Appeal No. 1997-0548
Application 08/345,290
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the ground of rejection of claims 1 through 11, 14, 18 and 19 under 35 U.S.C. § 103 as being
unpatentable over Brunsvold and Schlegel.2
It is well settled that in order to establish a prima facie case of obviousness, “[b]oth the
suggestion and the reasonable expectation of success must be founded in the prior art, not in the
applicant’s disclosure.” In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991),
citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Thus,
a prima facie case of obviousness is established by showing that some objective teaching or suggestion
in the applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in
the art would have led that person to the claimed invention as a whole, including each and every
limitation of the claims, without recourse to the teachings in appellants’ disclosure. See generally, In re
Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J.,
concurring); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In
re Geiger, 815 F.2d 686, 2 USPQ2d 1276 (Fed. Cir. 1987).
We must agree with appellants that the examiner has not established that the claimed process
would have been prima facie obvious over the applied prior art. The dispositive issue in this appeal is
whether one of ordinary skill in this art would have found the suggestion in the teachings of Brunsvold
and of Schlegel to combine the teachings of these references in the reasonable expectation of arriving at
a process of generating a resist image on a substrate falling within the appealed claims wherein the
photoresist film comprises a “vinyl polymer,” as this term would be interpreted in light of appellants’
specification as it would be interpreted by one of ordinary skill in this art. See In re Morris, 127 F.3d
1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). There is no dispute that Brunsvold
discloses processes involving prebaking and post-exposure-baking (PEB) of resists formed with films
which comprise such vinyl polymers that have high glass transition temperatures, and that Schlegel
discloses the same baking steps in forming resists from films which comprise novolak matrix resins that
have low glass transition temperatures. The dispute arises as to whether the low temperature prebake
2 The references are listed at page 3 of the answer.
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