Ex parte CHIN et al. - Page 9




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


               Furthermore, we find an inconsistency in the examiner’s                
          reasoning that one of ordinary skill in the art would have                  
          been                                                                        
          motivated to substitute an electron withdrawing substituent at              
          the alpha carbon of the benzyl group to facilitate the                      
          intramolecular rearrangement set forth in Scheme III of                     
          Reichmanis.  Scheme III as disclosed by Reichmanis shows the                
          generation of acid through the well known ortho-nitrobenzyl                 
          photochemically induced rearrangement (see page 398).  The                  
          teachings of Houlihan at col. 4, ll. 8-58, are relied upon by               
          the examiner to show that increased steric hindrance and                    
          electron withdrawing characteristics provide improved thermal               
          stability (Answer, page 5).  Thus the examiner is proposing to              
          combine the teachings of two different effects, namely the                  
          effect of substituents on photo-induced generation of acid and              
          the effect of substituents on the temperature at which the                  
          acid generator decomposes during the post exposure baking (see              
          Houlihan, col. 4, ll. 14-24).  Furthermore, all of these                    
          effects are taught for substituents at the 6-position of the                
          benzyl ring and the examiner has not shown why these teachings              


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