Semiconductor Energy Laboratory Co., Ltd.

Patent Trials and Appeals Board

Nov 2, 2020

15346190 - (D) (P.T.A.B. Nov. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/346,190 11/08/2016 Hiromi Nowatari 0553-0920.01 7612
24628 7590 11/02/2020
HUSCH BLACKWELL LLP
HUSCH BLACKWELL SANDERS LLP WELSH & KATZ
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
EXAMINER
YANG, JAY
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
11/02/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROMI NOWATARI, SATOSHI SEO,
HARUE OSAKA, and TAKAKO TAKASU
Appeal 2019-005223
Application 15/346,190
Technology Center 1700
Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–4, 6–12, and 14–17. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Semiconductor
Energy Laboratory Co., Ltd. Appeal Br. 4.
Appeal 2019-005223
Application 15/346,190

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CLAIMED SUBJECT MATTER
The claims are directed to a composite material that includes an
organic compound and an inorganic compound. Spec. ¶ 1.
Claims 2 and 10 are independent claims. Claim 2, reproduced below,
is illustrative of the claimed subject matter:
2. A composite material comprising:
a molybdenum oxide; and
a heterocyclic compound represented by a formula (G1):

wherein:
A represents oxygen or sulfur,
R1 to R7 separately represent one of hydrogen, an alkyl
group comprising 1 to 4 carbon atoms, and an aryl group
comprising 6 to 25 carbon atoms in a ring,
R8 to R12 separately represent hydrogen or a substituent
selected from a phenyl group, a naphthyl group, a phenanthryl
group, a triphenylenyl group, a fluorenyl group, a
dibenzothiophenyl group and dibenzofuranyl group, and
at least one of R8 to R12 does not represent hydrogen.

Appeal 2019-005223
Application 15/346,190

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kumaki US 2006/0027830 A1 Feb. 9, 2006
Nakano US 2007/0141387 A1 June 21, 2007

REJECTION
The Examiner maintains the following rejection on appeal:
Claims 2–4, 6–12, and 14–17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kumaki and Nakano. Final Act.
2–6.
OPINION
The Examiner finds that Kumaki discloses an organic
electroluminescent device that includes a substrate, an anode, a first hole-
generating layer, a light-emitting layer, an electron generating layer, a
second hole-generating layer, and a cathode. Ans. 4. The Examiner further
finds that Kumaki discloses that its hole-generating layers may include a
hole-transporting material, which may be formed from a variety of organic
compounds, and an electron-accepting material, which may be made from
molybdenum oxide. Id. However, the Examiner finds that Kumaki does not
disclose the claimed heterocyclic compound. Id.
The Examiner finds Nakano discloses an organic electroluminescent
device that includes a plurality of layers interposed between a pair of
electrodes. Id. The Examiner finds Nakano discloses the following
compound:
Appeal 2019-005223
Application 15/346,190

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Id. at 4–5. The Examiner concludes it would have been obvious to
incorporate Nakano’s compound in Kumaki’s device because Nakano
teaches its compounds result in a great efficiency of light diffusion, no
defect pixels, excellent heat resistance, and long lifetimes for an organic
electroluminescent device. Id. at 5.
Appellant contends that Kumaki “is directed [to] a specific compound
as a hole-transporting material” and
[t]here is no disclosure, motivation or suggestion in Kumaki to
use an organic material other than an aromatic amine compound
or a phtalocyanine-based material to arrive at the solution of
Kumaki and achieve a peak in the near IR region which results
from the generation of holes by interaction of an aromatic amine
compound and molybdenum.
Appeal Br. 10; Reply Br. 2–3. Appellant asserts “there would have been no
reason to select heterocyclic compounds from Nakano to use as a hole-
transporting material for forming the composite material of Kumaki”
because Nakano does not disclose the optical properties of its materials and
“one skilled in the art would have no expectation of success that the
heterocyclic compound of Nakano could be used as a compound for a hole-
transporting material for forming the composite material of Kumaki.”
Appeal Br. 11; Reply Br. 3. Appellant contends that “while some of the
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Application 15/346,190

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materials in Nagano may relate to the heterocyclic compound in the claims,
it appears that most of compounds shown by Nakano do not read on or
disclose the claimed heterocyclic compound and do not appear related to the
disclosure of the present application” and while the claimed heterocyclic
compound is a phenyl group bonded to the 4-position of a dibenzofuran
skeleton or a dibenzothiophene skeleton, Nakano’s general formula (3) has a
phenyl group bonded to the 6-position of a dibenzofuran skeleton or a
dibenzothiophene skeleton. Reply Br. 3–4.
Appellant also argues that Nakano only discloses an organic
compound but not a composite material and so there would not have been a
reasonable expectation of success that Nakano’s material and Kumaki’s
device would achieve the results argued by the Examiner. Appeal Br. 11–
12. Appellant asserts there would not have been a reason to select a
compound from Nakano to use as Kumaki’s hole-transporting material
instead of Kumaki’s compounds. Reply Br. 4. In view of the above,
Appellant further argues that the Examiner relied upon impermissible
hindsight in making the rejection. Appeal Br. 12.
Appellant’s arguments do not persuasively identify reversible error.
Kumaki discloses a light-emitting element that includes a light-emitting
layer, an electron-generating layer, first and second hole-generating layers,
an anode, a cathode, and an insulator. Kumaki ¶ 45. Kumaki discloses that
the light-emitting element may further include a hole-injecting layer between
the anode and first hole-generating layer. Id. ¶ 51. Kumaki also teaches that
the first and second hole-generating layers may include a hole-transporting
material and an electron-accepting material. Id. ¶ 97. Kumaki discloses
various organic compounds that can be used for the hole-transporting
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material and various materials for the electron-accepting material, including
molybdenum oxide. Id. Kumaki further states “[i]t is to be noted that the
materials mentioned above are just examples, and a practitioner can select
appropriately.” Id. Therefore, Kumaki’s disclosure supports the Examiner’s
findings, including the finding that Kumaki does not limit the material for its
hole-transporting material. Ans. 4, 6.
Nakano is also directed to an organic electroluminescent device.
Nakano ¶ 1. Nakano’s device can include an anode, a hole injection layer, a
light emitting layer, an electron injection layer, and a cathode. Id. ¶¶ 1, 88.
Although Nakano discloses several general formulae for an organic
compound to be used in its device, Nakano also discloses specific examples
of the material, including the specific compound D1 the Examiner cites in
the rejection. Id. ¶¶ 25–26, 30, 34, 37, 40, 43, 46, 49, 84; Ans. 4–5.
Appellant does not dispute that the claimed heterocyclic compound
encompasses Nakano’s compound D1. See generally Appeal Br. Further,
Nakano discloses the use of its organic compounds for use in the same type
of device as Kumaki’s (i.e., an electroluminescent device) and Nakano’s
device performs the same function as Kumaki’s (i.e., emits light). Nakano
also teaches an organic electroluminescent device can exhibit great
efficiency of light transmission, have no defect pixels, exhibit excellent heat
resistance, and have a long life by using the compounds taught by Nakano.
Id. ¶ 54. Therefore, Nakano’s disclosure provides a reason to use Nakano’s
compound in an organic electroluminescent device, such as Kumaki’s. This
disclosure of using Nakano’s compound in an organic electroluminescent
device, as well as the resultant benefits, also provides a reasonable
expectation that such a modification would have been successful.
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“Obviousness does not require absolute predictability of success . . . all that
is required is a reasonable expectation of success.” In re O’Farrell, 853
F.2d 894, 903–904 (Fed. Cir. 1988).
In addition, Appellant cites the advantages described in the
Specification, arguing “[t]he composite materials of the claimed invention
have almost no absorption peak in the visible light region and the infrared
region,” “light absorption due to charge transfer interaction between the
heterocyclic material and molybdenum oxide is unlikely to occur” in the
claimed invention, and “[t]his is a very advantageous result.” Appeal Br. 11.
As the Examiner finds, however, Appellant has not presented results that are
commensurate with the scope of the claims. Ans. 7. For instance, Appellant
has not asserted results that are commensurate in scope with the range of
heterocylic compounds encompassed by the formulas that independent
claims 2 and 10 recite. Further, to the extent Appellant intended its
arguments to assert unexpected results, Appellant has not explained how the
cited results and advantages are an unexpected result rather than a different
result.2 See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[I]t is not
enough to show that results are obtained which differ from those obtained in
the prior art: that difference must be shown to be an unexpected
difference.”); In re Aller, 220 F.2d 454, 457 (CCPA 1955) (unexpected

2 Appellant also compares Kumaki’s experimental results to those of a
reference (JP 2003-272860) discussed in the Specification. Appeal Br. 9–
10. Appellant does not appear to make an argument based upon this
comparison in regard to the claim limitations. To the extent Appellant
intended these comments to support an argument of unexpected results,
Appellant has not properly compared the claimed invention to the closest
prior art.
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results must demonstrate a difference in kind, not merely a difference in
degree).
Therefore, to the extent Appellant has argued unexpected results,
Appellant’s evidence of unexpected results is entitled to little weight. A
preponderance of the evidence supports the Examiner’s obviousness
determination.
Accordingly, we affirm the Examiner’s rejection of claims 2–4, 6–
12, and 14–17 as unpatentable over Kumaki and Nakano.
CONCLUSION
The rejection is affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
2–4, 6–12,
14–17
103 Kumaki, Nakano 2–4, 6–12,
14–17

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED