Ex Parte Ohashi et alDownload PDFPatent Trial and Appeal BoardAug 29, 201813768545 (P.T.A.B. Aug. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/768,545 02/15/2013 Masaki Ohashi 38834 7590 09/05/2018 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 Leesburg Pike SUITE 7500 Tysons, VA 22182 UNITED ST A TES OF AMERICA UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. P4522USOO 4513 EXAMINER CEPL UCH, ALYSSA L ART UNIT PAPER NUMBER 1772 NOTIFICATION DATE DELIVERY MODE 09/05/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentmail@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAKI OHASHI and TOMOHIRO KOBAYASHI Appeal2017-000187 Application 13/7 68,545 1 Technology Center 1700 Before JEFFREY T. SMITH, MICHAEL G. McMANUS, and SHELDON M. McGEE, Administrative Patent Judges. Opinion of the Board by SMITH, Administrative Patent Judge. Opinion Dissenting by McGEE, Administrative Patent Judge. SMITH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the Examiner's rejections of claims 1, 3-9, and 13-17. Appeal Br. 4--14, 16-17. An oral hearing was conducted on August 16, 2018. We have jurisdiction. 35 U.S.C. § 6. 1 Appellant is the Applicant, Shin-Etsu Chemical Co., Ltd., which is also identified as the real party in interest. Appeal Br. 3. Appeal2017-000187 Application 13/768,545 We reverse. STATEMENT OF THE CASE According to the Specification, Appellant's invention relates to polymers containing an anionic compound and an alkylsulfonium cationic compound. Spec. 1: 15-23. According to the Specification, the claimed polymers are useful as the base resin in a photolithographic resist composition. Spec. 6:25-32. Independent claim 1 is illustrative of the appealed subject matter, and is reproduced below: 1. A sulfonic acid anion-containing polymer comprising a recurring unit which is one selected from the group consisting of the following formulae: and On appeal, the Examiner maintains two rejections: claims 1, 3-9, 13, 14 and 17 under 35 U.S.C. § 103(a) as unpatentable as obvious over the 2 Appeal2017-000187 Application 13/768,545 combined disclosures of Hirano2 and Kodama3 and claims 1, 3-9, 13-17 under 35 U.S.C. § I03(a) over the combination of Ohsawa4 and Kodama. 5 Ans. 7-8. Because we select claim 1 as representative, and because Appellant does not separately argue the dependent claims in either rejection of claim 1, we need not address the dependent claims. 37 C.F.R. § 4I.37(c)(l)(iv). The dependent claims will stand or fall with claim 1. OPINION The Examiner finds that both Hirano and Ohsawa discloses the claimed anionic polymeric component, and Kodama discloses the claimed cationic polymeric component of claim 1. Final Act. 2--4, 5---6. The Examiner concludes that it would have been obvious to the skilled artisan "to add the cation of Kodama to the anion" disclosed in each of Hirano and Ohsawa "because Kodama teaches that this cation provides high sensitivity, high resolving power, and a good profile." Final Act. 4, 6 citing Kodama Appellant does not challenge whether the Examiner met the Office's initial burden of establishing a prima facie case of obviousness. Rather, Appellant relies on evidence of unexpected results as sufficient evidence of secondary considerations of non-obviousness. Appellants specifically rely 2 Hirano et al., US 2012/0076997 Al, pub. March 29, 2012. 3 JP 2004-I57158A, pub. June 3, 2004, as translated. 4 Ohsawa et al., US 2009/0269696 Al, Oct. 29, 2009. 5 The Examiner has withdrawn the rejection of claims 1, 3-9, 13-17 under 35 U.S.C. § I03(a) over the combination of Ohashi and Kodama. Ans. 8. 3 Appeal2017-000187 Application 13/768,545 on the declaration of Masaki Ohashi, filed October 29, 2015, and the data presented in the Specification to establish that the claimed subject matter exhibits unexpected results over the prior art, thereby rebutting the obviousness conclusion. Appeal Br. 4--14, 16-17; Reply Br. 2--4. The dispositive issue before us on appeal is whether Appellant has demonstrated that the claimed polymer is unexpectedly superior to the polymers disclosed in the prior art. Because Appellant has not asserted the Examiner has failed to carry the burden of establishing a prima facie case of obviousness and because the Appellant has proffered evidence of nonobviousness, we must now consider anew the issue of obviousness with due regard for all evidence relevant to the ultimate conclusion. In re Rinehart, 531 F.2d 1048, 1052, (CCPA 1976). After consideration of Appellant's data in the Specification and the declaration, we determine the evidence presented is sufficient to overcome the Examiner's rejection. Our reasons follow. The Specification provides the criteria utilized in analyzing the evidence presented in both the Specification and the Declaration. The relevant portions of the Specification is reproduced below: After a 80-nm pitch line-and-space pattern designed such that the line pattern after transfer increased at an increment of 2 nm from 3 6 nm to 44 nm was printed at the optimum exposure, the line width of the resist pattern was measured under SEM [ sic, Scanning Electron Microscope]. The line width of the resist pattern was plotted relative to the line width of the mask, from which a slope was computed by linear approximation and reported as a mask error enhancement factor (MEEF). A smaller value of MEEF is better because it indicates that the influence of a finish error of the mask pattern is minimized. Further a width variation of