tsuchimura
’149 ¶¶ 57, 331).
The Examiner found that the combination of Tsuchimura ’075 and
Tsuchimura ’149 does not specifically teach that the non-polymer bound
acid generator comprises an acid-labile group. Final Act. 8.
The Examiner found that Tsubaki describes a photoresist composition
comprising a polymer and an acid generator compound. Final Act. 8.
Tsubaki’s acid generator compound can be a sulfonium ion wherein the
sulfur is part of a thioxanthone moiety. Id. at 8–9 (citing Tsubaki 111–112).
Tsubaki also describes its acid generating compound as including an acid-
labile group. Id. at 9. The Examiner further found that Tsubaki describes the
use of an acid generator including an acid-labile group creates a photoresist
composition with higher sensitivity that created a well-informed extremely
fine pattern when exposed to extreme ultraviolet light. Id. at 9–10.
Based on these findings, the Examiner concluded that it would been
obvious to a person having ordinary skill in the art to combine Tsubaki’s
non-polymer bonded acid generator compound with the photoresist
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composition suggested by the combination of Tsuchimura ’075 and
Tsuchimura ’149. Final Act. 10.
Appellant argues that the rejection of claim 1 should be reversed for
any of four reasons. We address each of these arguments separately.
First, Appellant argues that the Examiner has not provided any
evidence that the proposed substitution of Tsuchimura ’149’s acid-labile
group into the Tsuchimura ’075 structure is feasible. Appeal Br. 4.
This argument is not persuasive.
We begin by noting that the apparent level of ordinary skill in the art
of chemical synthesis for photoresist formulations is high. We make this
finding after review of Appellant’s Specification and the prior art. See, e.g.,
Ex parte Jud, Appeal No. 2006-1061, 2006 WL 4080053 (BPAI Jan. 29,
2006) (informative) (inferring level of skill in the art from the specification);
see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(indicating that the prior art can reflect the level of skill in the art). At the
hearing, Appellant’s counsel agreed that the level of ordinary skill in this art
is high. Tr. 8–10.
Moreover, Tsuchimura ’149 describes a thioxanthone-containing
moiety that includes acid-labile groups. Tsuchimura ’149 ¶¶ 18, 59. In
particular, Tsuchimura ’149 describes a photoresist composition containing a
cation moiety with the structure shown below.
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As Tsuchimura ’149 explains, in this structure, Z1 represents the acid
decomposable group, while L represents a single bond or a divalent linking
group. Id. Tsuchimura ’149 specifically teaches that it is preferable that L be
a carbonyl group. Id. ¶ 72. When L is a carbonyl group, Tsuchimura ’149’s
structure depicts a thioxanthone.
For the purpose of rejections pursuant to § 102 and § 103, prior art
references are presumptively enabled. In re Antor Media Corp., 689 F.3d
1282, 1287–88 (Fed. Cir. 2012). This presumption, however, may be
rebutted by an applicant. In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013)
(“The presumption in Antor is a procedural one—designed to put the burden
on the applicant in the first instance to challenge the cited prior art . . . .
Once an applicant makes a non-frivolous argument that cited prior art is not
enabling, however, the examiner must address that challenge.”).
In this case, (1) the level of ordinary skill in the art is high,
(2) Tsuchimura ’149 describes a thioxanthone-containing moiety with an
acid labile group, and (3) Appellant has not presented any evidence in
support of its argument that the incorporation of acid-labile groups in a
thioxanthone moiety is not feasible. See Appeal Br. 3–5. We, therefore, are
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not persuaded that incorporation of an acid-labile group in Tsuchimura
’075’s cation containing monomer would not have been feasible, or that it
would have been beyond the level of ordinary skill in the art.
Second, Appellant argues that the Examiner did not identify a reason
to substitute an acid-labile group from Tsuchimura ’149 into the Tsuchimura
’075 structure. Appeal Br. 4.
We are not persuaded by this argument.
