Ex parte CATANEO et al. - Page 4




              Appeal No. 94-1549                                                                                        
              Application 07/945,540                                                                                    



              subsequently be used to form the photoresist composition of Durham.  The preformed                        
              solvent mixture meets the requirements of claim 1 on appeal.  The statement of                            
              intended use set forth in claim 1 on appeal does not patentably distinguish the claimed                   
              composition from that reasonably suggested by Durham.  In re Pearson, 494 F.2d                            
              1399, 1403, 181 USPQ 641, 644 (CCPA 1974).  Consequently we affirm the rejection                          
              of claim 1.                                                                                               
                     We reverse the rejection of claims 2-15.  Claims 2-15 require, inter alia, that the                
              claimed composition contain about 5-40% water.  The examiner pointed to column 6,                         
              lines 44-54, of Durham at page 2 of the First Office Action (Paper No. 3, December 3,                     
              1992) as teaching this aspect of the claimed invention.  That portion of Durham is                        
              directed to developing the exposed, resist-coated substrates of that invention.  As seen                  
              from that portion of the reference, the coated photoresist composition is subjected to an                 
              elevated temperature to remove a substantial portion of the solvent content.  See                         
              column 6, lines 8-43, of Durham.  As specifically set forth at column 6, lines 34-39,                     
              when the coated substrate is contacted with water, the photoresist coating contains, at                   
              most, about 30% solvent.  The lowest amount of solvent which can be present in the                        
              composition of claim 2 on appeal is 60%.  The examiner has not taken this discrepancy                     
              in solvent values into account in making his patentability determination under 35 U.S.C.                  
               103.                                                                                                    

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