Ex Parte MANABE et al

Patent Trial and Appeal Board

Oct 30, 2018

14602291 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/602,291 01/22/2015
31561
JCIPRNET
7590
P.O. Box 600 Taipei Guting
Taipei City, 10099
TAIWAN
11/01/2018
FIRST NAMED INVENTOR
NAOKO MANABE
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.
55071-US-1002 9303
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
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 NAOKO MANABE,
MASA YUKI SAITO, and
YOSHIMASA FURUSATO
Appeal2018-001754
Application 14/602,291 1
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellants filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-20.
We have jurisdiction under 35 U.S.C. § 6(b). 2
We AFFIRM.
1 Appellants identify the real parties in interest as N aoko Manabe, the first
named inventor, and JNC Corporation. Appeal Brief (Appeal Br.) 1, filed
May 17, 2017.
2 Our Decision additionally refers to the Specification (Spec.) filed
November 25, 2015, the Examiner's Answer (Ans.) dated October 6, 2017,
and the Reply Brief (Reply Br.) dated November 30, 2017.
Appeal2018-001754
Application 14/602,291
The subject matter on appeal relates to liquid crystal compositions
(see, e.g., claim 1 ). The Inventors disclose liquid crystal compositions
having at least one of the following: a high maximum temperature nematic
phase, a low minimum temperature for the nematic phase, a small viscosity,
a suitable optical anisotropy, a large negative dielectric anisotropy, a high
specific resistance, a high stability to ultraviolet light, and a high stability to
heat. Spec. ,r 10. The Inventors state a further aim is for the liquid crystal
compositions to have at least two of these characteristics. Id. To achieve
these aims, the Inventors disclose a liquid crystal composition having a
negative dielectric anisotropy containing at least one compound selected
from a group represented by a first formula as a first component, at least one
compound selected from a group consisting of compounds represented by a
second formula as a second component, and at least one compound selected
from a group consisting of compounds representing by a third formula as a
third component. Id. ,r 11. These formulas are set forth in independent
claim 1, which is representative of the issues on appeal and is reproduced
below from the Claims Appendix of the Appeal Brief.
1. A liquid crystal composition that has a negative dielectric
anisotropy and contains at least one compound selected from
the group consisting of compounds represented by formula ( 1)
as a first component, at least one compound selected from the
group consisting of compounds represented by formula (2) as a
second component, and at least one compound selected from
the group consisting of compounds represented by formula (3)
as a third component, and a ratio of the first component is in the
range of 3% by weight to 30% by weight based on the weight
of the liquid crystal composition:
2
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Application 14/602,291
..,-------, / .,- ----, \ F, _F
1 / 'l/ \, ' / R-: ---<,. ....~---{---\ . .>--f---\ }=======i....
\ :· \ \, / i .... / \ . ' ~.-.-.-.-.-.-/ , :.-.-.-.-.-.. -.. ., .a C)----.-.--1-:;~J/··--.----R"{
x; x2 x3 X4
,' ,,--,, > \d \ ( ',--,,
c-l/' \ .,\/ \ // \/./ .... ~ f' R"'----1--< A ',----- 7 ---1---,'. ,\-------,, A--,!-s-/ f::.i \+--·H-'
~\ / 4,.....t\\ ~~l \\ il\,\ /,
\ \.-.·-·-·-·-·-·./ / b "-":..-.--·-·--.-:Y ·~----·-·-·.li ' '\_. __ . ____ / ./ C
("l)
(2)
(3)
wherein, in formula (1) to formula (3), R1, R2, R3, R4, R5 and R6
are independently alkyl having 1 to 12 carbons, alkoxy having 1
to 12 carbons, alkenyl having 2 to 12 carbons or alkenyloxy
having 2 to 12 carbons; ring A and ring Bare independently
1,4-cyclohexylene, 1,4-phenylene or tetrahydropyran-2,5-diyl;
X 1 and X2 are independently hydrogen, fluorine or chlorine; X 3
and X4 are independently fluorine or chlorine; Z 1 is a single
bond -CH2CH2- -CH20- -OCH2- -COO- or -OCO-· a and c
' ' ' ' ' are independently O or 1; bis 0, 1 or 2; and a sum ofb and c is
0, 1 or 2.
