Ex Parte Matsusue et al

Board of Patent Appeals and Interferences

Sep 21, 2010

10479617 (B.P.A.I. Sep. 21, 2010)

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.
10/479,617 06/14/2004 Noriyuki Matsusue 50024-022 5382
7590 09/22/2010
McDermott Will & Emery
600 13th Street, N W
Washington, DC 20005-3096
EXAMINER
YAMNITZKY, MARIE ROSE
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
09/22/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte NORIYUKI MATSUSUE
and YUJI HAMADA
________________

Appeal 2009-008072
Application 10/479,617
Technology Center 1700
________________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008072
Application 10/479,617

2
A. Introduction2
Noriyuki Matsusue and Yuji Hamada (“Sanyo”) timely appeal under
35 U.S.C. § 134(a) from the final rejection3 of claims 1, 15-19, 24,
and 37-41. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to electroluminescent (“EL”)
displays having a class of tris-phenanthridine substituted platinum-group
metal compounds as the light-emitting material. The compounds are said to
provide devices having red-orange luminescence with high luminance and
high luminous efficiency. (Spec. 4, ll. 18-20.)
Representative Claim 1 reads:
1. An organic electroluminescent device, comprising:
a hole injection electrode;
an electron injection electrode; and
a light emitting layer provided between said hole
injection electrode and said electron injection electrode,
wherein said light emitting layer includes a
compound composed of a platinum group element
and a phenanthridine derivative, and
wherein said compound composed of said
platinum group element and said phenanthridine

2 Application 10/479,617, Electroluminescent Display Apparatus and
Method of Fabricating the Same, filed 14 June 2004 as the National Stage of
an International Application filed 31 May 2002, claiming the benefit of
Japanese applications filed 29 May 2002 and 4 June 2001. The specification
is referred to as the “617 Specification,” and is cited as “Spec.” The real
party in interest is listed as Sanyo Electric Co. LTD (Appeal Brief,
filed 24 September 2004 (“Br.”), 2.)
3 Office action mailed 24 April 2008.
Appeal 2009-008072
Application 10/479,617

3
derivative has a molecular structure represented by
a formula (3) shown below:

where R1 [sic: R1] is a hydrogen atom, a halogen
atom or a substituent, A is a substituent, and M is a
platinum group element.
(Claims App., Br. 10; indentation added.)
The Examiner has maintained the following grounds of rejection:4
A. Claims 1, 15-18, 24, and 37-41 stand rejected under
35 U.S.C. § 103(a) in view of Igarashi.5
B. Claim 19 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Igarashi and Thompson.6

4 Examiner’s Answer mailed 3 February 2009 (“Ans.”).
5 Tatsuya Igarashi et al., Light-Emitting Material Comprising
Orthometalated Iridium Complex, Light-Emitting Device, High Efficiency
Red Light-Emitting Device, and Novel Iridium Complex, U.S. Patent
Application Publication US 2001/0019782 A1 (6 September 2001), based on
an application filed 27 December 2000.
6 Mark E. Thompson et al., Organometallic Complexes as Phosphorescent
Emitters in Organic LEDs, U.S. Patent Application Publication
US 2002/0034656 A1 (21 March 2002, based on an application
filed 18 June 2001.
Appeal 2009-008072
Application 10/479,617

4
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Sanyo argues that the Examiner erred in rejecting the claims for lack
of motivation to modify Igarashi compound (2-19), shown below,
(2-19)
{The figure shows the chemical structure of compound (2-19)}
by replacing the acetylacetone [2,4-pentanedione]-derived group [shown on
the right side of the structure] with a phenyl-phenanthridine group [shown
on the left side of the structure]. (Br. 5-6.) More particularly, Sanyo denies
that the Examiner has come forward with adequate factual support for the
proposition that “Igarashi teaches that compounds having three identical
ligands may be used for the same purpose as similar compounds in which
one of the three identical ligands is replaced by a dissimilar ligand.” (Id.
at 6, last para.; Reply 2,7 last para.) On the contrary, according to Sanyo,
“Igarashi merely discloses thousands of compounds,” none of which have
the structure recited in the claim. (Id. at 6.) Sanyo urges further that the
Examiner improperly ignored or discounted differences in emission
wavelengths between compounds have two and three similar ligands. (Id.

7 Reply Brief (“Reply”), filed 3 April 2009.
Appeal 2009-008072
Application 10/479,617

5
at 7-8; and Reply at 3-4.) In particular, Sanyo argues that the four specific
compounds covered by independent claims 37-41 have peak emission
wavelengths between 648 nm and 661 nm, “which are even more different
than the differences for the examples shown in Igarashi.” (Br. 8, 2d full
para., citing Spec. Table 1.)
Sanyo has not presented substantively distinct arguments for any
dependent claims, including claim 19, which is separately rejected.
Accordingly, all the dependent claims stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).
As the Appellant, Sanyo bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders,
129 S.Ct. 1696, 1706 (2009) (citations omitted) (“Lower court cases make
clear that courts have correlated review of ordinary administrative
proceedings to appellate review of civil cases in this respect. . . . [T]he party
seeking reversal normally must explain why the erroneous ruling caused
harm.”) See also, In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010)
(discussing the role of harmless error in appeals from decisions of the Board
of Patent Appeals and Interferences (“Board”)). Arguments not timely made
have been waived. 37 C.F.R. § 41.37(c)(1)(vii) (second sentence); see also
In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (an argument not first
raised in the brief to the Board is waived on appeal).
Igarashi teaches that objects of the disclosed invention include
providing light-emitting devices “having good light-emitting properties,” in
particular, red light-emitting devices. (Igarashi 1 [0010]-[0011].) To this
end, Igarashi discloses several general formulas and numerous compounds.
Appeal 2009-008072
Application 10/479,617