lines of a 40-nm 1: 1 line-and- space pattern was measured under SEM and reported as line width 4 Appeal2017-000187 Application 13/768,545 roughness (LWR). A smaller value of LWR is better because it indicates minimized fluctuation of a line pattern. The collapse limit was a minimum width (nm) of lines which could be resolved without collapse when the line size was narrowed by increasing the exposure dose. A smaller value indicates better collapse resistance. Spec. 83-84 ( emphasis added). We now tum to the specifics of the data relied on by Appellant to rebut the obviousness rejection based on Hirano and Kodama. The Declaration included an example having the cited recurring unit of resin P- 56 of Hirano and an example including the cited acid generator compound I- 34 of Kodama. Appeal Br. 5 According to Appellant, Table III of the Declaration demonstrates that the polymer which falls within the scope of the claims, i.e., "inventive Example 2-1," exhibited a significantly improved MEEF (2.2), Collapse Limit (32 nm) and LWR (3.8 nm) as compared to Comparison B having the cited recurring unit of Hirano: MEEF (3.8), Collapse Limit (39 nm) and LWR (6.1 nm); and compound I-34 acid generator compound (PAG-3) of Kodama which exhibited: MEEF (3 .2), Collapse Limit ( 40) and L WR ( 6.2 nm). Appeal Br. 6 and 8. Appellant contends that the data shows significantly superior results that are unexpected from both Hirano and Kodama. Id. Appellant additionally relies on data contained within the Specification directed to the same categories discussed in the Declaration. Id. 8-9. Regarding the rejection based on Ohsawa and Kodama, Appellant similarly contends that data contained within the Specification evinces 5 Appeal2017-000187 Application 13/768,545 unexpectedly superior results of the claimed polymer over those disclosed by Ohsawa, and in the same categories discussed with respect to the rejection based on Hirano and Kodama, i.e., MEEF, Collapse Limit and LWR. Id. at 11-14. The Examiner contends the evidence presented is insufficient to demonstrate unexpected results over the polymers disclosed by Hirano and Ohsawa. Rather, the Examiner's position is that one or more of the alleged superior properties would have been expected when considering the teaching of Kodama. The Examiner specifically states: Hirano is used to teach the polymer comprising the anion, Kodama is used to teach the cation of the acid generator, and to provide motivation for using that cation. Kodama teaches that a composition comprising an acid generator having an anion together with a cation, which is equivalent to the claimed cation, provides a composition having high sensitivity, high resolution, excellent profile, and the inhibition of particles over time (paragraph [0005]). The inhibition of the development of particles over time is related to improvements in LWR as evidenced by Iwata (JP 2010-256872) (English abstract). Therefore Kodama teaches each of the benefits purportedly shown by the declaration. Therefore the declaration does not provide evidence of unexpected results, as one of ordinary skill in the art at the time of the invention would expect that a composition with high sensitivity, high resolution, excellent profile, and inhibition of the development of particles, as shown in the declaration, would be obtained by combining the teachings of Hirano and Kodama. Ans. 8-9. Emphasis added. The Examiner has not indicated ( acknowledged or denied) the data relied upon by the Appellant provides superior/unexpected results over Hirano and Ohsawa. Ans. Generally. Rather than provide a discussion of 6 Appeal2017-000187 Application 13/768,545 the significance of the data, the Examiner contends that "Kodama teaches each of the benefits purportedly shown by the declaration." Ans. 8-9 and 13. The Examiner's reliance upon the teaching of Kodama in ,r 5 ( as evidenced by I wato) is insufficient to establish the results obtained from the data presented in both the Specification and the Declaration would have been expected. In reaching this conclusion, the Examiner has not explained these similarities between the compositions of Kodama and Iwato. Iwato discloses the problem to be solved is achieved by radiation sensitive resin compositions that include very specific components. See Abstract. Notwithstanding this failure, the Examiner has not indicated that either reference suggests the results obtained by the data presented by the Appellant would have been expected. That is, the Examiner has not explained what results would have been deemed "superior" by the cited references. Consequently, we agree with Appellant that "the Examiner did not consider the evidence of unexpected results over Hirano and Ohsawa." Reply Br. 2. Under these circumstances, we are constrained to reverse the Examiner's§ 103(a) rejections set forth in the Answer. See In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007) (Failure to meaningfully address submitted evidence is error.); In re Rinehart, 531 F.2d 1048, 1053-54 (CCPA 1976) (Failure to consider the rebuttable evidence in the affidavit relied upon by Appellant is error.) For the foregoing reasons and those presented by Appellant we reverse the appealed rejections. 