Appeal No. 95-3170
Application No. 07/813,749
Upon careful consideration of the opposing arguments
presented on appeal, we will sustain neither of the examiner's
rejections.
Regarding the rejection of the appealed claims under §
112, first paragraph, we are in essential agreement with the
position set forth by appellants in their Reply Brief. In
essence, the examiner has not carried his initial burden of
establishing with objective evidence or compelling scientific
reasoning that one of ordinary skill in the art would not be
able to practice the claimed invention without undue
experimentation. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ
367, 369 (CCPA 1971). The examiner's statement that forms the
basis of his legal conclusion, that it is not possible for one
skilled in the art to produce the claimed photoresist from the
brief description found in the specification, is without
factual support (page 5 of Answer).
We now turn to the examiner's rejection of the appealed
claims under 35 U.S.C. § 103. The examiner appreciates that
Diemeer, the primary reference, fails to disclose (1) the
claimed photoresist that has a non-linear optical property
which increases with respect to increasing light intensity and
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