MERCK PATENT GMBH

Patent Trials and Appeals Board

Apr 2, 2020

15063919 - (D) (P.T.A.B. Apr. 2, 2020)

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.
15/063,919 03/08/2016 Harald HIRSCHMANN MERCK-4448 1034
23599 7590 04/02/2020
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARALD HIRSCHMANN, MARTINA WINDHORST, and
VOLKER REIFFENRATH
Appeal 2019-003764
Application 15/063,919
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17 and 19–22. We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Merck Patent
GmbH. Appeal Brief (“Appeal Br.”) filed November 8, 2018.
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We AFFIRM.2
CLAIMED SUBJECT MATTER
The invention is directed to liquid-crystalline medium having
improved transmission, in particular for use in elector-optical display panels.
Spec. 1:4–10. More particularly, Appellant discloses a liquid-crystalline
medium (claim 1), a process for preparing a liquid-crystalline medium
(claim 17), and an electro-optical display containing a liquid-crystalline
medium (claim 19).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A liquid-crystalline medium, comprising
a compound of formula IA,
IA
in which
Z1 denotes a single bond, -CH2CH2-, -CH=CH-, -CH2O-, -OCH2-,
-CF2O-, -OCF2-, -COO-, -OCO-, -C2F4-, -C=C-, -CF=CF-,
-CH=CHCHO- or -CH2CF2O-,
and at least one compound of formula CC-n-V and/or CC-V-V1,
CC-n-V
CC-V-V1
where n denotes 2, 3, 4, 5 or 6,
with the provisos that

2 Our Decision additionally refers to the Specification (“Spec.”) filed March
8, 2016, the Examiner’s Answer (“Ans.”) dated February 14, 2019, and the
Reply Brief (“Reply Br.”) filed April 12, 2019.

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— the percentage proportion of the compound of formula IA is
greater than or equal to the percentage proportion of the compound of
formula CC-n-V,
and/or
— the percentage proportion of the compound of formula IA is
greater than the percentage proportion of the compound of formula
CC-V-V1,
and a compound of formula IIB
IIB
in which
R2B denotes H, an alkyl or alkenyl radical having up to 15 C
atoms which is unsubstituted, monosubstituted by CN or
CF3 or at least monosubstituted by halogen, in which one
or more CH2 groups are optionally replaced by -O-, -S-,
, -C=C-, -CF2O-, -OCF2, -OC-O- or -O-CO- in
such a way that O atoms are not linked directly to one
another,
L3-4 each, independently of one another, denote F, CF3, CHF2 or Cl,
Z2 and Z2’ each, independently of one another, denote a single bond,
-CH2CH2-, -CH=CH-, -CF2O-, -OCF2-, -CH2O-,-OCH2-,
-COO-, -OCO-, -C2F4-, -CF=CF-, -C=C- or -
CH=CHCH2O-,
q denotes 0,
v denotes 1 to 6, and
(O) denotes a single bond or -O-,
where the percentage proportion is in each case based on the liquid-
crystalline medium, and wherein the liquid-crystalline medium is a
dielectrically negative liquid-crystalline medium.