REJECTIONS ON APPEAL
I. Claims 1-10, 16, 17, and 19 under 35 U.S.C. § 103 as
being unpatentable over Matsumoto3 in view of
Masukawa; 4
II. Claims 12-15 as being unpatentable under 35 U.S.C.
§ 103 over Matsumoto in view of Masukawa and further
in view of Bematz; 5
III. Claims 1-20 under 35 U.S.C. § 103 as being
3 Matsumoto et al., US 2006/0163536 Al, published July 27, 2006
("Matsumoto").
4 Masukawa, US 2012/0145959 Al, published June 14, 2012 ("Masukawa").
5 Bematz et al., US 2009/0103011 Al, published Apr. 23, 2009 ("Bematz").
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Application 14/602,291
unpatentable over Klasen-Memmer6 in view of
Masukawa;
IV. Claims 1-17 and 19 under 35 U.S.C. § 103 as being
unpatentable over Takeuchi 7 in view of Masukawa; and
V. Claims 18 and 20 under 35 U.S.C. § 103 as being
unpatentable over Takeuchi in view of Masukawa and
further in view of Bematz.
B. DISCUSSION
Rejection I
Claims 1-10, 16, 17, and 19 under 35 U.S.C. § 103 are rejected as
being unpatentable over Matsumoto in view of Masukawa.
Citing a compound included in Matsumoto's example 20, the
Examiner finds Matsumoto discloses a liquid composition having a negative
dielectric anisotropy and including a compound present in an amount of 11
wt% that is equivalent to formula ( 1) of claim 1. Ans. 2-3. The Examiner
finds the composition does not include compounds equivalent to formulas
(2) or (3) of claim 1 but finds Matsumoto discloses another compound
equivalent to formula (3) of claim 1. Id. at 3--4.
6 Klasen-Memmer et al., WO 2012/130380 Al, published Oct. 4, 2012. The
Examiner indicates US 2014/0028964 is an English language equivalent to
WO 2012/0130380. Ans. 8. Further citations to Klasen-Memmer will
reference US 2014/0028964 Al, published Jan. 30, 2014 ("Klasen-
Memmer").
7 Takeuchi et al., WO 2012/043386 Al, published Apr. 5, 2012. The
Examiner indicates US 2013/0265527 is an English language equivalent to
WO 2012/043386. Ans. 11. Further citations to Takeuchi will reference US
2013/0265527 Al, published Oct. 10, 2013 ("Takeuchi").
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The Examiner finds Masukawa discloses a liquid crystal composition
including a compound (formula (7-7)) that is also equivalent to formula (3)
of claim 1 and that Masukawa discloses the compound affects properties of a
liquid crystal composition, such as its threshold voltage or refractive index
anisotropy. Id. at 4. The Examiner concludes it would have been obvious to
combine the two embodiments of Matsumoto or the embodiment of
Matsumoto with the composition of Masukawa in view of Masukawa's
teachings that the compounds equivalent to formula (3) of claim 1 adjust
liquid crystal composition properties. Id.
The Examiner further finds Masukawa discloses a liquid crystal
composition can include another compound (formula (6-5)) that is
equivalent to formula (2) of claim 1 and the compound affects the threshold
voltage, viscosity, or refractive index anisotropy of a liquid crystal
composition. Id. at 4--5. The Examiner concludes it would have been
obvious to further modify the composition of Matsumoto to include the
additional compound to adjust the threshold voltage, viscosity, or refractive
index anisotropy of the composition. Id. at 5.
Appellants contend Masukawa requires compounds (i.e., at least one
of formulas 1--427) in addition to those cited by the Examiner and thus
Masukawa requires ingredients differing from the formulae recited in claim
1. Appeal Br. 5. In view of this, Appellants argue Masukawa is
fundamentally different from the claimed invention and one of ordinary skill
in the art would have lacked a reason to refer to Masukawa. Id.
Matsumoto discloses a liquid crystal composition having a negative
dielectric anisotropy that is useful for liquid crystal display elements of a
vertical alignment mode, IPS mode, or the like. Matsumoto ,r,r 1, 9, 12.
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Matsumoto discloses the composition can include a compound meeting
Matsumoto's formula ( 1) and a compound meeting Matsumoto's formula
(2), such as formula 2-4, which encompasses the compound present in 11
wt% in Matsumoto's Example 20 that the Examiner cites as being equivalent
to formula (1) of claim 1. Id. ,r,r 49, 58, 181. Thus, Matsumoto's disclosure
supports the Examiner's findings regarding Matsumoto.
