Appeal No. 95-3865
Application 07/714,568
It is well established that before a conclusion of
obviousness may be made based on a combination of references,
there must have been a reason, suggestion or motivation to lead
an inventor to combine those references. See Pro-Mold and Tool
Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629 (Fed. Cir. 1996). Uehara teaches that photosensitive
compositions similar to those of the appealed claims (i.e., a o-
quinonediazide, a resin and a dye) have been used in production
of lithographic printing plates and photoresists (column 1, lines
16-20). Nishioka teaches that “photo-solubilizable compositions
comprising an o-quinonediazide compound and a novolak resin
...have been widely used industrially for producing lithographic
printing plates or photoresists” (column 1, lines 15-20, emphasis
added). Neither reference suggests that the roughened and
anodized plate used in lithographic printing plates can be used
with photoresists but only refers to the compositions that may be
useful in either lithographic printing plates or photoresists.
The examiner concludes that, based upon Uehara, the art of
lithographic printing plates and photoresist elements for making
integrated circuits are sufficiently analogous to one another and
interchangeable that the same chemical ingredients may be used in
those layers (answer, paragraph bridging pages 10-11).
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