REFERENCES
The Examiner relies upon the following prior art:
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Name Reference Date
Manabe et al. (“Manabe”) US 2008/0277623 A1 Nov. 13, 2008
Klasen-Memmer et al.
(“Klasen”)
US 2009/0309066 A1 Dec. 17, 2009
Saito US 2011/0096285 A1 Apr. 28, 2011
Hattori et al. (“Hattori”) US 2013/0001469 A1 Jan. 03, 2013
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103:
1. Claims 1–5, 7–11, 13–17, and 19–22 as unpatentable over Saito
in view of Hattori;
2. Claim 6 as unpatentable over Saito in view of Hattori, and
further in view of Klasen; and
3. Claim 12 as unpatentable over Saito in view of Hattori, and
further in view of Manabe.
OPINION
After review of the Examiner’s and Appellant’s opposing positions
and the appeal record before us, we determine that Appellant’s arguments
are insufficient to identify reversible error in the Examiner’s obviousness
rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly,
we affirm the stated rejections for substantially the fact findings, response to
arguments, and conclusions of law well expressed in the Examiner’s
Answer, which we adopt as our own. We offer the following for emphasis
only.
Appellant argues claims 1, 6, and 12 separately, but does not
otherwise argue the remaining claims separately. Appeal Br. 7–22. In
accordance with 37 C.F.R. § 41.37(c)(1)(iv), claims 2–5, 7–11, 13–17, and
19–22 stand or fall with claim 1 from which they depend.
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Claim 1
The Examiner rejects claim 1 under 35 U.S.C. § 103 as unpatentable
over Saito in view of Hattori. The Examiner finds, and Appellant does not
dispute, that Saito teaches a liquid crystal composition having a negative
dielectric anisotropy comprising at least one compound of formula (1) and at
least one compound of formula (2):
,
with compounds of formula (1) corresponding to formulae IIA and IIB and
compounds of formula (2) corresponding to formula 1A and formula CC-V-
V1. Ans. 4–5. Specifically, the Examiner finds that Saito, Example 3,
teaches 3-H2B(2F,3F)-O2 that corresponds to formula IIA, 3-HBB(2F,3F)-
O2 that corresponds to formula IIB, V-HH-V that corresponds to formula
IA, and 1V-HH-V that corresponds to formula CC-V-V1. Id. The Examiner
further finds that Saito teaches the ratio of the second component is in the
range of approximately 5–50 wt.% based on the total weight of the liquid
crystal composition, and Examples 2, 3, 6, and 7 provide compound V-HH-
V in an amount greater than compound 1V-HH-V and within the range of 1–
50 wt.%. Id. at 5. The Examiner acknowledges that Saito fails to teach a
compound of formula IIB. Id.
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For this feature, the Examiner finds that Hattori, Example 1, teaches a
liquid crystal composition also having a negative dielectric anisotropy and
comprising at least one compound of formula (1) and at least one compound
of formula (2):
,
wherein a compound of formula (1) is V2-BB(2F,3F)-O2, which
corresponds to formula IIB when the alkenyl denotes a straight-chain
alkenyl radical having 4 C atoms and alkyl denotes a straight-chain alkyl
radical having 2 C atoms, and compounds 3-H2B(2F,3F)-O2 and 5-
H2B(2F,3F)-O2 correspond to formula IIA and Saito’s formula (1). Ans. 5–
6. The Examiner finds that Hattori teaches that this liquid crystal
composition satisfies at least one characteristic such as a high maximum
temperature of a nematic phase, a low minimum temperature of the nematic
phase, a small viscosity, a suitable optical anisotropy, a large negative
dielectric anisotropy, a large specific resistance, a high stability to ultraviolet
light and a high stability to heat and having a short response time, a large
voltage holding ratio, a large contrast ratio, a long service life, and so forth,
wherein formula (1) increases the absolute value of dielectric and optical
anisotropy. Id. at 6. Therefore, the Examiner concludes that it would have
been obvious to add Hattori’s compounds to Saito’s composition. Id.
Appellant argues that this rejection is based primarily on the fact that
the components of the claimed liquid-crystalline medium are well known,
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and not because there is any particular reason within the references for the
combination of the particular compounds in the claimed medium. Appeal Br.
7. Appellant contends that the rejection is contrary to well-established
precedent, in particular, Orexo AB v. Actavis Elizabeth LLC, 903 F.3d 1265
(Fed. Cir. 2018). Id. Appellant asserts that Orexo concerned the question of
whether a formulation would have been obvious where all the claimed
ingredients were known and it was known that lower pH from citric acid
beneficially affects bioavailability, but was provided on carrier particles in
the claimed formulation. Id. Appellant urges that the Orexo court stated that
“[t]he question is not whether the various references separately taught