7 Appeal2017-000187 Application 13/768,545 DECISION The Examiner's final decision to reject claims 1, 3-9, and 13-17 is reversed. REVERSED 8 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAKI OHASHI and TOMOHIRO KOBAYASHI Appeal2017-000187 Application 13/768,545 Technology Center 1700 Before JEFFREY T. SMITH, MICHAEL G. McMANUS, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge, dissenting. I respectfully dissent. While I agree with the majority that the dispositive issue in this appeal is whether Appellant has demonstrated that the claimed polymer is unexpectedly superior to those disclosed in the prior art, I disagree with my colleagues' conclusion that Appellant has made such a showing. Therefore, I would affirm the Examiner's rejections of the appealed claims. In my view, the majority improperly faults the Examiner's consideration of Appellant's data because the Examiner did not "provide a discussion of the significance of the data." Slip Op. 7. Based on this apparent lack of discussion, the majority concludes that the Examiner failed to consider Appellant's evidence. Id. I disagree with this conclusion. Appeal2017-000187 Application 13/768,545 Here, I believe there is ample evidence in the appeal record that the Examiner meaningfully considered the data upon which Appellant relies. See, e.g., Final Act. 11-13; Ans. 8-14. For example, the Examiner identifies each of the purported benefits of the claimed polymer, i.e., better pattern profile, low values of both mask error enhancement factor (MEEF) and line width roughness (L WR), and high resolution. 6 Final Act. 11; Ans. 8-9. The Examiner then cites to paragraph 5 of Kodama, as well as an evidentiary reference 7 establishing a nexus between the measured L WR parameter and Kodama's disclosed benefit of inhibiting particle development over time, and determines that "Kodama teaches each of the benefits purportedly shown by the declaration." Final Act. 11. See also Ans. 8-9, 10-11, 13-14. The Examiner further analyzes the differences between the claimed composition and that of Kodama and determines that Kodama is not the closest prior art. Final Act. 11-12; Ans. 9-10, 11-13. In my view, neither Appellant nor the majority explain how the Examiner could have determined: 1) that Kodama is not the closest prior art, or 2) that the proffered results would have been expected vis-a-vis Kodama's disclosure, had the data not been meaningfully considered. I emphasize in particular the Examiner's observations in the Response to Arguments section of the Final Office Action noting an error in the data relied on by Appellant. 6 The Declaration in Table III reports the "collapse limit" in nanometers which, according to the Specification is "a minimum width (nm) of lines which could be resolved without collapse." Spec. 84:5---6 ( emphasis added). 7 English abstract of JP 2010-256872 to Iwato. 2 Appeal2017-000187 Application 13/768,545 See Final Act. 12 (noting that "the declaration in Table I[SJ recites that P-11 contains A-1 as the Unit 1, however, this unit is not correct for claim 1," and that "the declaration shows the structure of unit A-2, and the [Specification] recites that the polymer P-11 contains A-2, so for purposes of record, the polymer P-11 was considered as it contains A-2, as that unit meets the limitations of claim 1. "). The Examiner's statements appear to have prompted Appellant to file a supplemental inventor declaration - the Declaration appended to the Appeal Brief9 - which corrects the error identified by the Examiner. Compare 1st Inventor Deel. 6, Table I, with 2nd Inventor Deel. 6, Table I. Such circumstances weigh heavily in favor of the Examiner's meaningful consideration of Appellant's data. I furthermore disagree with the majority's position that the Examiner somehow needed to explain the compositional differences between the resins of Kodama and Iwato. Slip Op. 7. Iwato was merely relied on by the Examiner as an evidentiary reference to evince that "[ t ]he inhibition of the development of particles over time" as a disclosed benefit of Kodama "is related to improvements in LWR." Final Act. 11; Ans. 9. Significantly, Appellant never contested the Examiner's determination tying the concepts of line-width roughness (L WR) and particle inhibition over time with any specificity in the Appeal or Reply Briefs. Thus, in my view, the Examiner undisputedly finds that Kodama teaches one or more of the same benefits (e.g., LWR) associated with using 8 Declaration dated May 12, 2015 and filed May 29, 2015 ("1st Inventor Deel.") 9 Declaration dated October 14, 2015 ("2nd Inventor Deel."). 3 Appeal2017-000187 Application 13/768,545 the cation recited in sole independent claim 1. Kodama ,r 5. Accordingly, I believe the preponderance of the evidence supports the Examiner's determination that "the declaration does not provide evidence of unexpected results," because such results would have been expected by the skilled artisan. Ans. 9. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) ("[B]y definition, any superior property must be unexpected to be considered as evidence of non-obviousness."). See also In re Merchant, 575 F.2d 865, 869 (CCPA 1978) ("[t]hough particular results appear unexpected in a comparison with the closest single prior art reference, the teaching of another reference [i.e., Kodama] may establish that those results would have been expected by those skilled in the art."). See also In re Skoner, 517 F.2d 94 7, 950 ( CCP A 197 5) ( explaining that "[ e ]xpected beneficial results are evidence of obviousness."). Thus, on the present record, I would affirm the appealed rejections, and I therefore dissent, with respect. 4 Copy with citationCopy as parenthetical citation