Masukawa discloses a liquid crystal composition having a negative
electric anisotropy that "should include" a compound represented by
Masukawa's formula (1) (i.e., component A) as well as at least one
compound selected from the formulas for component B, at least one
compound selected from the formulas for component C, and/ or at least one
compound selected from the formulas for component D, with component E
as an additional compound that may be added. Masukawa ,r,r 2, 121-122.
According to Masukawa, component D includes, among other formulas,
formulas (6) and (7); examples of formula (6) include formula (6-5) (i.e., the
formula cited by the Examiner as corresponding to formula (2) of claim 1 );
and examples of formula (7) include formula (7-7) (i.e., the formula cited by
the Examiner as corresponding to formula (3) of claim 1 ). Id. ,r 130.
Therefore, Masukawa's disclosure also supports the Examiner's findings.
In other words, Masukawa suggests that its compounds may be
combined and that more than one compound of a particular component can
be added to the first component ( e.g., at least one of the compounds for
component D can be added to component A). To the extent Masukawa's
component A is required in a composition, we agree with the Examiner that
the recitation of "contains" in claim 1 is open and permits the inclusion of
additional elements, such as additional liquid crystal components. Ans. 17.
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We further note that Masukawa discloses component A has a content of 1-
99 wt%, which suggests that component A may be present in a small
amount. Id. ,r 121. Moreover, Masukawa discloses that the composition has
excellent compatibility with other liquid crystal materials, has a low
viscosity, and is suitable for use in liquid crystal components that use
various modes, such as an IPS mode. Id. ,r 120. Thus, Masukawa suggests
its composition is suitable for the same use as Matsumoto's composition and
Masukawa's composition may be used with other compositions (e.g.,
Matsumoto's composition).
As a result, Masukawa's disclosure not only suggests combining
multiple compounds of component D (e.g., formula (7-7) and formula (6-5))
in a liquid crystal composition (e.g., Matsumoto's composition), it also
would have provided a reason for one of ordinary skill to do so in view of
Matsukawa's teachings that the compounds affect various properties of such
compositions.
Appellants also argue Masukawa does not disclose specific amounts
for formulas 6-5 and 7-7. Appeal Br. 5-6. This argument is unpersuasive
because claim 1 does not recite amounts for the second and third
components (i.e., the components of claim 1 the Examiner cites as being
equivalent to formula (6-5) and formula (7-7)). Nonetheless, we note that
Masukawa generally discloses that as the content of component Dis
increased, the threshold voltage of a liquid crystal composition decreases
and viscosity increases. Masukawa ,r 131. With regard to specific formulas
encompassed by component D, Masukawa teaches formula (6) compounds
adjust the composition's threshold voltage, its viscosity, or adjust the
refractive index anisotropy and formula (7) compounds increase the
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composition's clearing point, the temperature range of the composition's
nematic phase, decrease the composition's threshold voltage, or increase the
composition's refractive index anisotropy. 8 Id. ,r 132. Masukawa further
discloses that the content of component D is preferably 40 wt% or more. Id.
,r 133.
Appellants assert that "Masukawa teaches a laundry list of compounds
( over hundreds of compounds taking in all possible compounds that may be
represented by the mentioned formulas (6)-(8), (10)-(14) etc.) that may be
effective in adjusting threshold voltage, viscosity, or refractive index
anisotropy etc.," Masukawa does not disclose a finite number of possible
compounds, and there would have been no reason to select a particular
compound without relying upon impermissible hindsight. Appeal Br. 8-9;
Reply Br. 4--7. In view of this, Appellants argue the Examiner has made an
impermissible "obvious to try" rejection. Appeal Br. 9-10; Reply Br. 6.
Appellants' arguments are unpersuasive. In a determination of
obviousness, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co. v.
Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the [prior art]
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious."). As described above, Masukawa
discloses a liquid crystal composition may include a mixture of components
8 To the extent the Examiner erred by stating formula (7) adjusts viscosity
(Ans. 4), we deem this harmless error because the Examiner also finds
formula (7) is effective to adjust the threshold voltage or the refractive index
anisotropy of a composition (id.), as taught by Masukawa (Masukawa ,r
132). Therefore, the Examiner has articulated other reasons to combine the
applied references that have rational underpinnings in Masukawa' s
disclosure.