As the Examiner found, Tsuchimura ’149 describes the incorporation
of an acid-labile group as improving the sensitivity and resolution of the
resist and as providing a resist film that has a small number of development
defects. Tsuchimura ’149 ¶¶ 57, 331. Based upon this description, a person
having ordinary skill in the art would have had a reason to combine
Tsuchimura ’075 and Tsuchimura ’149 in the manner set forth in the Final
Action.
Third, Appellant argues that the combination of Tsuchimura ’075 and
Tsuchimura ’149 does not teach that the non-polymer bound acid generator
compound comprises an acid-labile group. Appeal Br. 4. Appellant
recognizes that the Examiner relies upon Tsubaki’s teaching the non-
polymer bound acid generator compound. Id. Appellant, however, argues
that (1) there is no evidence that the cited generic formula would be acid
decomposable, and (2) there is no showing that the proposed substitution
would be operable. Id.
We are not persuaded by these arguments.
The Examiner found that Tsubaki describes the non-polymer bound
acid generator compound. Final Act. 8. In particular, Tsubaki describes the
acid generator compound having the following structure and comprising a
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site capable of decomposing by action of an acid. Id. at 8–9 (citing Tsubaki
111–12).

In this structure, Q1 is a divalent linking group or a single bond, and B1 is an
acid-labile group. Id. at 9 (citing Tsubaki 112). The Examiner further found
that Tsubaki describes structures in which one R1d is a hydrogen atom and
the other two R1d groups bond to each other to form a ring. Id. Tsubaki
specifically states that the two R1d moieties may form a divalent linking
group having four or fewer carbon atoms. Tsubaki 112. Tsubaki further
identifies a carbonyl group as a specific divalent linking group that may be
present in the acid generating compound. Id. (“The divalent linking group is
preferably a linking group having 4 or less carbon atoms and, for example, a
methylene group, an ethylene group, an ether bond, a carbonyl group and an
ester group are exemplified.”). Tsubaki, therefore, specifically identifies acid
generator compounds containing a thioxanthone moiety.
Tsubaki, therefore, specifically describes a non-polymer bound acid
generator compound that includes acid labile groups. As discussed above,
Tsubaki is presumed to be enabled. Antor Media, 689 F.3d at 1287–88.
Appellant has not presented any evidence to rebut this presumption. See
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Appeal Br. 3–4. Moreover, as discussed above, the level of ordinary skill in
this art is high. We, therefore, are not persuaded that Tsubaki fails to
describe an operable thioxanthone moiety containing an acid decomposable
group.
Fourth, Appellant argues that the rejection should be reversed because
Tsubaki does not exemplify a compound with an acid-labile group. Appeal
Br. 4. At the hearing, Appellant further explained its position, arguing that
the Examiner had failed to establish a prima facie case of unpatentability
because Tsubaki describes a broad genus of acid generator compounds
without exemplifying the particular subgenus encompassed by claim 15.
Appellant asserted that its position was supported by In re Jones, 958 F.2d
347 (Fed. Cir. 1992).7 Tr. 5, 12–13.
We are not persuaded by this argument.
Appellant correctly argues that a prior art description of a broad genus
does not make every member of that genus prima facie obvious. See Jones,
958 F.2d at 350; In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994).
In Jones, the claim at issue encompassed a single ammonium salt of
the herbicide dicamba. Jones, 958 F.2d at 348. The prior art reference

7 When asked why Jones was not cited in either the Appeal Brief or the
Reply Brief, Appellant’s counsel argued that the Reply Brief’s citation of In
re Grabiak, 769 F.2d 729 (Fed. Cir. 1985), meant that Appellant was entitled
to rely on an entire line of cases that included Jones. Tr. 14. Grabiak,
however, was cited for a different proposition in a section of the Reply Brief
that did not address Tsubaki’s disclosure. Reply Br. 1–2 (“The secondary
citation of Tsuchimura ‘149 which ‘075.reports [sic] distinct materials
cannot be relied upon for importing an isolating [sic] feature into
Tsuchimura ‘075. See In re Grabiak . . . .”). Nonetheless, we shall address
Appellant’s untimely argument.
