Appeal No. 1999-1066
Application No. 08/756,440
A proper conclusion of obviousness under section 103
requires that the applied prior art provides a suggestion for
modifying the prior art (i.e., in such a manner as to result in
the claimed invention) as well as a reasonable expectation that
the modification in question would be successful. In re
O’Farrell, 853 F.2d 894, 903-04, 7 UPSQ2d 1673, 1680-81 (Fed.
Cir. 1988).
Here, the Hayase and Katou references do not provide either
the requisite suggestion for the examiner’s proposed modification
or the requisite reasonable expectation of success. As correctly
pointed out by the appellants, the composition of Hayase is a
positive photoresist composition (e.g., see pages 12 and 16)
whereas the composition of Katou (like the here claimed
composition) is a negative photoresist composition. The positive
versus negative characteristics of these respective compositions
militate against the examiner’s implicit belief that an artisan
would have found a suggestion and reasonable expectation of
success for combining these references in the proposed manner.
Also militating against this belief is the disparate nature of
the repeating units of the respective polymers disclosed in
Hayase and Katou. Finally, the examiner’s obviousness conclusion
is significantly undermined by the fact that neither Hayase nor
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