components of the . . . [claimed] formulation, but whether the prior art
suggested the selection and combination achieved by the . . . inventors.” Id.
at 8 (emphasis omitted), quoting Orexo, 903 F.3d at 1273. Appellant
concedes that, like Orexo, the rejection established that the separate
components are known, but contends that nothing in the references suggest
the selection and combination achieved by the claims. Id.
Appellant argues that In re Stepan Co., 868 F.3d 1342 (Fed. Cir.
2017) also supports the argument that the Examiner’s rejection is improper.
Appeal Br. 8. Appellant asserts that although a single prior art reference was
used in the obviousness rejection of Stepan’s claims, which recited a three
component surfactant system having a cloud point above at least 70˚C, the
court held that the Board failed to explain why it would have been routine to
select and adjust the claimed surfactants to achieve this cloud point. Id. at 8–
9. Appellant contends that, like Stepan, there is no motivation to make the
combination as proposed in the rejection here, especially given that each
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reference provides extensive lists of compounds from which the Examiner
makes specific selections to meet the claims. Id. at 9.
Appellant further argues that Unigene Labs., Inc. v. Apotex Inc., 655
F.3d 1352 (Fed. Cir. 2011) also supports Appellant’s argument. Appeal Br.
9. Appellant urges that the Unigene court, applying the approach laid out in
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), clearly held that the
mere separate finding of elements of a claimed invention in the prior art is
insufficient for a prima facie case of obviousness. Id.
Appellant’s arguments are not persuasive of reversible error. To
begin, we note that the Examiner has provided ample reasons for the
combination in both the rejection and response to argument, including
a high maximum temperature of a nematic phase, a low
minimum temperature of a nematic phase, a small viscosity, a
large optical anisotropy, a large dielectric anisotropy, a large
specific resistance, a high stability to ultraviolet light and a high
stability to heat which results in an AM device with a short
response time, a large contrast ratio, a low threshold voltage, a
large voltage holding ratio and a long service life.
Ans. 12. The rejection further states that Hattori specifically teaches that
compounds of formula (1) increase the absolute value of dielectric and
optical anisotropy. Id. at 6.
Our reviewing court has recognized that a given course of action often
has simultaneous advantages and disadvantages, and this does not
necessarily obviate any or all reasons to combine teachings. See Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine.”); Winner Int’l
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact
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that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”).
Nor are we persuaded that merely because the applied references
teach “extensive lists of compounds” from which the compounds are
selected to combine, their selection and combination would not have been
obvious. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (“That the ̓ 813 patent discloses a multitude of effective combinations
does not render any particular formulation less obvious. This is especially
true because the claimed composition is used for the identical purpose.”);
see also In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection
affirmed where the disclosure of the prior art was “huge, but it undeniably
include[d] at least some of the compounds recited in appellant’s generic
claims and [was] of a class of chemicals to be used for the same purpose as
appellant’s additives”); In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)
(“[W]here a skilled artisan merely pursues ‘known options’ from a ‘finite
number of identified, predictable solutions,’ obviousness under § 103
arises.” (quoting KSR, 550 U.S. at 421).
Further, we are not persuaded that the decisions in Orexo, Stepan, and
Unigene compel a different conclusion. We note that in both Orexo and
Stepan, the court specifically noted unobvious results for the claimed
inventions. In Orexo, the court found Orexo had achieved an unobvious
improvement in properties or use due to the adherence of microparticles of
buprenorphine to the surface of citric acid carrier particles. Orexo, 903 F.3d
at 1268–69. The court concluded that it was this unexpected improvement in
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performance, not lack of motivation to combine per se, that dictated against
a conclusion of obviousness. Id. at 1273–74.
Likewise, in Stepan, the court also found an unexpected result was
shown, not a lack of motivation to combine per se, that dictated against a
conclusion of obviousness. The court found that there were examples within
the single applied reference that did not even achieve a cloud point of 60˚C,
