Appeal No. 1997-2209
Application No. 08/179,196
Thus, in comparing Urano against the subject matter of
appealed claim 1, we find that Urano fails to specifically
disclose the appellants’ claimed copolymer having the same
comonomers in the precise claimed molar ratios and fails to
disclose or suggest the use of a dissolution inhibitor having
formula (II) as specified in appealed claim 1. To remedy the
deficiencies of Urano, the examiner relies on Murata, Sinta
and Yamanaka. However, we find that the combined teachings of
the prior art references fail to establish a prima facie case
of obviousness within the meaning of 35 U.S.C. § 103.
As pointed out by the appellants (brief, page 12), Murata
and Sinta fail to disclose or suggest the appellants’ claimed
copolymer and the dissolution inhibitor having formula (II).
Therefore, it is not apparent to us how these prior art
references remedy the deficiencies of Urano.
With respect to Yamanaka, this prior art reference
discloses a positive type light-sensitive composition
comprising: (a) a resin which is insoluble in water and
soluble in an alkaline aqueous solution; (b) a compound which
generates acid by irradiation with active rays or radial rays;
and (c) an acid decomposable dissolution inhibitor having a
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