Appeal No. 95-3945
Application 08/204,922
contention that Aas set forth in [In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985)] a
[photopolymerizable] composition, even if non-obvious from the prior art,[3] does not impart non-
obviousness to an old and obvious process@ as evinced by Takeda[4] (answer, page 3; see also page 5,
first full paragraph). In the absence of an analysis establishing the prima facie obviousness of the
claimed invention as a whole, thus including consideration of the non-obvious photopolymerizable
composition specified in the appealed claims, the examiner=s rejection cannot be sustained. In re
Brouwer, 77 F.3d 422, 426, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d 1565,
1569-71, 37 USPQ2d 1127, 1131-32 (Fed. Cir. 1995).
The examiner=s decision is reversed.
Reversed
CAMERON WEIFFENBACH )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Holly D. Kozlowski
Lowe, Price, LeBlanc & Becker
Suite 300, 99 Canal Center Plaza
Alexandria, VA 22314
Ohtawa >747 (answer, Paper No. 9, page 4) in view of the terminal disclaimer filed by appellants
(Paper No. 11).
3 The claimed method of forming a dry film resist specifies a photopolymerizable composition which is
encompassed by the claims of Ohtawa >759.
4 Takeda, Ohtawa >759 and Ohtawa >747 are listed at page 3 of the answer.
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