Ex Parte SAITO et al

Patent Trials and Appeals Board

Jun 20, 2019

14849607 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/849,607 09/10/2015
31561
JCIPRNET
7590
P.O. Box 600 Taipei Guting
Taipei City, 10099
TAIWAN
06/24/2019
FIRST NAMED INVENTOR
MASA YUKI SAITO
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.
58728-US-1002 8395
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
USA@JCIPGROUP.COM
Belinda@JCIPGROUP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASA YUKI SAITO and YOSHIMASA FURUSAT0 1
Appeal2018-006189
Application 14/849,607
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1 and 3-21. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to liquid crystal compositions.
E.g., Spec. ,r 1; Claim 1. Claim 1 is reproduced below from page 11 ( Claims
Appendix) of the Appeal Brief:
1 The Appellants are the Applicants, JNC Corporation and JNC
Petrochemical Corporation, and the real parties in interest are identified as
JNC Corporation and named inventor Masayuki Saito. See App. Br. 1.
Appeal2018-006189
Application 14/849,607
1. A liquid crystal composition that has a negative dielectric
anisotropy, and contains at least one compound selected from the
group of compounds represented by formulas (1-2) and (1-3) as
a first component, and a compound represented by formula (2)
as a second component:
F E F
R1 <~) -c-) --<;:~~)--R2 ( 1-2)
(1-3)
(2)
wherein, in formulas (1-2) and (1-3), RI and R2 are
independently alkyl having 1 to 12 carbons, alkoxy having 1 to
12 carbons, alkenyl having 2 to 12 carbons, alkenyloxy having 2
to 12 carbons, or alkyl having 1 to 12 carbons in which at least
one hydrogen is replaced by fluorine or chlorine.
REJECTIONS ON APPEAL 2
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1, 3-10, 18, and 19 as unpatentable over Tong
(US 2016/0054602 Al, published Feb. 25, 2016 and claiming priority to an
application dated Aug. 25, 2014) in combination with either Lewis
2 The Office Action Summary attached to the Final Action lists claims 1 and
3-21 as rejected. Consistent with that, the Appellants list claims 1 and 3-21
as currently pending and rejected. See App. Br. 1. The headers of the
Examiner's rejections, however, do not include claim 21. See generally
Final Act.; Ans. We observe that, in the Answer, the Examiner states that
claim 21 is "obvious under 35 U.S.C. 103 for the same reasons as
independent claim 1 as a matter of law." E.g., Ans. 23. The Appellants do
not raise any issues concerning claim 21 and instead state that it is argued as
a group with claim 1 as representative. See App. Br. 3. Accordingly, we do
not separately address claim 21 in this Decision.
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Application 14/849,607
(GB 2 339 778 A, published Feb. 9, 2000) or Geelhaar (WO 89/02425,
published Mar. 23, 1989);
2. Claims 1, 3-10, 18, and 19 as unpatentable over Baron
(US 2016/0032189 Al, published Feb. 4, 2016 and claiming priority to an
application dated July 30, 2014) in combination with either Lewis or
Geelhaar;
3. Claims 1, 3-10, 18, and 19 as unpatentable over Klasen-Memmer
(US 2003/0222245 Al, published Dec. 4, 2003) and Czanta (US 7,579,053
B2, issued Aug. 25, 2009);
4. Claims 11-17 and 20 as unpatentable over Klasen-Memmer,
Czanta, and Bematz (US 2009/0103011 Al, published Apr. 23, 2009).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final
Act. 2-20; Ans. 3-30.
The Appellants state that "it is proper to treat claims 1 and 3-21 as a
group." App. Br. 3. We select claim 1 as representative, and the remaining
claims will stand or fall with claim 1.
Rejection 1
The Examiner finds that Tong teaches a dielectrically negative liquid
crystal medium comprising a compound that falls within the scope of
formula (2) of claim 1. Final Act. 2. The Examiner finds that Tong "further
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Application 14/849,607
teaches the liquid crystal medium additionally comprises a compound" that
falls within the scope of formula (1-2) of claim 1. Id. at 3. However, the
Examiner finds that Tong "does not provide the motivation to combine" the
two compounds as required by claim 1. Id.
