Ex parte NUMAZAWA et al.

Board of Patent Appeals and Interferences

Mar 10, 1998

07953783 (B.P.A.I. Mar. 10, 1998)

Application for patent filed September 30, 1992. On this1
record, said application is stated to be a division of Serial
Number 07/557,845, filed on July 25, 1990, and now U.S. Patent
Number 5,207,946, issued May 4, 1993.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte KOICHI NUMAZAWA, NORIKO YAMAKAWA,
YOSHIICHI SUZUKI and ICHIRO KAWAMURA
________________
Appeal No. 95-0110
Application 07/953,7831
________________
HEARD FEBRUARY 5, 1998
________________
Before METZ, GARRIS and WALTZ, Administrative Patent Judges.
METZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner's refusal to allow claims 11 and 12, all the claims
remaining in this application.
Appeal No. 95-0110
Application 07/953,783
2
The appealed subject is directed to certain
ferroelectric chiral smectic liquid crystal compounds. The
compounds are said to be useful in electro-optical display
devices.
Claims 11 and 12, each directed to liquid crystal
compounds, per se, are reproduced below for a more facile
understanding of appellants’ invention.
Appeal No. 95-0110
Application 07/953,783
3
OPINION
The sole reference of record which is being relied on
as evidence of lack of novelty or, alternatively, as evidence of
obviousness is:
Suzuki et al. (Suzuki) 4,973,738 November 27, 1990
Claims 11 and 12 stand rejected under 35 USC 102(e) as
being anticipated by Suzuki, or, alternatively, as being
unpatentable from Suzuki under 35 USC 103. We reverse.
Suzuki describes novel ferroelectric liquid crystal
compounds defined by formulae I and II (column 2, line 19 through
column 3, line 10). The compounds are said to be useful in
electro-optical image or display elements (column 1, lines 7
through 11). Useful methods for preparing the compounds are set
forth from column 4, line 11 through column 12, line 31.
The examiner's stated position under 35 USC 102(e) is
set forth on page 5 of the Answer wherein it is recited that:
Suzuki discloses in claim 1 an optically active
trifluoromethylated compound like the compounds of the
instant application. The core rings can be phenyl or
biphenyl. Although not specifically shown, they are
claimed in claim 1. (emphasis ours)
Manifestly, a reference which discloses compounds which are only
"like" the compounds claimed by appellants cannot describe, in
the sense of 35 USC 102, the invention claimed by appellants.
Moreover, as noted by appellants in their brief and as well-
Appeal No. 95-0110
Application 07/953,783
4
emphasized by appellants' legal representative at the oral
hearing, claim 1 of the Suzuki patent recites in the preamble
that the compound claimed is a "liquid crystal compound of a
naphthalene nucleus represented by the formula..." (emphasis
added). Thus, we interpret Suzuki's claim 1 as requiring at
least one of the substitutents "A" or "B" to be a naphthalene
nucleus. Additionally, the "R " moiety in formula I of claim 11
of Suzuki is an alkyloxycarbonyl (ROC=O) radical unlike
appellants' moiety in the same position which is a (R C=OO)1
radical. Accordingly, the rejection of the claims as anticipated
by Suzuki cannot be affirmed.
We have not overlooked the fact that the Suzuki
disclosure is broader in scope than Suzuki's claims.
Specifically, Suzuki's disclosure does not recite or require that
at least one of the substitutents "A" or "B" is a naphthalene
moiety. Nonetheless, even under the theory of anticipation
stated in In re Schaumann, 572 F.2d 312, 315-317, 197 USPQ 5, 9
and 10 (CCPA 1978) (a theory which we note the examiner has not
advanced) the rejection under 35 USC 102(e) is not sustainable.
The court in Schaumann held that anticipation may be
found in a reference which does not describe ipsimis verbis a
particular compound but does describe a pattern of preferences
and also describes a definite and limited number of compounds.
Appeal No. 95-0110
Application 07/953,783
5
Here Suzuki's disclosure of suitable R substituents does not1
define appellants’ R C=OO moiety. Because the Suzuki disclosure,1
like Suzuki's claims, does not describe appellants' R1
substituent, Suzuki does not anticipate in the sense of 35 USC
102, under any theory, the subject matter recited in appellants'
claims.
The examiner's statement of the alternative rejection
of the claims under 35 USC 103 is inadequate, both legally and
factually. Indeed, the totality of the rejection may be found at
page 5 of the Answer wherein it is stated that:
it would have been obvious to one of ordinary skill in
the art to make the claimed compounds based upon the
teachings of the reference, specifically claim 1.
However, as we stated above, Suzuki's claim 1 requires that at
least one of the substituents "A" or "B" is a naphthalene moiety.
Suffice it to say the examiner has failed to analyze appellants'
claims vis-à-vis the prior art in the manner required in Graham
v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966).
The examiner has also opined that Suzuki discloses
compounds with "R " moieties which moieties are the reverse ester1
analogues of appellants' claimed moieties R C=OO and, thus, "are1
expected to have a similar result on the compound." However, as
the proponent of the theory that Suzuki's "reverse ester"
moieties would have been expected to confer the same or similar
Appeal No. 95-0110
Application 07/953,783
6
properties on the compound, per se, as appellants' R C=OO1
moieties would confer on appellants' claimed compounds, per se,
it was incumbent upon the examiner to provide some evidence
supporting this theory. This the examiner has failed to do.
Finally, because we have determined that the examiner
has failed to establish that appellants' claimed compounds would
have been prima facie obvious from Suzuki's disclosure, it was
unnecessary for appellants to come forward with countervailing
evidence of non-obviousness. Having said that, however, we note
that we have considered the Kawamura declaration and find that it
at least establishes a certain degree of unpredictability with
respect to S * phase temperature width within the broad family(3)
of compounds arguably embraced by Suzuki's disclosure but bearing
appellants' R C=OO moiety. Accordingly, the examiner's1
pronouncement that appellants' claimed compounds would have been
expected to have properties similar to the compounds disclosed by
Suzuki on the apparent theory that compounds with similar
structures would be expected to have similar properties is not
only unfounded but is also contrary to the only evidence in this
record which addresses the issue.
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Appeal No. 95-0110
Application 07/953,783
For all the reasons stated above, the rejection of
claims 11 and 12 as being anticipated under 35 USC 102(e) or,
alternatively, as being obvious under 35 USC 103 over Suzuki is
reversed.
REVERSED

ANDREW H. METZ )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 95-0110
Application 07/953,783
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Sughrue, Mion, Zinn, Macpeak
& Seas
2100 Penn. Ave. N.W.
Washington, DC 20037
Appeal No. 95-0110
Application 07/953,783
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