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described a genus consisting of any amine salt of dicamba. Id. at 349. Amine
salts identified in the prior art as “typical” were structurally dissimilar to the
claimed salt. Id. at 349–50. Based on these facts, the Federal Circuit rejected
a rule that “regardless of how broad, a disclosure of a chemical genus
renders obvious any species that happens to fall within it.” Id. at 350
(discussing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 806–09 (Fed.
Cir. 1989).
Baird concerned a similar fact pattern. In Baird, the claim at issue was
directed to a flash fusible binder resin comprising a polyester made from
bisphenol A and one of three dicarboxylic acids. Baird, 16 F.3d at 381. The
Federal Circuit determined that this very narrow subgenus was not prima
facie obvious over a reference that describes a genus estimated to include
polyesters made from combinations of more than 100 million species of
diphenols and a large number of dicarboxylic acids. Id. at 381–82. The
Federal Circuit concluded that “[a] disclosure of millions of compounds
does not render obvious a claim to three compounds, particularly when that
disclosure indicates a preference leading away from the claimed
compounds.” Id. at 383.
Although Appellant is correct that mere disclosure of a species as part
of a large genus does not automatically render that species obvious,
Appellant’s broader interpretation of Jones (and, by extension, Baird) is
incorrect. Appellant’s argument implies that it believes that a claim directed
to a species is per se patentable over prior art describing a genus
encompassing a large number of species, including the claimed species,
unless the claimed species is exemplified in the prior art. See Appeal Br. 4.
The predecessor to this Board has expressly rejected a similar
proposition in a case that is, for us, binding precedent. See Ex parte Fu,
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Appeal No. 2008-0601, 2008 WL 867826 (BPAI March 31, 2008)
(precedential). In that case, the Board distinguished Baird and then stated:
We expressly reject the notion that a claim reciting a
species is per se patentable when the prior art discloses a genus
encompassing a broad but finite number of known options
which include the claimed species. . . . That is not to say,
however, that an applicant would never be entitled to a patent in
a situation as here. For example, KSR [Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007)] and Graham, as well as a myriad of
precedents of our reviewing court, teach that secondary
considerations such as unexpected results may confer
patentability. Also, for example, patentability may be shown if
the prior art teaches away from the species within the genus.
But here, Appellants did not rely on any such persuasive
evidence in support of nonobviousness.
Id. at *8. Indeed, it has long been the law that “a reference is not limited to
the disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651
(CCPA 1972). Moreover, disclosure of particular examples does not
constitute a teaching away from the remainder of a broader disclosure. In re
Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Instead, “all of the relevant
teachings of the cited references must be considered in determining what
they fairly teach to one having ordinary skill in the art.” In re Mercier, 515
F.2d 1161, 1165 (CCPA 1975).
As a result of cases such as Jones, Baird, and Fu, we may not use per
se rules to determine whether claim 15’s subject matter is prima facie
obvious. Cf. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (“[R]eliance
on per se rules of obviousness is legally incorrect and must cease.”). Instead,
we consider the particular facts concerning claim 15’s scope and the
Graham factors.
In Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966), the Supreme
Court identified four factual determinations forming the background against
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which the obviousness or nonobviousness of the subject matter is
determined. These four factors are (1) the scope and content of the prior art,
(2) the differences between the prior art and the claims at issue, (3) the level
of ordinary skill in the art, and (4) objective evidence of nonobviousness
such as commercial success or long felt but unsolved needs. Id.
We address each of these factors in turn.
First, as discussed above, Tsubaki describes a broad genus of acid
generating compounds. See Tsubaki 111–12. Appellant does not dispute the
Examiner’s finding that Tsubaki’s broad genus includes thioxanthones
having at least one acid-labile group.
Second, the difference between the combined disclosures of
Tsuchimura ’075, Tsuchimura ’149, and Tsubaki and claim 1’s subject
matter is the breadth of the genus each describes. With respect to the non-
polymer bound acid generator compound, Tsubaki describes an extremely
broad genus, while claim 1 encompasses a narrower genus comprising “a
thioxanthone moiety and one or more acid-labile groups.”
