Appeal No. 1997-2209
Application No. 08/179,196
molecular weight of not more than 3,000 and having groups
decomposable by the action of the generated acid to increase
the solubility of said inhibitor in an alkaline developing
solution, wherein said inhibitor (c) is at least one compound
selected from the group consisting of (i) compounds having two
of said acid decomposable groups which are separated by 10 or
more bonded atoms excluding the atoms constituting the acid
decomposable groups or (ii) compounds having at least three of
said acid decomposable groups, and two of said groups which
are at the farthest positions are separated by 9 or more
bonded atoms excluding the atoms constituting the acid
decomposable groups (page 3, lines 22-33). Although the
examiner is correct in stating that Yamanaka’s dissolution
inhibitor compound 35 (page 25) falls within the scope of
appealed claim 1, Yamanaka also describes a large number of
other distinct compounds as being suitable dissolution
inhibitors. Further, Yamanaka fails to disclose or suggest
the same copolymer as recited in appealed claim 1, let alone
the specific comonomer molar ratios.
On the basis of these findings, we determine that a
significant amount of unguided “picking and choosing” from
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