The Examiner finds that Lewis teaches liquid crystal materials
comprising a compound that "is the mirror image to Tong' s formula [ that
falls within the scope of claim 1 formula (1-2)]," and that Lewis teaches that
the compound "has high dielectric biaxiality which provides faster response
times and decreased switching voltages." Id. at 4.
The Examiner finds that Geelhaar also teaches liquid crystal materials
comprising the same compound as that disclosed by Lewis, and that
Geelhaar teaches that the compound "provides a broad mesophase range and
a comparable low viscosity and can be used to influence the dielectric and/or
optical anisotropy and/ or for the viscosity and/ or the spontaneous
polarization and/or the mesophase range and/or the tilt angle and/or the pitch
when added to liquid crystalline base[d] materials." Id.
The Examiner finds that it would have been obvious to combine the
two compounds of Tong because Lewis and Geelhaar teach benefits,
identified above, to including the compound that falls within the scope of
claim 1 formula (1-2) in liquid crystal compositions. Id. at 5.
In the Examiner's Answer, the Examiner provides an alternative,
independent rationale for making a liquid crystal composition that includes
both compounds of Tong. Ans. 18-19. Specifically, the Examiner finds that
the compositions of Examples 14, 15, 22, and 23 of Tong include both a
compound that falls within the scope of claim 1 formula (2) and a compound
that is very similar to, "and considered equivalent to," a compound that falls
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within the scope of claim 1 formula (1-2). Id. at 18. The Examiner finds
that it would have been obvious to substitute Tong's compound that actually
falls within the scope of claim 1 formula (1-2) for Tong' s "equivalent"
compound in Examples 14, 15, 22, and 23 because the two compounds are
known equivalents. Id. at 18-19. We observe that the alternative rationale
relies on Tong alone and does not require any additional reference.
As to the alternative rationale, although the Appellants file a Reply
Brief, the Appellants do not acknowledge, address, or otherwise contest the
Examiner's reasoning. Accordingly, we affirm Rejection 1 based on the
uncontested alternative rationale in the Examiner's Answer. Additionally,
we observe that "[i]t is prima facie obvious to combine two compositions
each of which is taught by the prior art to be useful for the same purpose, in
order to form a third composition which is to be used for the very same
purpose." In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). There is no
dispute that Tong teaches compounds that fall within the scope of formulas
(1-2) and (2) as suitable for use in liquid crystal compositions.
Turning to the rationale from the Final Action (i.e., the rationale that
relies on Lewis and/or Geelhaar), the Appellants argue that Lewis and
Geelhaar are concerned with liquid crystal materials that use "chiral smectic
liquid crystals," which have "very different properties and require[] different
working principles as compared with ... nematic phase liquid crystal[s],"
such as those used in Tong's liquid crystal medium. App. Br. 4. The
Appellants argue that a person of ordinary skill in the art would not have
expected the benefits disclosed by Lewis and Geelhaar when combining a
chiral smectic compound with a nematic compound. Id. at 4--5.
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That argument is not persuasive for at least the reason that it is
attorney argument unsupported by evidence or persuasive technical
reasoning. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence."). The
Appellants provide no persuasive reason that a person would not expect the
benefits identified by the Examiner if a chiral smectic compound were
combined with a nematic compound. Indeed, the Appellants acknowledge
that Lewis itself discloses mixtures of chiral smectic compounds and at least
certain, specific nematic compounds. Reply Br. 2 ("[B]y referring to Lewis'
disclosure, a skilled artisan would only know that the formula I of Lewis
could be mixed with general smectic compounds or some specific nematic
compounds.").
As the Appellants also acknowledge, id. at 4, Tong is not limited to
liquid crystal mixtures comprising nematic compounds, but instead states,
e.g., that a mixture "is preferably a nematic LC mixture," Tong ,r 174
( emphasis added). As set forth above, the Examiner finds, and the
Appellants do not dispute, that Tong discloses both a compound that falls
within the scope of claim 1 formula (1-2) and a compound that falls within
the scope of claim 1 formula (2), and the Appellants themselves indicate that
the compound that falls within the scope of claim 1 formula (1-2) (i.e., the
compound of Lewis and Geelhaar) may be a chiral smectic compound.
