Ex Parte Okabe et al

Patent Trial and Appeal Board

Jul 25, 2016

12935416 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/935,416 11/11/2010 Kazuki Okabe
22850 7590 07/27/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
3678 l 4USOPCT 4140
EXAMINER
CLARK, GREGORY D
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUKI OKABE, ATSUSHI TAKAHASHI, TOMOHIRO ABE,
Y ASUYUKI TSURUTANI, and HIDEKI SATO
Appeal2014-005721
Application 12/935,416
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-9, 11-21, and 25-2 7. A transcript of the hearing
held on July 6, 2016, has been entered into the electronic record. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 We cite to the Specification ("Spec.") filed Nov. 11, 2010; Non-Final
Office Action ("Non-Final Act.") mailed Jun. 6, 2013; Examiner's Answer
("Ans."); and Appellants' Appeal Brief ("App. Br.") and Reply Brief
("Reply Br.").
2 Appellants identify Mitsubishi Chemical Corporation as the real party in
interest. App. Br. 1.
Appeal2014-005721
Application 12/935,416
BACKGROUND
The subject matter involved in this appeal relates to an organic
electroluminescent element formed as an organic layer disposed between an
anode and a cathode. Spec. 1; claim 1. The described organic layer includes
a mixed layer in which a light-emitting low molecular weight compound, a
charge-transporting low molecular weight compound, or both are contained
in a charge-transporting insolubilized polymer. Spec. 2, 6. Independent
claims 1 and 7 illustrate the subject matter on appeal and are reproduced
from the Claims Appendix of the Appeal Brief as follows: 3
Claim 1: An organic electroluminescent element,
compnsmg:
an anode;
a cathode; and
an organic layer disposed between the anode and the
cathode;
wherein:
the organic layer comprises a first layer and a second layer
adjacent to the first layer;
the first layer comprises in a single, mixed layer: (i) at
least one of a light-emitting low molecular weight compound
and a charge-transporting low molecular weight compound,
and (ii) an insolubilized polymer;
the second layer comprises in a single, mixed layer: (i) a
light-emitting low molecular weight compound, and (ii) a
charge-transporting low molecular weight compound;
the insolubilized polymer is obtained by insolubilizing an
insolubilizing polymer;
3 Sole additional independent claim 8 recites essentially the same elements
mentioned in claim 1 and further recites a property relating to solubility of
the first layer in water, ethyl benzoate and an unspecified hydrocarbon
solvent.
2
Appeal2014-005721
Application 12/935,416
the insolubilizing polymer comprises a charge
transporting moiety; and
the second layer is free of insolubilized polymers.
Claim 7: A process for producing an organic
electroluminescent element comprising an anode, a cathode and
an organic layer disposed between the anode and the cathode,
the process comprising:
forming an insolubilized film by applying an active
energy to a film comprising an insolubilizing polymer; and
applying a composition comprising: (i) at least one of a
light-emitting low molecular compound and a charge-
transporting low molecular weight compound, and (ii) a
solvent, on to the insolubilized film to form a film on the
insolubilized film to obtain the organic layer;
wherein the insolubilizing polymer comprises a charge
transporting moiety.
REJECTION
The Examiner maintained the following grounds of rejection: 4
I. Claims 1--4, 7-9, 11, and 25-27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Li5 and Suzuki.6
II. Claims 5---6 and 12-21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Li, Suzuki and Mishima. 7
III. Claims 1--4, 7-9, 11, and 25-27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Funhoff.8
DISCUSSION
4 Non-Final Act. 2-15; Ans. 3-16.
5 US 2005/0186106 Al, published Aug. 25, 2005 ("Li").
6 US 2003/0008174 Al, published Jan. 9, 2003 ("Suzuki").
7 US 2001/0053462 Al, published Dec. 20, 2001 ("Mishima").
8 US 5,518,824, issued May 21, 1996 ("Funhoff').
3
Appeal2014-005721
Application 12/935,416
I, II
With regard to Rejection I, the Examiner found that Li discloses an
organic electroluminescent element in which a first organic layer is formed
as an insolubilized (i.e., crosslinked) polymer having a charge-transporting
or light-emitting property. Ans. 3 (citing Li, Abstract). The Examiner
particularly pointed to Li's description of a crosslinked polymer containing a
charge-transporting triphenylamine moiety. Id. (citing Li i-f 156).9 The
Examiner interpreted Li's crosslinked charge-transporting polymer as