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(including more than one of a specific type of component), discloses
formulas encompassed by each component, and further discloses specific
examples for the formulas, such as formula (7-7) and formula (6-5).
Masukawa further describes effects the formulas have upon a liquid crystal
composition, which would have provided guidance for one of ordinary skill
in the art to select one formula versus another. Thus, not only does
Masukawa disclose formulas and examples of the formulas but also provides
a reason to combine them with Matsumoto by describing the effects of the
formulas upon a liquid crystal composition.
Appellants also argue that the claimed combination of the three
claimed formulas (1 }-(3) provide advantages, such as a reduced bulk
viscosity, and Masukawa does not teach using compounds of the three
formulas together but instead includes an additional compound ( e.g.,
Npd10B(2F,3F)-02) that contributes to a higher viscosity. Appeal Br. 7;
Reply Br. 3. These arguments are unpersuasive because the combination of
Matsumoto and Masukawa would have suggested the claimed composition
to one of ordinary skill in the art, as described above. "[T]he test for
combining references is not what the individual references themselves
suggest but rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art." In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971); see also, In re Gorman, 933 F.2d 982,986
(Fed. Cir. 1991) ( the test of obviousness is "whether the teachings of the
prior art, taken as a whole, would have made obvious the claimed
invention.").
Moreover, it appears that Masukawa suggests a liquid crystal
composition that would include components equivalent to formulas (1 }-(3)
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of claim 1. As will be discussed below with regard to the § 103 rejection
over Klasen-Memmer and Masukawa, the Examiner finds an exemplary
formula (i.e., formula (12-4)) encompassed by component E Masukawa is
equivalent to formula ( 1) of claim 1 and Masukawa provides a reason for
using component E by describing its effects upon a liquid crystal
composition. Ans. 9. As discussed above, the Examiner finds Masukawa
discloses formulas corresponding to formulas (3) and (2) (i.e., formulas (7-7)
and (6-5), respectively) of claim 1. Appellants do not dispute whether the
cited formulas of Masukawa are equivalent to formulas ( 1 }-(3) of claim 1.
Moreover, Masukawa discloses its components ( e.g., components D and E)
may be combined in a liquid crystal composition and that more than one of a
given component can be used. Masukawa ,r,r 121-122.
In addition, Appellants contend Masukawa's compositions exhibit
bulk viscosities significantly larger than those exhibited by the claimed
invention. Appeal Br. 6. Appellants cite a Declaration under 37 C.F.R.
§ 1.13 2 dated November 7, 2016 ("Declaration") to demonstrate the
compositions of Example 2 and Example 7 of Masukawa exhibit higher bulk
viscosities than examples of the claimed invention and thus the claimed
invention produces unexpected results. Appeal Br. 6-8; Reply Br. 3--4;
Declaration ,r,r 2--4.
A showing of unexpected results generally must be commensurate in
scope with a claimed range. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) ("[T]he record does not show that the improved performance would
result if the weight-percentages were varied within the claimed ranges.
Even assuming that the results were unexpected, Harris needed to show
results covering the scope of the claimed range."). Here, as generally
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indicated by the Examiner (Ans. 20), the results are not commensurate with
the scope of claim 1, which includes a mixture of three formulas each
encompassing various compounds. Further, the amounts of the compounds
for the three formulas vary, with an amount recited for only the first formula
(i.e., 3-30 wt%). The data in the Declaration is directed to two examples
(Declaration ,r 4 ("Comparative Example 1" and "Comparative Example 2 "))
and thus presents data for only two compositions from amongst the wide
array encompassed by claim 1. Therefore, the data in the Declaration is
insufficient to show that the unexpected results asserted by Appellants
would occur across the scope of the claimed invention.
The Declaration also does not compare the claimed invention to the
closest prior art. "[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991 ). The Declaration compares the inventive examples with
Masukawa's Composition 2 and Composition 7 (Declaration ,r 4). Each of
the latter compositions include Masukawa's formula (7-7) but does not
include formula (6-5). Masukawa ,r,r 253, 258. As noted above, the
Examiner cites both formula (7-7) and formula ( 6-5) of Masukawa in the
rejection, not solely formula (7-7).
