Appeal No. 1997-3051
Application No. 08/473,963
We disagree with the Examiner’s factual basis underlying this rationale to establish
prima facie obviousness. The light sensitive material of Uenishi ‘389 and ‘582 is
sensitive to actinic radiation because of the reaction of a novolak resin with at least one
1,2-quinone diazide group. (‘389, column 2 lines 11-31; ‘582 column 4, lines 50-55).
Uenishi ‘389 and ‘582 do not describe a component which generates an acid when exposed
to activating radiation. The decomposable compounds of Crivello, Nguyen-Kim and
Elsaesser contain groups which are cleaved by acid. Uenishi’s dissolution inhibitors are
fundamentally different because they form an alkali-soluble substance when subjected to
radiation. Consequently, one of ordinary skill in the art would not have been motivated to
substitute the dissolution inhibitors of Uenishi ‘389 and ‘582 for the decomposable
compound of Crivello, Nguyen-Kim or Elsaesser.
The Examiner adds the Ushirogouchi, Nakano and Ebersole references to the above
applied references to reject the subject matter of claims 40 and 41. The Examiner states
“[i]t would have been obvious to one of ordinary skill in this art at the time of the invention
to substitute the novolak copolymers of Ushirogouchi et al., Nakano et al., or Ebersole in
the compositions of Crivello et al., Nguyen-Kim et al., Elsaesser et al. in view of Uenishi
et al.” (Examiner’s Answer, page 10, first paragraph). Claims 40 and 41 are dependent
claims which include the limitations of claim 33. The substitution of the novolak
copolymers of Ushirogouchi, Nakano or Ebersole in the compositions of Crivello,
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