Thus, it appears that Tong itself broadly contemplates mixtures of chiral
smectic compounds and nematic compounds, even if nematic mixtures are
preferred. On this record, we are not persuaded that a person of ordinary
skill in the art would not have made the combination proposed by the
Examiner because a person of ordinary skill in the art would not have
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expected to realize the benefits identified by the Examiner. Cf PAR Pharm.,
Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014) ("The
reasonable expectation of success requirement for obviousness does not
necessitate an absolute certainty for success."); cf also Kerkhoven, 626 F.2d
at 850 ("It is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same purpose, in order to
form a third composition which is to be used for the very same purpose.").
With little elaboration, the Appellants also argue that Lewis and
Geelhaar are not analogous to the claimed invention. App. Br. 4--5. That
argument is not persuasive. Both Lewis and Geelhaar are analogous art for
at least the reason that they are from the same field of endeavor (liquid
crystal materials) as the claimed invention. See In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004).
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 1. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections .... ").
Rejection 2
The disclosure of Baron is very similar to the disclosure of Tong, and
Rejection 2 is similar to Rejection 1. The Appellants raise no arguments
beyond those discussed above. See App. Br. 6-7. We are not persuaded by
those arguments for reasons set forth above. We affirm Rejection 2.
Rejections 3 & 4
The Examiner finds that Klasen-Memmer teaches a dielectrically
negative liquid crystal composition comprising a compound that falls within
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the scope of claim 1 formula (1-2). Final Act. 11. The Examiner finds that
Klasen-Memmer "further teaches the liquid crystal composition comprises
one or more compounds of formula IV," one of which (compound IV-le)
falls within the scope of claim 1 formula (2). Id. at 12. However, the
Examiner finds that Klasen-Memmer "does not provide the motivation to
combine the specific compounds." Id.
The Examiner finds that Czanta teaches a liquid crystal composition
comprising a compound that falls within the scope of claim 1 formula (2),
and that Czanta teaches that the compound "lowers the rotational viscosity"
of the composition. Id. The Examiner determines that it would have been
obvious to combine the two compounds "in order to lower the rotational
viscosity." Id. at 12-13.
The Appellants argue that, because some of Czanta's examples
comprising the compound that falls within the scope of claim 1 formula (2)
(CC-3-V) have higher rotational velocities than examples that do not
comprise the compound that falls within the scope of claim 1 formula (2), "a
decrease in rotational viscosity is not an effect that could reasonably be
expected from adding the compound CC-3-V." App. Br. 7-8.
That argument is not persuasive. Even the examples relied on by the
Appellant, e.g., Example 4, are described as having "low rotational
viscosity." The fact that other examples in Czanta have lower rotational
viscosity does not indicate that a person of ordinary skill in the art would not
have expected CC-3-V to provide a low rotational viscosity when combined
with Klasen-Memmer. Czanta broadly describes improved properties of its
compositions as including improved properties including lower viscosities.
E.g., Czanta at 1:33-38, 2:21--40, Examples (cols. 33-56). Even if Czanta's
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disclosures would not have provided absolutely certainty of obtaining
desirable results, they provide a reasonable expectation of desirable results.
See PAR Pharm., 773 F.3d at 1198 (certainty of success not required to
establish obviousness).
The Appellant also argues that Czanta is nonanalogous art because it
concerns compositions with positive dielectric anisotropy while the claimed
invention concerns negative dielectric anisotropy. App. Br. 8. That
argument is not persuasive. Czanta is analogous art for at least the reason
that it is from the same field of endeavor (liquid crystal materials) as the
claimed invention. See Bigio, 381 F.3d at 1325.
We affirm the Examiner's rejection of claim 1.
The Appellant raises no separate arguments concerning the claims
subject to Rejection 4, which depend, directly or indirectly, from claim 1.
Accordingly, we likewise affirm Rejection 4.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1 and 3-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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