Furthermore, it is not enough for the Appellants to show that the
asserted results for Appellants' invention and the closest prior art differ. The
difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973). The Declaration merely
states Masukawa yield inferior results as compared to the claimed invention
and states this is an achievement of unexpected results. Declaration ,r 6.
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This statement is conclusory in nature without corroborating evidence
persuasively showing that Masukawa's composition is patentably different
from the composition of claim 1. See In re Altenpohl, 500 F .2d 1151, 1158
( CCP A 197 4) (lack of factual support rendered an affidavit of little probative
value in overcoming obviousness rejection); In re Klosak, 455 F .2d 1077,
1080 (CCP A 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."). Indeed, the bulk viscosity for
Masukawa's Example 2 (36.8 mPa•s) is less than the bulk viscosity for
Appellants' Example 2 ( 41.3 mPa•s ). Declaration ,r 4. As a result, the
statements in the Declaration have little probative value, especially when
weighed together with the other evidence of record.
In view of the above, the Declaration is entitled to little weight.
Having weighed all of the evidence before us, including the Declaration and
the disclosures of the applied references, we are convinced that a
preponderance of the evidence supports the conclusion that the liquid crystal
composition of claim 1 would have been obvious to one of ordinary skill in
the art.
Appellants state claim 1 is representative for the issues on appeal and
do not present separate arguments for claims 2-10, 16, 17, and 19. Appeal
Br. 5, 10.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's § 103 rejection of claims 1-10, 16, 17,
and 19 over Matsumoto and Masukawa.
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Re} ection III
Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable
over Klasen-Memmer in view of Masukawa.
The Examiner finds Klasen-Memmer discloses a liquid crystal
composition, specifically Example Ml, that has a negative dielectric
anisotropy and includes compounds respectively corresponding to formulas
(2) and (3) of claim 1. Ans. 8. The Examiner finds Klasen-Memmer does
not disclose a compound equivalent to formula (1) of claim 1 or its amount.
Id.
The Examiner finds Masukawa discloses a compound (formula (12-
4)) equivalent to formula ( 1) of claim 1 and that the compound adjusts the
viscosity and refractive index of a liquid crystal composition. Id. at 9. The
Examiner concludes it would have been obvious to add Masukawa's
compound to the composition of Klasen-Memmer in view of the effects of
Masukawa's compound upon a liquid crystal composition and it would have
been obvious to adjust the amount of Masukawa's compound to obtain its
optimum value as a result-effective variable. Id. at 9-10.
Appellants assert Klasen-Memmer's composition exhibits a lower
voltage holding ratio (VHR) than examples of Appellants' composition,
citing a Table included in Appellants' Appeal Brief. Appeal Br. 11-12.
This argument is unpersuasive. First, claim 1 does not require a VHR value
for the claimed composition. Second, to the extent Appellants are asserting
unexpected results for VHR values, such results are presented in the form of
attorney argument, which does not suffice to establish unexpected results via
factual evidence. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
( attorney argument is not the kind of factual evidence that is required to
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rebut a prima facie case of obviousness); In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984).
Appellants argue that Masukawa does not disclose a specific usage for
formula (12-4) and Masukawa's examples do not include it so it would have
been impossible to evaluate the degree of adjustment for formula (12-4).
Appeal Br. 11; Reply Br. 7-8. These arguments are also unpersuasive.
"[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art." In re Boesch, 617
F.2d 272,276 (CCPA 1980). Here, Masukawa discloses its component E
encompasses formula (12), and thus formula (12-4), and as the content of
component E increases, compositional viscosity decreases and the threshold
voltage of a composition increases. Masukawa ,r,r 134, 136. Therefore,
Masukawa teaches the content of component E (e.g., formula (12-4)) is a
result-effective variable and it would have been obvious to modify the
amount of component E in a composition (e.g., Klasen-Memmer's
composition) to determine its workable or optimal amount to adjust the
viscosity and/or threshold voltage of the composition as matter of routine
experimentation and design within the level of the ordinary skill, thus
arriving at a composition within the scope of claim 1. Moreover, Masukawa
discloses the content of component E is preferably 30 wt% or more. Id. ,r
136.
Appellants further contend Masukawa discloses a laundry list of
compounds and there would have been no reason to select the compounds
cited by the Examiner from amongst that list without some reason for the
combination other than impermissible hindsight. Appeal Br. 13; Reply Br.
