Ex Parte HUNG et al

Patent Trial and Appeal Board

Jul 31, 2017

13569397 (P.T.A.B. Jul. 31, 2017)

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.
13/569,397 08/08/2012 Gavin HUNG MERCK-3981 9138
23599 7590 08/02/2017
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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 GAVIN HUNG, ROGER CHANG,
KRIS TSAI, and GLAVIN OYANG
Appeal 2016-005218
Application 13/569,397
Technology Center 1700
Before CHRISTOPHER L. CRUMBLEY, JULIA HEANEY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—5, 7—18, and 20-23 of
Application 13/569,397 under 35 U.S.C. § 103(a) as obvious. Final Act.
2—13 (June 12, 2014). Appellants1 seek reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 MERCK PATENT GESELLSCHAFT MIT BESCHRANKTER
HAFTUNG is identified as the real party in interest. Appeal Br. 1.
Appeal 2016-005218
Application 13/569,397
BACKGROUND
The present application generally relates to liquid-crystalline media
and the use of such media in electro-optical liquid-crystal displays. Abst.
Claims 1 and 23 are representative of the pending claims and are
reproduced below:
1. Liquid-crystalline medium, comprising:
- a polymerisable component (A) comprising one or
more polymerisable compounds
and
- a liquid crystalline component (B) containing one or
more compounds of the general formula I and one or
more compounds of the general formula IA
wherein
R° denotes an alkyl or alkoxy radical having 1 to 15 C
atoms, where, in addition, one or more CH2 groups
in these radicals may each be replaced,
independently of one another, by -C=C-, -CF20-, -
CHCH-, -O' ? -00-, -0-, -CO-O, or-O-CO-
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Application 13/569,397
in such a way that O atoms are not linked directly to
one another, and where, in addition, one or more H
atoms may be replaced by halogen atoms,
X° denotes F, Cl, CN, SF5, SCN, NCS, a halogenated
alkyl radical, a halogenated alkenyl radical, a
halogenated alkoxy radical or a halogenated
alkenyloxy radical having up to 6 C atoms, and
L1'6 each, independently of one another, denote H or F.
23. The liquid-crystalline medium of claim 2, wherein P1 and
P2 each, independently of one another, denote, an
acrylate, methacrylate, fluoroacrylate, oxetane, vinyl,
vinyloxy or epoxide group,
Sp1 and Sp2 denote -(CH2)pi-, -(CH2)pi-0-, -(CH2)pi-CO-
O- or -(CH2)pi-0-C0-0-, wherein pi is an integer from 1
to 12, and where the linking to the adjacent ring in the
last-mentioned groups takes place via the O atom,
Raa denotes straight-chain or branched, optionally mono-
or polyfluorinated alkyl, alkoxy, alkenyl, alkynyl,
alkylcarbonyl, alkoxycarbonyl, alkylcarbonyloxy or
alkoxycarbonyloxy having 1 to 12 C atoms where the
alkenyl and alkynyl radicals have at least two C atoms
and the branched radicals have at least three C atoms, and
L is fluorine.
Claims Appendix 2—3, 31—32 (Sept. 10, 2015).
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Application 13/569,397
REJECTIONS
On appeal, the Examiner maintains the following rejections:2
1. Claims 1—4, 7—18, and 20—22 are rejected under 35 U.S.C.
§ 103(a) as obvious over Wittek et al. (WO 2011/076329 Al, pub. June 30,
2011) (hereinafter “Wittek”).3 Final Act. 3—8.
2. Claims 1, 4, 5, 7—16, 18, and 20—22 are rejected under 35
U.S.C. § 103(a) as obvious over Fujita (US 2011/0127465 Al, pub. June 2,
2011). Id. at 8-11.
3. Claim 23 is rejected under 35 U.S.C. § 103(a) as obvious over
Wittek in view of Goetz et al. (WO 2011/050893 Al, pub. May 5, 2011)
(hereinafter “Goetz”).4 Id. at 11—12.
4. Claims 2, 3, 17, and 23 are rejected under 35 U.S.C. § 103(a) as
obvious over Fujita in view of Goetz. Id. at 12—13.
DISCUSSION
Rejection 1. The Examiner rejected claims 1—4, 7—18, and 20-22 as
obvious over Wittek. Id. at 3—8.
Wittek’s disclosure indicates that the inventive medium “comprises
one or more compounds of the formula I” followed by a description of such
formula. Wittek 126. Wittek then teaches that the medium “additionally
2 In the Final Rejection, the Examiner rejected claims 4 and 8 as indefinite.
Final Act. 2—3. This rejection was subsequently withdrawn in view of an
amendment to the claims. Answer 2.
3 The Examiner relies upon United States counterpart application US
2012/0273723 Al, pub. Nov. 1, 2012, as an English translation of Wittek.
4 The Examiner relies upon United States counterpart application US
2012/0224124 Al, pub. Sept. 6, 2012, as an English translation of Goetz.
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Application 13/569,397
comprises one or more neutral compounds of the formulae II and/or III.” Id.
| 58. Wittek’s disclosure continues in a similar manner through formula
XXVII with certain formulae grouped together (e.g. “one or more tetracyclic
compounds selected from the formulae XIX to XXVII”). Id. 59—129.
