Ex Parte PANDYA et al - Page 2




          Appeal No. 2003-1911                                                        
          Application No. 09/228,694                                                  


          single meta-hydroxy moiety and is unsubstituted at other                    
          available ring positions.  This appealed subject matter is                  
          adequately illustrated by independent claim 1 which reads as                
          follows:                                                                    
               1.  A photoresist composition comprising a photoactive                 
          component and a resin that comprises a polymer that comprises 1)            
          an acid labile group; 2) a meta-hydroxyphenyl group; and 3) a               
          para-hydroxyphenyl group, wherein the meta-hydroxyphenyl group              
          has a single meta-hydroxy moiety and is unsubstituted at other              
          available ring positions.                                                   
               The references set forth below are relied upon by the                  
          examiner in the Section 102 and Section 103 rejections before us:           
          Watanabe et al. (Watanabe)    5,844,057       Dec.   1, 1998                
          Watanabe et al.               6-49137         Feb.  22, 1994                
          (Japanese ‘137)                                                             
          (Japanese Patent)                                                           
          Urano et al. (Urano)          0 780 732 A2    June  25, 1997                
          (European Patent Application)                                               
               Claims 23, 27 and 29 stand rejected under the second                   
          paragraph of 35 U.S.C. § 112 for failing to particularly point              
          out and distinctly claim the subject matter which the appellants            
          regard as their invention.                                                  
               Claims 1-34 stand rejected under 35 U.S.C. § 103(a) as being           
          unpatentable over either Watanabe or Urano.                                 
               Claims 17 and 18 stand rejected under 35 U.S.C. § 102(b) as            
          being anticipated by Japanese ‘137.                                         

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