Ex parte Wachtler et al.

Board of Patent Appeals and Interferences

May 12, 1998

08046286 (B.P.A.I. May. 12, 1998)

Application for patent filed April 15, 1993. According1
to appellants, this application is a division of Application
No. 07/585,165, filed October 16, 1990, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ANDREAS WACHTLER, REINHARD HITTICH, EIKE POETSCH,
HERBERT PLACH, DAVID COATES, BERNHARD RIEGER
and JOACHIM KRAUSE
________________
Appeal No. 97-1278
Application No. 08/046,2861
________________
ON BRIEF
________________
Before KIMLIN, WARREN and ELLIS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 10
and 11. Claim 9, the other claim remaining in the present
Appeal No. 97-1278
Application No. 08/046,286
We presume that the examiner's rejection of claims 102
and 11 under 35 U.S.C. § 102(f) or (g)/§ 103 has been
withdrawn by the examiner in view of appellants' submission of
a corrected Statement of Common Ownership with the Reply
Brief. The Examiner's Answer to the Reply Brief does not
repeat the rejection.
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application, has been allowed by the examiner. A copy of
illustrative claim 10 is appended to this decision.
In the rejection of the appealed claims, the examiner
relies upon the following reference:
Rieger et al. (Rieger) 5,286,411 Feb. 15, 1994
(filed June 5, 1991)

Appealed claims 10 and 11 stand rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claim 1 of the U.S.
patent to Rieger.2
Upon careful consideration of the opposing arguments
presented on appeal, we find that the examiner's rejection is
free of reversible error. Accordingly, we will sustain the
examiner's rejection.
Appellants do not dispute that the claimed compounds are
encompassed by claim 1 of Rieger, specifically, the compounds
defined by Rieger's structural formulae II and V. Rather,
appellants contend that the claimed compounds of Rieger do not
Appeal No. 97-1278
Application No. 08/046,286
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render obvious the presently claimed compounds because "where
there is a large genus in a patent, it is submitted that, in
the absence of direction to a smaller portion thereof, the
smaller portion is not obvious" (page 3 of principal Brief).
For legal authority, appellants cite In re Jones, 958 F.2d
347, 21 USPQ 1941 (Fed. Cir. 1992). Appellants maintain that
in order to obtain compounds within the scope of the appealed
claims:
[I]t is necessary to select, from the disclosure of
Rieger, not only structures II or V, from among the
eight structures given as the second component of
the liquid crystalline phase by patentees, but also
to select, for patentee's "R", alkenyl from alkyl,
oxaalkyl, fluoroalkyl or alkenyl, and, for the
present claim 11, to select for "X" fluoro from
among fluoro, chloro, trifluoromethyl,
trifluoromethoxy and -OCHF . [Page 3 of principal2
Brief].
We are not persuaded by appellants' argument since,
contrary to appellants' characterization of Rieger, we find a
clear direction in claim 1 of Rieger to select compounds
within the scope of the appealed claims. To wit, the
structural formulae of II and V provide an express disclosure
of a somewhat larger genus than the claimed genus, and the
selection of formulae II and V requires a selection of only
two out of seven, or less than one of four. Also, by claiming
Appeal No. 97-1278
Application No. 08/046,286
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that R can be alkenyl, Rieger provides specific direction for
the presently claimed substituent and, again, the choice of
alkenyl is only one from four possible substituents.
Furthermore, Rieger's definition of X nearly coincides with
appellants' definition of X in the appealed claims, i.e.,
Rieger adds only OCHF to the four substituents claimed by2
appellants for X. We note that in such cases of selection the
issue is typically whether the prior art anticipates under §
102 or renders obvious under § 103 a claimed invention, not
whether a limited degree of selection from the prior art
establishes a prima facie case of obviousness. See, for
example, In re Schaumann, 572 F.2d 312, 316-17, 197 USPQ 5, 9
(CCPA 1978); In re Petering, 301 F.2d 676, 682-83, 133 USPQ
275, 280-81 (CCPA 1962). In re Jones, 958 F.2d 347, 21 USPQ
1941, represents an exception to the general rule since in
Jones the reference disclosed a potentially infinite genus
which embraced but did not point to the claimed salt of an
acid known as "dicamba," and, therefore, is not controlling
here.
Appellants also maintain that In re Braat, 937 F.2d 589,
594, 19 USPQ2d 1289, 1293 (Fed. Cir. 1991) requires us to apply
Appeal No. 97-1278
Application No. 08/046,286
Page 3 of the present specification states that the3
present invention relates to the compounds of formula I and to
their use as components of liquid-crystalline media, and to
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the two-way test for double patenting. We do not agree. In
the recently decided In re Berg, F.3d , , 46 USPQ
1226, 1229-30 (Fed. Cir. 1998), the court stated that the two-
way test is a narrow exception to the general rule of the one-
way test, and that the two-way test applied when a later-filed
improvement patent issues before an earlier filed basic
invention. In the present case, it does not appear that claim
1 of Rieger is an improvement over the appealed claims of the
present application. Indeed, with respect to the claimed
compounds of Rieger, claim 1 of Rieger is broader than the
subject matter of the appealed claims. As apparently
acknowledged by appellants, the compounds of the appealed
claims are species within the claimed genus of Rieger.
Also, the court stated in Braat that if an applicant can
file all of his claims in one application, but chooses not to
do so, he is not entitled to the exception of the two-way
test. In the present case, based on the close correspondence
in subject matter disclosed in the present application and the
patent specification, it appears to us that claim 1 of Rieger3
Appeal No. 97-1278
Application No. 08/046,286
liquid-crystalline media containing at least one compound of
the formula I.
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and the presently appealed claims could have been properly
filed in one application with, of course, the properly named
inventors. We note that the Rieger patent and the present
application have four common inventors.
In addition, by filing a divisional application and not
electing and prosecuting the appealed claims in the parent
application, appellants have established that they, and not
the PTO, controlled the rate of progress of the present
application. In re Goodman, 11 F.3d 1046, 1053, 29 USPQ2d
2010, 2016 (Fed. Cir. 1993).
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
Appeal No. 97-1278
Application No. 08/046,286
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)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOAN ELLIS )
Administrative Patent Judge )
Appeal No. 97-1278
Application No. 08/046,286
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Millen, White, Zelano & Branigan
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Appeal No. 97-1278
Application No. 08/046,286
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APPENDIX
10. A phenylcyclohexane of formula I
in which n is 0 to 7, Q and Q are H, or one of these radicals1 2
is alternatively CH , r is 0, 1, 2, 3, 4 or 5, A is trans-1,4-3
cyclohexylene, 1,4-phenylene, 3-fluoro-1,4-phenylene or a
single bond, X is F, Cl, -CF or -OCF and Y and Z are each F.3 3