Ex parte CHIN et al. - Page 4




                 Appeal No. 1997-1301                                                                                                                   
                 Application No. 08/079,310                                                                                                             


                          Appellants cite and refer to the following references in                                                                      
                 rebuttal of the examiner’s evidence of obviousness (Reply                                                                              
                 Brief, pages 13 and 14):                                                                                                               
                 Houlihan et al. (Houlihan ‘136)  4,996,136          Feb. 26,                                                                           
                 1991                                                                                                                                   
                 March, Advanced Organic Chemistry, 4th ed., pp. 342-43 (1992).                                                                         

                          Claims 1 through 5 stand rejected under 35 U.S.C. § 103                                                                       
                 as unpatentable over Houlihan in view of Reichmanis (Answer,                                                                           
                 page 3).   We reverse this rejection essentially for the1                                                                                                                       
                 reasons cogently stated by appellants on pages 7-15 of the                                                                             
                 Reply Brief.  We add the following comments primarily for                                                                              
                 emphasis and completeness.                                                                                                             
                 OPINION                                                                                                                                
                          The examiner states that Houlihan discloses nitro benzyl                                                                      
                 sulfonyl ester photoacid generators which are "similar" to the                                                                         
                 claimed photoacid generators except that the claimed photo                                                                             


                          1This is a new ground of rejection advanced by the                                                                            
                 examiner on page 3 of the Answer.  The final rejections of                                                                             
                 claims 1-5 under 35 U.S.C. § 112, first and second paragraphs,                                                                         
                 and under                                                                                                                              
                 35 U.S.C. § 103 in view of Houlihan (U.S. Patents Nos.                                                                                 
                 4,996,136 or 5,135,838) have all been withdrawn (Answer, page                                                                          
                 2).                                                                                                                                    
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