Wittek’s specification further lists certain compounds of the various
formulae in Tables A and B and states that “[preferred mixture components
are shown in Tables A and B.” Id. 1179.
Wittek additionally includes examples of specific liquid-crystalline
media. One such example is Example Ml. Id. 1197. Example Ml
describes a medium that includes compounds APUQU-2-F and DPGU-4-F.
Id. The Examiner finds that compound DPGU-4-F falls within formula I of
claim 1. Answer 20. The Examiner further finds that compound APUQ-2-F
is listed in Wittek’s specification as a compound of formula XI. Id. (citing
Wittek 1103). Wittek teaches that the inventive medium comprises “one or
more compounds selected from the following formulae” followed by
formulae X and XI. Id. 1101. It then lists several compounds including
APUQU-n-F and Xe. Compound Xe corresponds to formula IA of claim 1.
In view of the teaching to include one or more of the compounds of
formulae X and XI, the Examiner concludes that the compounds are
equivalent. Answer 20—24. The Examiner further relies on the teaching of
Wittek that, in order to set the desired tilt angle, polymerizable compounds
can be added to the medium. Id. at 20 (citing Wittek 1177, Table E).
Appellants do not dispute that Wittek teaches compounds of formulae
I and IA (of the claims) as well as polymerizable compounds. Appeal Br. 3;
Reply 9. Rather, Appellants argue that the rejection is erroneous because
Wittek teaches a large number of compounds and provides no teaching that
“the particular compounds of the claims should be selected and combined.”
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Application 13/569,397
Appeal Br. 4. Appellants further argue that the Examiner improperly relies
upon Example Ml of Wittek. Id. at 5—6. Appellants assert that “[o]ne
skilled in the art would clearly not read example Ml as inviting additional
components and would have no reason to select the [sic] specifically the Xe
compound from the hundreds of thousands of other possible compounds to
choose from in Wittek.” Id. at 6.
Wittek’s inclusion of a number of compounds as possible components
of the liquid-crystalline medium does not make the selection of any
particular compound less obvious. “That the [prior art reference] 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 taught by the prior art.” Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); see also In
re Susi, 440 F.2d 442, 445 (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 it is of a
class of chemicals to be used for the same purpose as appellant’s additives”).
Nor have Appellants shown error in the Examiner’s finding that a person of
ordinary skill in the art would know that one may substitute compound Xe
for compound APUQU-2-F. Wittek’s teaching to use “one or more
compounds” of formulae X and XI, treated collectively, suggests an
equivalent function. Accordingly, one of skill in the art would know that
one could substitute one such compound for another in a liquid-crystalline
composition.
In view of the foregoing, Appellants have not shown error in the
Examiner’s finding of obviousness of claims 1—4, 7—18, and 20-22.
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Rejection 2. The Examiner rejected claims 1, 4, 5, 7—16, 18, and
20—22 as obvious over Fujita. Final Act. 8—11. The rejection of these
claims over Fujita is similar to Rejection 1 over Wittek. In the present
rejection, the Examiner looks to Fujita’s Example 4 which teaches to include
compound 3-HGB(F,F)XB(F,F)-F, which the Examiner finds is equivalent
to formula IA of claim 1, and several compounds of Fujita’s formula 6.
Answer 13.
Fujita depicts formula 6 as follows:
Fujita 125. Fujita teaches that ring C may independently include
3,5-difhioro-l,4-phenylene and/or l,3-dioxane-2,5-diyl. Id. Fujita further
teaches that Z1 may be a single bond. Id. Accordingly, embodiments of
formula 6 fall within the scope of formula I of the present claim 1. As a
specific example, the Examiner cites to compound 6-13 as a particular
compound of Fujita’s formula 6 falling within the scope of formula 1 of
claim 1. Answer 13; Fujita 1 56.
Additionally, Fujita teaches to incorporate at least one compound of
formula 6 in the FC medium composition. Fujita teaches an embodiment
(referred to as an “item”) comprising the “composition according to any one
of items 1 to 9, further including at least one compound selected from the
group of compounds represented by formula (6) as a sixth component.” Id.
125.
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The Examiner finds that a person of ordinary skill in the art would
regard the several compounds of formula 6 listed in Example 4 (variants of
compounds 6-4 and 6-5) as equivalent to compound 6-13. Asa
consequence, the Examiner finds, it would have been obvious to one of
ordinary skill in the art at the time the invention was made to either add an
additional compound of formula 6 (such as compound 6-13) to the
exemplary composition or to substitute compound 6-13 for one of the other
listed compounds of Fujita’s formula 6. Answer 13.
The Examiner additionally finds that Fujita teaches to add
polymerizable compounds. Answer 16 (citing Fujita 58, 63). In this
regard, Fujita discloses that “additives which may be mixed with the
composition will be explained. The additives include ... a polymerizable
compound and a polymerization initiator.” Fujita 1 58. Fujita additionally
teaches that a “polymerizable compound is mixed with the composition for
adjusting to a device having a polymer sustained alignment (PSA) mode.”