Third, as discussed above, the level of ordinary skill in the pertinent
art of the photoresist formulations is high. At oral argument, Appellant’s
counsel agreed that a person having ordinary skill in the art would have at
least a bachelor’s degree in chemistry plus several years of experience
working in photoresist formulations. Tr. 9–10.
Fourth, Appellant has not presented any evidence regarding the so-
called secondary considerations of nonobviousness. See Appeal Br. 3–5.
After due consideration of the Graham factors, we conclude that the
subject matter of claim 1 would have been obvious to a person having
ordinary skill in the art at the time of the invention.
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Our conclusion is consistent with the cases discussed above. In
particular, Jones and Baird are readily distinguished from the facts of the
case at hand.
As discussed above, Baird discusses a fact pattern in which the prior
art contained a description “indicate[d] a preference leading away from” the
applicant’s claimed invention. Baird, 16 F.3d at 383. Similarly, Jones
discusses a fact pattern in which the “typical” in embodiments of the claim
genera are structurally dissimilar from the specific compound claimed in the
application at issue. Jones, 956 F.2d at 350.
In this case, we find that the disclosure of the prior art specifically
leads toward the claimed subgenera of polymer bound and non-polymer
bound acid generator compounds. The combination of references cited by
the Examiner specifically identifies both the polymer bound and non-
polymer bound acid generator compounds as comprising thioxanthone
moiety as preferred members of the broad genera described. See Tsuchimura
’149 ¶ 72 (describing a carbonyl linking group as preferred); Tsubaki 112
(stating that a carbonyl group is “exemplified” as a preferable divalent
linking group). The prior art, therefore, would have specifically pointed a
person of ordinary skill in the art toward acid-labile group substituted
thioxanthones as a promising category of acid generator compounds for
experimentation.
In view of the foregoing, we conclude that the Examiner correctly
determined that the combination of Tsuchimura ’075, Tsuchimura ’149, and
Tsubaki renders obvious a genus that includes the specific structures set
forth in claim 1. Because Appellant does not argue or provide any evidence
that the specific subgenus it wishes to claim provides unexpected results
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relative to the prior art, the Examiner correctly determined that the subject
matter of claim 1 was obvious.
B. Claims 2, 5, 7, 10, 24, and 26–28
Appellant identifies each of the dependent claims under a separate
heading as if it wishes to present separate argument for the patentability of
each of the claims. See Appeal Br. 5–9.
For each of the dependent claims, Appellant first asserts that the claim
is patentable for the same reasons that claim 1 is said to be patentable. See,
e.g., Appeal Br. 5 (“Appellant’s dependent claim 2 incorporates all [of] the
limitations of independent claim 1 and therefore is patentable for the above
reasons discussed with respect to claim 1.”). For the reasons set forth above,
we have determined that independent claim 1 is not patentable over the
combination of references asserted by the Examiner.
For each of the dependent claims, Appellant then asserts that the claim
is separately patentable and then summarizes the additional limitations
added by the dependent claim. See, e.g., Appeal Br. 6. The summary is
followed by a one-sentence assertion that the cited documents do not teach
the summarized limitations. Id.
We are not persuaded by these arguments.
Our rules provide that “[a] statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.” 37 C.F.R. § 41.37(c)(1)(iv). In this case, Appellant has done little
more than summarize what each of the dependent claims recites. We have
reviewed the Examiner’s Final Action. In it, the Examiner made specific
findings regarding how the combination of references describes or suggests
the limitations for each of the dependent claims. Appellant’s argument
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neither acknowledges these findings nor specifically addresses the question
of how the Examiner reversibly erred in determining that each of the
dependent claims was unpatentable.
For the reasons set forth above, we affirm the rejections of dependent
claims 2, 5, 7–10, 24, and 26–28.
IV. CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 2, 5, 7–10, 24,
26–28 103(a)
Tsuchimura ’075, Tsuchimura ’149,
Tsubaki
1, 2, 5, 7–10,
24, 26–28
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED