13704487 (P.T.A.B. Dec. 26, 2018)

Ex Parte Fortte et al

Patent Trial and Appeal BoardDec 26, 2018

13704487 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/704,487 12/14/2012 123223 7590 12/28/2018 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Rocco Fortte 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. 074025-0312-US (287106) 4193 EXAMINER YOUNG, WILLIAM D ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 12/28/2018 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): DBRIPDocket@dbr.com IPDocketWM@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROCCO FORTTE, CHRISTOF PFLUMM, CONSTANZE BROCKE, and AMIR HOSSAIN PARHAM Appeal2018-000596 Application 13/704,487 Technology Center 1700 Before DONNA M. PRAISS, WESLEY B. DERRICK, and SHELDON M. McGEE, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 15, 16, 20, and 21. Appeal Br. 7; Final Act. 3. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 In this Decision, we refer to the Specification filed December 14, 2012 ("Spec."), the Final Office Action entered December 28, 2016 ("Final Act."), the Appeal Brief filed June 2, 2017 ("Appeal Br."), the Examiner's Answer entered August 4, 2017 ("Ans."), and the Reply Brief filed October 3, 2017 ("Reply Br."). 2 The real party in interest is Merck Patent GmbH. Appeal Br. 2. Appeal2018-000596 Application 13/704,487 The invention relates to compounds and their use in electronic devices as organic semiconductor materials. Spec. 1: 1-11. Claim 15 is illustrative: 15. A compound of the formula (Ia) wherein (~~. ,,-,"'' / ..,..-""Â·-Â· )r::Â· ~-:-"- / ~ l. j ( NÂ·{ >~:13Â· .. ~--~~. :_ ~~_.,.,x? ~ .. / â€¢ t'""\i ~ \ Â· .. ~j .'.. :(,.,.,.~ ... Â·Â·z,._,.-,L furrrmla (~a) X 1, X2 and X3 are on each occurrence a divalent group selected, identically or differently, from BR1, C(R1) 2, Si(R1) 2, C=NR1, C=C(R1)2, NR1, 0, S, S=O, S(=0)2, PR1 or P(=O)R1; Z is on each occurrence selected, identically or differently, from CR 1 and N; Ar1 and Ar2 are on each occurrence, identically or differently, an aryl group having 6 to 60 aromatic ring atoms or a heteroaryl group having 5 to 60 aromatic ring atoms, wherein said aryl or heteroaryl group is optionally substituted by one or more radicals R2; R 1 and R2 are on each occurrence, identically or differently, H, D, F, CN, Si(R3) 3, N(R3) 2 or a straight-chain alkyl or alkoxy group having 1 to 20 C atoms or a branched or cyclic alkyl or alkoxy group having 3 to 20 C atoms, wherein said straight-chain alkyl or alkoxy group or said branched or cyclic alkyl or alkoxy group is optionally substituted by one or more radicals R3, where one or more CH2 groups in said straight-chain alkyl or alkoxy group or the branched or cyclic alkyl or alkoxy group is optionally replaced by -C=C-, -R3C=CR3 Si(R3) 2 C=O C=NR3 -NR3- -0- -S- -COO- or ' ' ' ' ' ' ' -CONR- or an aryl or heteroaryl group having 5 to 20 aromatic ring atoms, which may is optionally substituted by one or more 2 Appeal2018-000596 Application 13/704,487 radicals R3, where two or more radicals Ri or R2 may be linked to one another and may form an aliphatic or aromatic ring system; R3 is on each occurrence, identically or differently, H, D, F, Cl, Br, I, B(OR4)2, CHO, C(O)R4, CR4=C(R4)2, CN, COOR4, CON(R4)2, Si(R4)3 , N(R4)2, N02, P(=O)(R4)2, OS02R4, OH, S(=O)R4, S(=0)2R4, a straight-chain alkyl, alkoxy or thioalkyl group having 1 to 40 C atoms or a branched or cyclic alkyl, alkoxy or thioalkyl group having 3 to 40 C atoms or an alkenyl or alkynyl group having 2 to 40 C atoms, wherein said straight- chain alkyl, alkoxy or thioalkyl group or said branched or cyclic alkyl, alkoxy or thioalkyl group is optionally substituted by one or more radicals R 4, where one or more CH2 groups in said straight-chain alkyl, alkoxy or thioalkyl group or said branched or cyclic alkyl, alkoxy or thioalkyl group is optionally replaced by -R4C=CR4-, -C=C-, Si(R4) 2, Ge(R4) 2, Sn(R4) 2, C=O, C=S C=Se C=NR4 -COO- -CONR4- NR4 P(=O)(R4) -0- - ' ' ' ' ' ' ' ' S-, SO or S02 and where one or more H atoms is optionally replaced by D, F, Cl, Br, I, CN or N02, or an aromatic or heteroaromatic ring system having 5 to 60 aromatic ring atoms, said aromatic or heteroaromatic ring system is optionally substituted by one or more radicals R 4, or an aryloxy or heteroaryloxy group having 5 to 60 aromatic ring atoms, which is optionally substituted by one or more radicals R 4 where two or more radicals R3 is optionally linked to one another and may form an aliphatic or aromatic ring system; R4 is, identically or differently on each occurrence, H, D, F or an aliphatic, aromatic and/ or heteroaromatic organic radical having 1 to 20 C atoms, in which, in addition, one or more H atoms in said organic radical is optionally replaced by Dor F; two or more identical or different substituents R4 here is optionally linked to one another and form an aliphatic or aromatic ring system; and with the proviso that all three groups xi, X2 and X3 do not simultaneously represent 0, that all three groups X1, X2 and X3 do not simultaneously represent S, and that, if one or more of the groups xi, X2 and X3 represent a group of the formula NR i, R i as a constituent of the group NR i is an aryl or 3 Appeal2018-000596 Application 13/704,487 heteroaryl group having 5 to 20 aromatic ring atoms, which may in each case be substituted by one or more radicals R3â€¢ Appeal Br. 12-14 (Claims Appendix). The Examiner maintains the rejection of claims 15, 16, 20, and 21 as anticipated by Warner under 35 U.S.C. Â§ 102(b). Ans. 3; Final Act. 3. OPINION We review the appealed rejection for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. See Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections"). After review of the arguments and evidence presented by both Appellants and the Examiner, we conclude that the Examiner erred in finding that Warner's structure 130(5/6) is a species of claimed formula Ia, including that the recited Ar1 and Ar2 is met by two phenyl groups linked together by alkyl substituents, as described on page 4 of the Answer. Appellants contend that the Examiner erred in rejecting claim 15 over Warner because formula Ia requires a partial planar structure between Ar2 and the two preceding rings connected to Ar2 which structure is not present in Warner's compound 130(5/6). Appeal Br. 8-10. According to Appellants, below is the side-by-side comparison between Warner's compound 130(5/6) and Appellants' formula Ia as claimed in claim 15: 4 Appeal2018-000596 Application 13/704,487 Warner 130(5/6) Fonnula Ia Warner 130(5/6) and Appellants' formula Ia above are shown as presented on page 9 of the Appeal Brief. Appellants assert that claim 15 has the structure depicted in Formula Ia when Ar1 and Ar2 are phenyl groups, X1 is CH2, Z is CH, and X2 and X3 are CH2. Id. at 9. Appellants additionally argue that Warner has a non-planar partial structure while Appellants' formula Ia, according to claim 15, has a planar partial structure as shown below. Id. at 10. Warner partial structure Formula Ia partial structure The Warner partial structure and Formula Ia partial structure above are said to be non-planar and planar, respectively. Id. The Examiner's position is that Warner's compound 130(5/6) is a species of claimed formula Ia because Ar1 and Ar2 are broadly defined in claim 15 to be aryl groups containing optional substituent groups, including alkyl substituents, thus, the claimed compound in which Ar1 and Ar2 are phenyl groups can be linked together by alkyl substituents forming the Warner compound 130(5/6). Ans. 4. The Examiner compares the structure 5 Appeal2018-000596 Application 13/704,487 of Warner compound 130(5/6) to that of Formula Ia by locating the single five membered ring in each structure, then [g]oing counterclockwise from the five-membered ring in compound 130(5/6), X1 is CH2 in the five-membered ring, Z and Z are both CH in the phenyl ring, X2 and X3 are both CH2 in the non-aromatic ring, and Ar2 and Ar1 are phenyl groups linked together by alky substituents which form a non-aromatic ring structure in compound 130(5/6). Ans. 4. The Examiner also responds that none of Appellants' claims require the structure to be planar or partially planar. Id. at 5. According to the Examiner, a skilled artisan "would expect that an aryl group containing 6 to 60 aromatic ring atoms and substituent groups would encompass numerous non-linear structures." Id. In the Reply Brief, Appellants number the structural parts of Warner and formula Ia as Appellants understand the Examiner's reading of the structures on one another starting with the five membered ring as number 1 as shown below. Reply Br. 2. Warner 130(5/6) Formula Ia Regarding the numbered rings in Warner 130(5/6) and formula Ia above, Appellants assert that Warner's ring numbered 4 needs to be bonded at the next location on ring 3 in order to read on the claimed structure. Id. at 3. 6 Appeal2018-000596 Application 13/704,487 Even if the Appellants have incorrectly considered the rings in Warner's structure in a clockwise direction, instead of a counterclockwise direction as stated on page 4 of the Answer, starting with the five-membered ring as number 1 (Reply Br. 2), we are persuaded of reversible error in the Examiner's rejection of claim 15. Considering Warner's structure in the Examiner's counterclockwise direction, rings numbered 2 and 4 by Appellants (Reply Br. 2) should correspond to the Ar1 and Ar2 groups in formula Ia. The Examiner, however, does not adequately explain how rings 2 and 4 in Warner's structure 130(5/6) (depicted above and numbered by Appellants) constitute Ar1 and Ar2, respectively, as set forth in the claim. 3 Accordingly, the Examiner erred in rejecting claim 15 as anticipated by Warner. Because claims 16, 20, and 21 depend directly or indirectly from claim 15 and are rejected based on the same reasoning as claim 15, we likewise reverse the rejections of claims 16, 20, and 21. DECISION We reverse the Examiner's rejection of claims 15, 16, 20, and 21. ORDER REVERSED 3 The alternative mapping explicitly argued by Appellants in the Reply Brief, proceeding clockwise from the five-membered ring in Warner 130(5/6), also fails to disclose a species of claimed formula Ia because the structure lacks the substituents X2 and X3 as specified on the ring numbered 3 by Appellants. Reply Br. 2. 7