Ex Parte Tierney et al

Patent Trial and Appeal Board

Nov 22, 2016

13585526 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/585,526 08/14/2012
23599 7590 11/25/2016
MILLEN, WHITE, ZELANO & BRANIGAN, P,C
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
Steven TIERNEY
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.
MERCK-3644-DOl 9874
EXAMINER
AHV AZ!, BIJAN
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN TIERNEY, MARTIN HEENEY, CLARE BAILEY, and
WEIMIN ZHANG
Appeal2015-003323
Application 13/585,526
Technology Center 1700
Before CHUNG K. PAK, PETERF. KRATZ, and DEBRAL. DENNETT,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 14--23. We have jurisdiction pursuant
to 35 U.S.C. § 6.
Appellants' claimed invention is directed to substituted pentacene
compounds of a specified formula, and materials, formulations, and devices
containing such compounds.
Claim 14 is illustrative and reproduced below:
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Application 13/585,526
14. A compound of formula Ia:
11
l I
wherein
R 1-7 are identical or different carbyl or hydrocarbyl
groups.
App. Br. 10 (Claims Appendix).
The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Brown et al. WO 2005/055248 A2 June 16, 2005
The Examiner maintains the following grounds of rejection:
Claims 14--23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown.
After review of the opposing positions articulated by Appellants and
the Examiner and the evidence of obviousness adduced by the Examiner and
the Specification evidence brought to bear on the obviousness question
before us by Appellants, we determine that the Appellants' arguments and
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Ia
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Application 13/585,526
evidence are insufficient to indicate reversible error in the Examiner's
obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated obviousness rejection substantially
for the fact findings set forth by the Examiner in the Examiner's Answer and
in the Final Office Action. We offer the following for emphasis.
Appellants argue the rejected claims 14--20 together as a group and
present further argument for dependent claims 21-23 based on the
Specification evidence. Accordingly, we select claim 14 as the
representative claim on which we decide this appeal as to claims 14--20.
Moreover, we have considered the Specification evidence separately with
respect to dependent claims 21-23 to the extent these claims are separately
argued and separately addressed based on the Specification evidence (App.
Br. 8).
Like Appellants and as found by the Examiner, Brown teaches, inter
alia, pentacene compounds such as compounds of Formula 8 (Brown, p. 14)
that can be employed in semiconductor materials and used in electronic
devices (Final Act. 2-3; Ans. 2-3; Brown, p. 1, 11. 3-16, p. 2, 1. 19-p. 3, 1.
16,p.4,l.20-p.6,l.37;p.14,l.5-p.16,l.1).
Appellants do not dispute that Brown's disclosed Formula 8
compounds, wherein Xis disclosed as being most preferably silicon in
Formula 8, embrace pentacene compounds within the scope of the plethora
of compounds encompassed by Appellants' representative claim 14
compound formula. In particular, Appellants acknowledge "[ o ]ne of the
subgeneric formulae of Brown (i.e., Formula 8, page 14) generically
overlaps with some scope of the compounds of formula Ia of claim 14, on
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appeal, because the Rl-R4 and R8-Rl 1 groups in Brown are generically
defined as all possibly being substituents" (App. Br. 3).
Rather, Appellants rely on In re Jones, 958 F.2d 347 (Fed. Cir. 1992)
and In re Baird, 16 F.3d 380 (Fed. Cir. 1994) and argue that the
circumstances in this appeal are similar to the circumstances in Baird in that
Brown discloses a broad generic formula A and the sub-generic Formula 8 is
a non-preferred embodiment that is still very broad (App. Br. 3--4).
Appellants contend that the disclosed preferences for and examples of
Formula 8 compounds furnished by Brown would not direct one of ordinary
skill in the art to a compound according to claim 14 which would require
compounds wherein the inner positions of the two end rings (R1, R4, Rs, and
R 11 positions of Brown) have substituents rather than compounds wherein
the two outer positions of the end rings (R2, R3, R9, and Rio positions) of
Brown's Formula 8 have substituents as provided for in Brown's disclosed
Formula 8 preferences (id). 1 Given the large number of compounds
embraced by Brown's Formulae and Brown's disclosed exemplified and
preferred compound groups wherein substituents are positioned on the two
end rings at locations other than the Ri, ~'Rs, and Rll positions of Formula
8 of Brown, Appellants contend that the present facts are analogous to the
facts in Baird. Appellants argue that the present record suggests that the
Examiner has not established that an ordinarily skilled artisan would have
been led to select a compound within the scope of Formula 8 of Brown
1 The inner positions of the two end rings (R1, ~'Rs, and R11 ) of Brown's
Formula 8 corresponds to positions R3, R4, R1, R2 of Appellants' claimed
compound formula.
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wherein the substituents are located at the R1, Ri, R8, and R 11 positions
according to Brown's Formula 8 (App. Br. 3-5; Reply Br. 1-2).
We are not persuaded. The present case is significantly different from
that of Baird. In Baird, the claimed invention was directed to a fusible toner
including a binder resin comprising a bisphenyl A polyester and was limited
to only three possible choices for a contained carboxylic acid. The claimed
invention was rejected as obvious over a reference relating to developer
compositions comprising the polymeric esterification product of a
dicarboxylic acid and a diphenyl of a generic formula which contained a
broad range of variables and the applied reference was estimated to
encompass "more than 100 million different diphenyls, only one of which is
bisphenyl A." In re Baird, 16 F.3d at 382. In Baird, the court found there
was nothing in the disclosure of the prior art that led to selecting the
particularly claimed species at issue from such a genus that encompassed an
extremely large number of compounds in reaching a determination that the
prior art "appears to teach away". Id. at 382-83. Cf Ex parte Min-Hong
Fu, 2008 WL 867826 (BP AI 2008, precedential) (Board found a surfactant
corresponding to that claimed as part of an imaging member charge transport
layer was not taught away by the applied prior art - and rejected a per se
non-obviousness "approach" of claimed subject matter including recited
surfactant species where prior art disclosure was generic and not taught
away from such species).
Appellants' claims in the present case, however, are not so narrow.
Unlike in Baird, Appellants' claim 14 is not limited to a few compounds but
rather is directed to a compound of a generic formula that encompasses a
large number of compounds. Moreover, Brown does not teach away from
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selecting a compound of Formula 8 that includes substituents at the inner
positions of the two end rings (R1, Ri, Rs, and Rll positions of Brown).
Rather, Brown expressly teaches that the end ring positions Ri, R4, Rs, and
Rll, R2, R3, R9, and Rio can each independently comprise hydrogen or can
comprise a substituent selected from a list set forth by Brown (p. 14, 1. 10 -
p. 15, 1. 18). Accordingly, the Examiner has reasonably determined that it
would have been obvious for one of ordinary skill in the art to arrive at a
compound within the scope of representative claim 14 from Brown's
disclosure. See, e.g., Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) ("That the '813 patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious. This is especially true because the claimed composition is used for
the identical purpose."); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985)
(obviousness rejection of claims affirmed in light of prior art teaching that
"hydrated zeolites will work" in detergent formulations, even though "the
inventors selected the zeolites of the claims from among 'thousands' of
compounds")); see also, In re Susi, 440 F.2d 442, 445 (CCPA 1971)
(obviousness rejection affirmed where the disclosure of the prior art was
"huge, but it undeniably include[ d] at least some of the compounds recited in
appellant's generic claims and [was] of a class of chemicals to be used for
the same purpose as appellant's additives"). After all, it is well settled that
all of the disclosure in a reference must be considered, including the non-
preferred embodiments. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
at 807; In re Kaslow, 707 F.2d 1366, 1373, (Fed. Cir. 1983); In re
Fracalossi, 681 F.2d 792, 793-94 (CCPA 1982); In re Lamberti, 545 F.2d
747, 750 (CCPA 1976).
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In addition, Appellants argue that Brown is non-enabling as to
teaching a method for making a compound that would have substituents in
positions that satisfies the limitations of claim 14 (App. Br. 5---6; Spec. 2-3).
However, Brown enjoys a presumption that its disclosure is enabling. In re
Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) ("we now hold
that a prior art printed publication cited by an examiner is presumptively
enabling"); In re Sasse, 629 F.2d 675, 681(CCPA1980) (placing burden of
demonstrating non-enablement of a reference on applicant). 2
Here, Appellants' argument and Specification citation fall short of
producing a basis for establishing that Brown does not provide an enabling
disclosure for its pentacene compounds, inclusive of those claimed. In
particular, we observe that portions of Appellants' Specification as cited by
Appellants provides a discussion concerning how certain prior art synthesis
methods furnish "little success in constructing the pentacene ring network
precursors in high and reproducible yields" and states that "a more
successful alternative method is highly desirable" for the claimed
2 Brown is the International Publication of PCT Application No.
PCT/GB2004/004973 and U.S. Patent Application No. 10/580552 is the
U.S. National Stage entry of the latter International Application
(PCT/GB2004/004973), which U.S. National Stage Patent Application
issued as U.S. Patent No. 7842942. It is well settled that a published U.S.
patent enjoys a presumption of validity and operability. 35 U.S.C. § 282;
University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 920 (Fed.
Cir. 2004); In re Spencer, 261F.2d244, 246 (CCPA 1958). This
presumption applies to the enablement requirement of the first paragraph of
35 U.S.C. § 112 and can only be overcome by clear and convincing
evidence. Nat 'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166
F.3d 1190, 1195 (Fed. Cir. 1999); G.D. Searle & Co., Inc, 358 F.3d at
920. The burden of proving a prior art patent invalid for lacking enablement
rests on Appellants. Spencer, 261 F .2d at 246.
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compounds (Spec. 3, 11. 3-7). The mere fact that the described prior art
alternative method may have provided lower yield than Appellants' method
does not establish lack of enablement as to the relevant subject matter for
one of ordinary skill in the art; rather, this Specification disclosure buttresses
the presumption of an enabling disclosure for the applied reference.
Consequently, Appellants argument as to the non-enabling disclosure of
Brown lacks merit.
We have reconsidered the propriety of the Examiner's obviousness
rejection anew in light of Appellants' Specification test results; however, the
cited Specification Example 2 fails to tip the weight of the evidence bearing
on the obviousness of the claimed subject matter in Appellants' favor. After
all, it is well settled that Appellants bear the burden of production to
establish that the reported tests results are unexpected, that the comparisons
are with the closest prior art, and that the showing is reasonably
commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
The Specification evidence (Example 2) relied upon by Appellants
(Appeal Br. 6-8; Spec. pp. 36 and 37) falls considerably short in meeting
Appellants' burden at least because Example 2 is drawn to one particular
compound (Compound 9; Spec. p. 36) and is considerably narrower in scope
than the subject matter embraced by representative claims 14 and 21 through
23, which encompass a myriad of compounds. Moreover, Appellants argued
comparison of the linear mobility results obtained for the device made with
Compound 9 in Example 2 of the subject Specification with reported
mobility results for Compound 4 and Compounds 19 and 20 of Brown lacks
merit for additional reasons. While Appellants report that the device
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employed in Example 2 of the subject Specification was prepared as
described in Brown (WO 2005/055248 A2), Appellants' argument that the
devices (OFET's) were tested in a similar manner for their properties is not
substantiated with evidence (App. Br. 6). In this regard, and as noted by the
Examiner, Brown employs a different total solids content and a different
solvent in making the devices tested in Brown (Examples 14 and 26) than
Appellants employ in Example 2 (Ans. 9). Moreover, it appears that
Appellants employed a different dielectric material for the gate insulator
layer than the insulator material employed by Brown as a comparison of
Appellants' Example 2 with Brown's disclosure at page 51reveals. Nor is it
clear that Appellants and Brown employed the same methodology in
determining the mobility values reported for their separate respective
examples.
Appellants' argument respecting the difference in solvents employed
by Brown and Appellants for the examples compared by Appellants in the
Appeal Brief not being relevant is not supported by evidence.
In particular and consistent with the Examiner's determination as to
the lack of significance of the reported test results, Appellants have not
proffered any persuasive scientific explanation articulating why the reported
results for the single example said to be made would have been logically
expected to accrue over the extensive scope of the representative claim 14
subject matter (and/or the scope of the subject matter of separately contested
dependent claims 21, 22, and/or 23) so as to discharge Appellants' burden of
establishing unexpected results that are reasonably commensurate in scope
with the claimed subject matter. In re Greenfield, 571F.2d1185, 1189
(CCPA 1978) (quoting Jn re Tiffin, 448 F.2d 791, 792 (CCPA 1971))
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("Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for 'it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support."'); see also In re Dill, 604
F.2d 1356, 1361(CCPA1979). Moreover, Appellants have not established
that the results for comparison examples presented are comparative
examples that have been shown to be truly representative of the closest prior
art, particularly given the breadth of the claimed subject matter.
Appellants fail to demonstrate unexpected results for compounds that
are reasonably commensurate in scope with representative claim 14 and/or
separately argued claims 21 through 23 for reasons advanced by the
Examiner, and as further discussed above.
Based on the totality of the record, including due consideration of
Appellants' evidence and arguments, we determine that the preponderance
of evidence weighs most heavily in favor of an obviousness determination
for the claimed subject matter. Thus, upon consideration of the arguments
and evidence of record, we determine that the Examiner has reasonably
established that representative claim 1, as well as separately argued claims
21, 22, and 23, would have been obvious to one of ordinary skill in the art
over the applied prior art.
Accordingly, we affirm the Examiner's rejection of the appealed
claims under 35 U.S.C. § 103(a).
CONCLUSION/ORDER
The Examiner's decision to reject the appealed claims is affirmed.
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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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