Ex parte KIHARA et al. - Page 11




                Appeal No. 1998-2147                                                                                                       
                Application No. 08/247,356                                                                                                 


                          [I]f a particular polyvinylphenol, having a molecular weight exceeding                                           
                          8,000, is selected for the preparation of a specific photosensitive                                              
                          composition, it can only be selected if, once the composition based on                                           
                          the resin is applied on a substrate, it exhibits the photosensitive and                                          
                          resolution characteristics expected for a composition within the scope                                           
                          of the present invention.  If the selected polyvinylphenol does not meet                                         
                          the stated characteristics of the invention, then the polyvinylphenol is                                         
                          outside the scope of the invention and cannot be used in the presently                                           
                          claimed photosensitive composition.                                                                              
                          [Reply Brief, page 2, lines 16-26].                                                                              

                          We determine that the specification does not indicate that polyvinylphenols                                      

                 whose molecular weight exceed 8,000 are suitable for use in chemical amplification                                        

                 photosensitive composition as long as they exhibit the same properties as a                                               

                 polyvinylphenol with a molecular weight within the range of 3,000 to 8,000.  Page 19                                      

                 of the specification appears to direct those skilled in the relevant art to the                                           

                 disadvantages of using an alkali-soluble resin having a weight average molecular weight                                   

                 which exceeds 8,000.  Specifically, if the molecular weight exceeds 8,000, the chains                                     

                 of the polymer itself could be crosslinked when the composition is exposed to                                             

                 radiation and baked.  (Specification, pages 19, lines 15-16).  It follows then that the                                   

                 specification does not adequately describe a chemical amplification photosensitive                                        

                 composition, comprising a polyvinylphenol resin having a softening point of at least                                      

                 150oC and a weight average molecular weight which exceeds 8,000.  Therefore, the                                          



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