Appeal No. 1998-2147
Application No. 08/247,356
available in the art would have led one of ordinary skill in the art to arrive at the
claimed invention. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996).
According to the Examiner, Uenishi ‘389 and ‘582 teach photosensitive
alkali-soluble novolak composition comprising the claimed acid-decomposable
compound. The Examiner urges Crivello, Nguyen-Kim and Elsaesser teach the claimed
chemical amplification photosensitive composition except for specifically teaching
the claimed acid-decomposable compound. The Examiner concludes “[o]ne of ordinary
skill in the art would have been motivated to make this substitution because of the
teaching of Uenishi et al. [sic, ‘389 or ‘582] that these compounds provide resists
which are capable of forming a pattern with vertical side walls, have broad development
latitude, and provide resist images with excellent heat resistance.” (Examiner’s
Answer, page 14, third paragraph).
We disagree with the Examiner’s factual basis underlying this rationale to
establish prima facie obviousness. The light sensitive material of Uenishi ‘389 and
‘582 is sensitive to actinic radiation because of the reaction of a novolak resin with at
least one 1,2-quinone diazide group. (‘389, column 2 lines 11-31; ‘582, column 4,
lines 50-55). Uenishi ‘389 and ‘582 do not describe a component which generates an
-15-
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