8-10. As discussed above with regard to the§ 103 rejection over
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Matsumoto and Masukawa, Masukawa discloses a liquid crystal
composition may include a mixture of components, discloses formulas
encompassed by each component, and further discloses specific examples
for the formulas, such as formula (12-4). Masukawa further describes
effects the formulas have upon a liquid crystal composition, which would
have provided guidance for one of ordinary skill in the art to select a
formula. Thus, not only does Masukawa disclose specific compounds but
also provides a reason to combine them with Klasen-Memmer by describing
their effects upon a liquid crystal composition.
Furthermore, as discussed above with regard to the § 103 rejection
over Matsumoto and Masukawa, Masukawa discloses formulas
corresponding to formulas (3) and (2) (i.e., formulas (7-7) and (6-5),
respectively) of claim 1 and provides a reason to use these compounds by
describing their effects upon a liquid crystal composition. Ans. 4--5.
Moreover, Masukawa discloses its components ( e.g., components D and E)
may be combined in a liquid crystal composition and that more than one of a
given component can be used. Masukawa ,r,r 121-122. Thus, it appears that
Masukawa alone suggests a liquid crystal composition that would include
components equivalent to formulas (1 }-(3) of claim 1 ( e.g., formulas (12-4),
(6-5), and (7-7) of Masukawa).
Appellants contend the composition of claim 1 provides unexpected
results in comparison to Klasen-Memmer and Masukawa, citing the
Declaration. Appeal Br. 11-13. The Declaration compares the maximum
temperature for the nematic phase of Klasen-Memmer's Example Ml to that
of an inventive example. Declaration ,r 5.
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We have considered the Declaration but find it of little weight for the
following reasons. First, as generally stated by the Examiner (Ans. 31 ),
these results are not commensurate in scope with claim 1. The asserted data
includes a single composition but claim 1 is directed to a composition
including three components represented by formulas encompassing various
compounds that can be present in various amounts. Thus, Appellants' data
is insufficient to demonstrate unexpected results across the scope of claim 1.
Second, similar to the comparisons for the § 103 rejection over Matsumoto
and Masukawa, the Declaration compares an inventive result with an
example of Klasen-Memmer, states Klasen-Memmer yields inferior
properties, and states the claimed invention achieves unexpected results in
comparison. Declaration ,r,r 5---6. Such statements are conclusory in nature
without corroborating evidence persuasively showing that Klasen-
Memmer' s composition is patentably different from the composition of
claim 1.
Based on the foregoing, the Appellants' evidence of unexpected
results is entitled to little weight. A preponderance of the evidence supports
the Examiner's obviousness determination for claim 1.
Appellants state claim 1 is representative for the issues on appeal and
do not present separate arguments for claims 2-20. Appeal Br. 5, 13.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's § 103 rejection of claims 1-20 over
Klasen-Memmer and Masukawa.
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Re} ection IV
Claims 1-17 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Takeuchi in view of Masukawa.
The Examiner finds Takeuchi discloses a liquid crystal composition,
specifically Example 5, having a negative dielectric anisotropy and
including a compound (3-Cy-l=l-Cy-3) in an amount of 10 wt% that is
equivalent to formula ( 1) of claim 1 and including compounds (3-Cy-1 O-
Ph5-02 and 4-Cy-Cy-1 O-Ph5-02) equivalent to formula (2) of claim 1.
Ans. 11-12. The Examiner finds Takeuchi does not disclose that the
composition includes a compound equivalent to formula (3) of claim 1. Id.
at 12.
The Examiner finds Masukawa discloses a liquid crystal composition
including a compound (i.e., formula (6-3)) equivalent to formula (3) of claim
1 and that the compound adjusts the threshold voltage, viscosity, or
refractive index anisotropy of a liquid crystal composition. Id. at 12-13.
The Examiner concludes it would have been obvious to add Masukawa's
compound to Takeuchi's composition to adjust the latter's threshold voltage,
viscosity, and refractive index anisotropy. Id. at 13.
