Appeal No. 1998-2147
Application No. 08/247,356
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.
In the absence of sufficient factual evidence or scientific rationale on the part of
the Examiner to establish why and how a skilled artisan would have arrived at the subject
matter of claim 28 from the applied references, we find that the Examiner has failed to
meet the initial burden of establishing the prima facie obviousness of the claimed
subject matter. Accordingly, we are constrained to reverse the Examiner*s rejection of
claim 28.
CONCLUSION
The rejection of claims 28, 29 and 37 as unpatentable under 35 U.S.C. § 112,
second paragraph is reversed.
The rejection of claims 28, 29, 36 and 37 as unpatentable under 35 U.S.C. § 112,
first paragraph is affirmed.
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