Appeal No. 1997-2209
Application No. 08/179,196
Regarding Ueda, which was applied only against claims 14
and 17, this prior art reference discloses a positive
photoresist composition comprising a dissolution inhibitor
within the scope of the appealed claims (abstract). However,
Ueda does not disclose or suggest the same polymer as recited
in the appellants’ claims. Nor is there any motivation or
suggestion from the applied prior art references to use the
appellants’ claimed polymer in Ueda or to use Ueda’s
dissolution inhibitor in a polymer system as specified in the
appealed claims. Therefore, Ueda likewise fails to remedy the
deficiencies of Urano.
On this record, we are constrained to reverse the
examiner’s rejections under 35 U.S.C. § 103.
Since the remaining claims are all dependent claims, we
need not discuss them separately from appealed claim 1. Also,
we need not address the sufficiency of the comparative
experiments
presented in the declarations under 37 CFR § 1.132 of
Takeyama, because we have determined that the applied prior
art references fail to establish a prima facie case of
obviousness.
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