meeting Appellants' recitation of charge-transporting or light-emitting low
molecular weight compound contained in an insolubilized charge-
transporting polymer.
Appellants argue that Li discloses neither a light-emitting nor a
charge-transporting low molecular weight compound as claimed. App. Br.
7-9. Appellants also argue that the recited low molecular weight
compounds are non-polymeric, in contrast with Li;s polymeric material. See
App. Br. 6, 9. In response, the Examiner reasoned that formation of Li's
polymer would have been expected to yield various molecular weight
adducts, some of which could be characterized as low molecular weight,
Ans. 17-18, and that the phrase, "non-polymeric," does not appear in the
claims, Id. at 16.
During prosecution, claims are given their broadest reasonable
interpretation consistent with the specification, as it would be interpreted by
one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
9 The Examiner cited Suzuki solely as evidence that Li's triphenylamine
moiety is a charge-transporter. Ans. 3.
4
Appeal2014-005721
Application 12/935,416
1359, 1364 (Fed. Cir. 2004). Here, the Specification expressly instructs that
the light-emitting and charge-transporting low molecular weight compounds
of the described invention are each "defined by a single molecular weight."
Spec. 37, 39. The Examiner construed the phrase "low molecular weight
compound" as encompassing Li's charge-transporting polymer which the
Examiner contends would include low molecular weight oligomers produced
in the course of polymerization. Ans. 5. However, the Examiner did not
identify substantial evidence or technical reasoning sufficient to support a
finding that any given oligomer of particular molecular weight inherently
would have existed in Li's polymer composition. Nor are we persuaded that
a polymer composition characterized by an average molecular weight meets
the recited low molecular weight compound which the Specification defines
as exhibiting a single molecular weight. Indeed, Li reports the molecular
weight for the disclosed polymers as an average. E.g., Li i-f 157 (describing
the polymer identified in ,-r 156 by its "weight average molecular weight
(Mw)").
For the foregoing reasons, we are persuaded of reversible error in the
Examiner's finding that Li discloses either a light-emitting or charge-
transporting low molecular weight compound as recited in claims 1, 7, and
8. Accordingly, we will not sustain Rejection I. Because Rejection II is
premised on the same erroneous claim interpretation applied in support of
Rejection I, we also will not sustain Rejection II.
III
With regard to Rejection III, the Examiner found that Funhoff
discloses an electroluminescent arrangement including one or more organic
layers. Ans. 12. The Examiner further found that Funhoff teaches that "at
5
Appeal2014-005721
Application 12/935,416
least one charge-transporting compound is present per layer" and that at least
one layer is crosslinked. Id. Based solely on those findings, the Examiner
concluded that one of ordinary skill would have found it obvious "to have
used a variety of device configurations," including a two-layer configuration
in which "the first layer contains two charge transporting compounds and a
crosslinking material" and "[t]he second layer contains charge transporting
material and a light emitting material." Id.
Appellants argue that "[t]he Examiner has simply failed to articulate
an apparent reason why one of ordinary skill in the art, viewing the
disclosure of Funhoff, would have assembled layers as required in claims 1,
7, and 8." App. Br. 14. We agree. "Rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, the Examiner failed to articulate a reason why one skilled in the art
would have constructed Funhoff s various organic layers in the particular
manner set forth in the claims on appeal. Neither does the Examiner point
us to any teaching in Funhoff that would support the stated finding that
Funhoff teaches any layer that contains two charge-transporting compounds,
much less a layer containing both a charge-transporting and a light-emitting
compound.
On this record, we find that the Examiner's obviousness determination
is not supported by the requisite articulated reasoning as to why one of
ordinary skill would have made the stated modifications to Funhoff.
Accordingly, we also will not sustain Rejection III.
6
Appeal2014-005721
Application 12/935,416
DECISION
The Examiner's decision rejecting claims 1-9, 11-21, and 25-27 is
reversed.
REVERSED
7