6
Igarashi also describes several light emitting structures, together with the
light-emitting compounds and the wavelength of emission. The Examiner
found (Ans. 3), and Sanyo does not contest, that the electrodes and light
emitting layers described by Igarashi correspond, but for the particular light-
emitting compounds, to the structures required by the claims.
The Examiner identified several species of organometallic complexes
and eight pairs as being especially relevant to this appeal. (Ans. 5, 1st para.)
The compound closest to the compounds recited in the claims, and three of
those pairs, along with emission maxima reported by Igarashi, are
reproduced on the following page. The tris-aryl substituted species are
shown on the left, while the corresponding bis-aryl, mono-acetylacetonate-
substituted species, including the bis-phenanthridine species identified by
the Examiner as the species closest to the claimed species, are shown on the
right.
Appeal 2009-008072
Application 10/479,617

7
{Several complexes and their emission wavelengths are shown below}
(2-19)
(2-10) (2-1) (599 nm)8
(1-3) (590 nm)9 (1-46) (568 nm)10
(1-65) (578 nm)11 (1-66) (625 nm)12
{compound (2-19) and Compound pairs (2-1) (2-10); (1-3) (1-46); and
(1-65) (1-66) are shown, with maximum emission wavelength, if reported by
Igarashi.}

8 Igarashi 31 [0177] (Example 19): see also id. at 31 [0179] (603 nm).
9 Igarashi 28 [0156] (Example 3).
10 Igarashi 29 [0166] (Example 12).
11 Igarashi 29 [0167] (Example 13).
12 Igarashi 29 [0168] (Example 14).
Appeal 2009-008072
Application 10/479,617

8
Whether the prior art would have provided a person having ordinary
skill in the art motivation to modify a reference in a particular way is a
question of fact. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (“The
presence or absence of a motivation to combine references in an obviousness
determination is a pure question of fact.”) In the present case, the Examiner
has shown several examples of tris-aryl substituted iridium complexes and
bis-aryl substituted iridium complexes (hereinafter, “tris-complexes” and
“bis-complexes”), including a bis-phenanthridine complex, in which a
nitrogen heterocycle is coordinated to the iridium via the ring-nitrogen and
via a substituent attached to heterocyclic ring adjacent to the ring nitrogen.
According to Iragashi, all of the complexes are useful as light-emitting
compounds. The evidence of record thus provides ample evidence that
Igarashi teaches tris- and bis-complexes that are useful as light emitting
compounds. Sanyo’s criticism to the contrary is without merit.
Furthermore, Sanyo has not come forward with credible evidence that
persons having ordinary skill in the electroluminescent device art would
have expected the phenanthridine species (2-19) not to luminesce.
Similarly, Sanyo has not shown that the corresponding tris-compound would
have been expected not to luminesce. Indeed, Igarashi teaches that “[t]he
ligands constituting the orthometalated iridium complex are not specifically
limited so far as they can form an orthometalated complex.” (Igarashi 5
[0043].) Moreover, phenanthridine is listed as a nitrogen-containing
heterocycle useful for forming ligands in orthometalated iridium complexes
according to Igarashi’s invention. (Id.) The preponderance of the evidence
of record indicates the artisan would have expected both the bis and the tris
Appeal 2009-008072
Application 10/479,617

9
versions of compound (2-19) to emit light in the visible region of the
spectrum.
Emission at wavelengths visible to human beings is sufficiently
“similar” for use in visual displays, signal lights, etc., that we find no merit
in Sanyo’s arguments that the Examiner erred in failing to give sufficient
weight to the alleged differences in emission wavelengths when considering
whether a prima facie case of obviousness had been established. To the
extent Sanyo may have been arguing that the emission wavelengths
constitute unexpected results rebutting any prima facie case of obviousness
established by the Examiner, we note that Sanyo has done no more than
point to Table 1 [Spec. 54] and argue that the wavelengths are different from
those disclosed by Igarashi. (Br. 8.) Such “argument” fails to establish that
the results were unexpected. We note that Sanyo has not raised any more
specific argument regarding the patentability of independent claims 37-41,
drawn to specific compounds. Moreover, Sanyo has not explained why the
evidence of unexpected results is commensurate in scope with the subject
matter covered by claim 1.
We conclude that Sanyo has failed to demonstrate harmful error in the
Examiner’s rejections.
Appeal 2009-008072
Application 10/479,617

10
C. Order
We AFFIRM the rejection of claims 1, 15-18, 24, and 37-41 under
35 U.S.C. § 103(a) in view of Igarashi.
We AFFIRM the rejection of claim 19 under 35 U.S.C. § 103(a) in
view of the combined teachings of Igarashi and Thompson.
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

cam

MCDERMOTT WILL & EMERY
600 13TH STREET, N.W.
WASHINGTON, DC 20005-3096