Id. 163.
Appellants argue that “the mere existence of these two compounds
amongst the many thousands of other compounds generically encompassed
by Fujita fails to provide any reason for one skilled in the art to select these
two compounds and combine them.” Appeal Br. 6; see also Reply 1—2.
Appellants also argue that “Fujita teaches the examples, including Example
4, as closed.” Reply 2.
As above, a prior art reference’s inclusion of a “multitude” of
compounds as possible components of a composition does not limit the
scope of the disclosure. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d at
807. Moreover, Appellants have not shown error in the Examiner’s stated
reason why a person of ordinary skill in the art would know that Example 4
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could be modified. Fujita teaches an embodiment “further including at least
one compound selected from the group of compounds represented by
formula (6) as a sixth component.” Fujita 125. Fujita further teaches that
“[t]he sixth component is desirable for the preparation of a composition
having a large dielectric anisotropy.” Id. |44. Appellants have not shown
error in the Examiner’s finding of equivalent function among the compounds
of formula 6.
Accordingly, Appellants have not shown error in the Examiner’s
finding of obviousness of claims 1, 4, 5, 7—16, 18, and 20-22.
Rejection 3. The Examiner rejected claim 23 as obvious over Wittek
in view of Goetz. Final Act. 11—12. The Examiner found that Goetz teaches
certain claimed polymerizable compounds. Id. at 12.
Appellants argue that a person of ordinary skill in the art would not
combine the teachings of Wittek and Goetz because Goetz is directed to the
use of polymerizable compounds in liquid crystalline mixtures having a
negative dielectric anisotropy while Wittek is directed to liquid crystalline
mixtures having a positive dielectric anisotropy. Appeal Br. 8. Appellants
assert that one of ordinary skill in the art “would understand that the mixture
concepts of negative LC mixtures and positive LC mixtures are different and
teaching[s] are not transferable between the two.” Id.
The Examiner, however, points out that Goetz teaches an embodiment
where “the LC medium comprises an LC host mixture based on compounds
having positive dielectric anisotropy.” Answer 25 (citing Goetz 1200)
(emphasis added). The Examiner finds that Wittek teaches electro-optical
displays such as TN, IPS, and FFS and that Goetz teaches that polymerizable
compounds can be added to both positive and negative liquid crystal
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compositions for use in TN, IPS, and FFS displays. Id. at 25—26 (citing
Goetz 1200 and Wittek 1162).
In view of the foregoing, Appellants have failed to show error in the
Examiner’s reason to combine the teachings of Wittek and Goetz.
Rejection 4. The Examiner rejected 2, 3, 17, and 23 as obvious over
Fujita in view of Goetz. Final Act. 12—13. Appellants argue that the
Examiner has failed to state a basis why one skilled in the art would
combine the teachings of these two references Appeal Br. 9.
In drafting Rejection 4, the Examiner indicated that the rejection is
predicated upon Fujita and Goetz. Final Act. 12. In stating the reason to
combine the teachings of Fujita and Goetz, however, the Examiner stated
that “it would have been obvious to one of ordinary skill in the art at the
time the invention was made to use the polymerizable compound RM-29 of
Goetz et al. as the polymerizable compound of Wittek since Goetz teaches
polymerizable compound RM-1 and RM-29 are equivalent.” Id. at 13
(emphasis added). That is, the Examiner referred to Wittek rather than
Fujita. On this basis, Appellants argue that “the Examiner provides no
reason why one skilled in the art would combine the two.” Appeal Br. 9.
Appellants, however, acknowledge that “[t]he Examiner appears to
have made a copy and paste error or confused which references were
included in the rejection.” This understanding is confirmed by the
Examiner. Answer 18 (“The Examiner apologizes for the copy and paste
error recited in the Final Office Action. It should read Fujita and not
Wittek.”). Appellants did not seek to have the foregoing designated as a
new ground of rejection. Accordingly, any such argument is waived. 37
CFR§ 41.40(a).
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In view of the foregoing, and the record as a whole, we find that
Appellants have not shown that the Examiner failed to state a reason to
combine the teachings of Fujita and Goetz.
Appellants additionally argue that a person of ordinary skill in the art
would not combine the teachings of Fujita and Goetz for the same reason as
posited with regard to Rejection 3 — that Goetz teaches adding
polymerizable compounds only to compositions with negative dielectric
anisotropy. Appeal Br. 9. For the reasons stated in regard to Rejection 3 we
determine that Goetz also teaches an embodiment where “the FC medium
comprises an FC host mixture based on compounds having positive
dielectric anisotropy.” Goetz 1200; see also Wittek 1162.
CONCFUSION
The rejection of claims 1—4, 7—18, and 20-22 as obvious over Wittek
is affirmed. The rejection of claims 1, 4, 5, 7—16, 18, and 20—22 as obvious
over Fujita is affirmed. The rejection of claim 23 as obvious over Wittek in
view of Goetz is affirmed. The rejection of claims 2, 3, 17, and 23 over
Fujita in view of Goetz is affirmed.
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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