Appeal No. 1997-3051
Application No. 08/473,963
Claims 40 and 41 are rejected under 35 U.S.C. § 103 as unpatentable over Crivello,
Nguyen-Kim, or Elsaesser in view of Uenishi ‘389 or Uenishi ‘582 further in view of
Ushirogouchi or Nakano or Ebersole. (Examiner’s Answer, page 8).
OPINION
Upon careful review of the entire record including the respective positions
advanced by Appellants and the Examiner, we find that the Examiner has not carried his
burden of establishing a prima facie case of obviousness for the subject matter of claims
33-45, 47-49, 52 and 54.
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984). To that end, the examiner must show that some
objective teaching or suggestion in the applied prior art, or knowledge generally available
in the art,or nature of the problem to be solved would have led one of ordinary skill in the
art to arrive at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996).
Crivello discloses photosensitive compositions comprising a combination of (i) a
compound which generates an acid when exposed to activating radiation and (ii) a
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