Appeal No. 1999-2119
Application No. 08/815,410
The section 103 rejections based on Schwalm ‘265
We agree with the examiner that it would have been
prima facie obvious for one with ordinary skill in the art to
formulate the resist material of Schwalm ‘265 with onium salts
that include substituents of the type here claimed since these
substituents are among the choices disclosed by Schwalm as
yielding compounds which would be reasonably expected to possess
the desired properties. See Merck & Co., Inc. v. Biocraft Labs.,
874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989) and In
re O’Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir.
1988).
In support of their contrary view, the appellants argue that
Schwalm ‘265 “fails to teach a practical process by which the
onium salts of appellants’ invention could be prepared” (brief,
page 12). As indicated in our decision on the related appeal,
however, the issue is not whether Schwalm ‘265 discloses a
“practical process” for making the onium salts under
consideration. Instead, the issue is whether the disclosure of
this reference would enable an artisan with ordinary skill to
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