Appellants argue Masukawa does not disclose a specific usage
amount for formula (6-3) and the working examples do not use formula (6-
3) so it would have been impossible to evaluate the degree of adjustment for
using formula (6-3). Appeal Br. 14; Reply Br. 10. This argument is
unpersuasive because the Examiner finds Masukawa's formula (6-3) is
equivalent to formula (3) of claim 1, which does not recite a content for that
component. Further, Masukawa discloses component D encompasses
formula (6), which includes formula (6-3), and that the content of
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component D and formula ( 6) are result-effective variables. Masukawa ,r,r
129-132. Therefore, it would have been obvious to one of ordinary skill in
the art to modify the amount of component D, or specifically formula (6-3),
in a composition (e.g., Takeuchi's composition) to determine its workable or
optimal amount to adjust the threshold voltage, viscosity, and/or the
refractive index anisotropy of the composition (i.e., the effects taught by
Masukawa for formula (6)) as a matter of routine experimentation and
design within the level of the ordinary skill. Moreover, Masukawa discloses
component Dis preferably 40 wt% or more in a composition. Id. ,r 133.
Appellants contend Masukawa fails to utilize compounds similar to
formulae (1 }-(3) of claim 1 simultaneously. Appeal Br. 14--15. This
argument is unpersuasive because the combination of Takeuchi and
Masukawa suggests the composition of claim 1. Moreover, as discussed
above, Masukawa suggests the composition of claim 1 by disclosing
compounds equivalent to each of formulas (1 }-(3), disclosing the
compounds may be used with one another, and teaching reasons for using
the compounds in light of their effects upon a light crystal composition.
Appellants also argue Masukawa discloses a laundry list of
compounds and there would have been no reason to select the compounds
cited by the Examiner from amongst that list without some reason for the
combination other than impermissible hindsight. Appeal Br. 16; Reply Br.
10-12. This argument is unpersuasive. Masukawa discloses a liquid crystal
composition may include a mixture of components, discloses formulas
encompassed by each component, and further discloses specific examples
for the formulas, such as formula (6-3). Masukawa further describes effects
the formulas have upon a liquid crystal composition, which would have
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Application 14/602,291
provided guidance for one of ordinary skill in the art to select a formula.
Thus, not only does Masukawa disclose specific compounds but also
provides a reason to combine them with Takeuchi by describing the effects
of the compounds upon a liquid crystal composition.
In addition, Appellants assert unexpected results, citing the bulk
viscosity results presented in the Declaration. Appeal Br. 15-16. The
Declaration compares the bulk viscosities of two inventive examples to
Examples 5 and 15 of Takeuchi. Declaration ,r 6.
We have considered the Declaration but find it of little weight for the
following reasons. First, as generally stated by the Examiner (Ans. 36),
these results are not commensurate in scope with claim 1. The asserted data
includes two inventive compositions but claim 1 is directed to a composition
including three components represented by formulas encompassing various
compounds that can be present in various amounts. Thus, Appellants' data
is insufficient to demonstrate unexpected results across the scope of claim 1.
Second, similar to the comparisons for the § 103 rejection over Matsumoto
and Masukawa, the Declaration compares an inventive result with an
example of Takeuchi, states Takeuchi' s examples yield inferior properties,
and states the claimed invention achieves unexpected results. Declaration ,r
6. Such statements are conclusory in nature without corroborating evidence
persuasively showing that Takeuchi's composition is patentably different
from the composition of claim 1.
Based on the foregoing, the Appellants' evidence of unexpected
results is entitled to little weight. A preponderance of the evidence supports
the Examiner's obviousness determination for claim 1.
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Appellants state claim 1 is representative for the issues on appeal and
do not present separate arguments for claims 2-17 and 19. Appeal Br. 5, 16.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103 rejection of claims 1-17 and 19
over Takeuchi and Masukawa.
Re} ections II and V
Claims 12-15 are rejected as being unpatentable under 35 U.S.C.
§ 103 over Matsumoto in view of Masukawa and further in view of Bematz.
Claims 18 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Takeuchi in view of Masukawa and further in view of
Bematz.
For the rejections of claims 12-15, 18, and 20, Appellants assert
Bematz does not remedy the deficiencies of Matsumoto and Masukawa or
the deficiencies of Takeuchi and Masukawa. Id. at 10, 17. For the reasons
set forth above, there are no deficiencies in the rejections of claim 1 over
Matsumoto and Masukawa or over Takeuchi and Masukawa that require
curing by Bematz.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 103 rejections of claims 12-15, 18, and 20.
C. DECISION
The decision of the Examiner 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).
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AFFIRMED
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