which indicated a lack of predictability in achieving a cloud point of at least
above 70˚C as required by Stepan’s claims. Stepan, 868 F.3d at 1347. Here,
unlike Stepan, claim 1 does not recite any unexpected property nor does
Appellant present or argue any unexpected result associated with the recited
liquid-crystalline medium.
In Unigene, the court found that there was specific evidence in the
record indicating that one of the compounds required by Unigene’s claims
yielded discouraging test results and thus taught away from its selection.
Unigene, 655 F.3d at 1363. Appellant does not argue that evidence in the
record indicates that Hattori’s compound of formula (1) would yield any
discouraging results that would teach away from its selection for use in
Saito’s liquid crystal composition.
Appellant next argues that although directed to a mixture of at least
two components of formulae (1) and (2), Saito fails to disclose why more
than one compound of formula (2) would be provided, and if so, what
particular benefit would be achieved. Appeal Br. 10–11. Appellant also
argues that even if more than one compound of formula (2) was provided,
Saito fails to disclose why compounds of formula IA and of formula CC-V-
V1 should be selected, and why there should be more of the former than the
latter. Id. at 11. Appellant concedes that Saito teaches embodiments that
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satisfy these requirements, but contends that Saito provides no reason for the
selection for such an arrangement. Id. As such, Appellant asserts that the
ordinary artisan lacks guidance as to how or why these embodiments should
be further modified. Id. at 11–12. Appellant urges that the only way to make
the specific selections from Saito as required by the claims is to use
Appellant’s disclosure as a blueprint, i.e., the rejection requires improper
hindsight. Id. at 13–14.
Appellant’s arguments with regard to Saito are not persuasive of
reversible error. Initially, we note that, contrary to Appellant’s argument,
Saito does disclose that the liquid crystal composition may include more
than one compound of formula (2). Saito ¶ 11 (“a liquid crystal composition
. . . contains two components, wherein . . . a second component is at least
one compound selected from the group of compounds represented by
formula (2)” (emphasis added). Moreover, as the Examiner finds, and
Appellant concedes, Saito teaches embodiments which meet the requirement
that the liquid crystal composition includes both a compound of formula IA
and at least one of compounds CC-n-V and CC-V-V1, wherein the amount
of the former compound is greater than the amount of the latter
compound(s). Thus, Saito clearly teaches the selection of compounds
sufficient to meet the requirement for an amount of a compound of formula
IA greater than an amount of a compound CC-V-V1.
In addition, as the Examiner finds, Saito teaches the main
characteristics and effects of the component compounds on the composition.
Saito ¶¶ 42–43. Saito also teaches the advantages and disadvantages of
compositions including more compounds, i.e., physical properties can be
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further adjusted by adding compounds at higher cost, and less compounds,
i.e., cost reduction but less flexibility in adjusting physical properties. Id.
¶ 41. Finally, Saito discloses how the effects of various desirable ratios of
the various components on the liquid crystal composition. Id. ¶¶ 44–48.
Thus, contrary to Appellant’s argument, Saito provides ample guidance for
the selection of compounds and relative amounts so as to arrive at a
composition meeting the limitations of claim 1 without improper hindsight.
Appellant next argues that Hattori is directed to a mixture concept that
is “wildly different” from both that of the claims and Saito. Appeal Br. 14.
Appellant contends that Hattori is directed to a composition with at least two
components which contain bridged compounds unrelated to the claimed
composition. Id. Appellant asserts that because Hattori discloses other
compounds that increase the absolute value of dielectric anisotropy besides
compounds of formula (1), Hattori fails to teach why the ordinary artisan
would not proceed with any of these other compounds instead of the formula
(1) compounds, especially since Saito also teaches compounds that have this
same effect. Id. at 15–16. Therefore, Appellant questions why the ordinary
artisan would look outside Saito for combining compounds to increase the
absolute value of dielectric anisotropy. Id. at 16. Appellant further contends
that Hattori provides a large list of compounds having this effect and fails to
provide guidance for selection of compounds that correspond to compounds
of formula IIB of the claims. Id.
Appellant’s arguments with regard to Hattori are not persuasive of
reversible error. As discussed above, we are not persuaded that merely
because an applied reference teaches a large list of compounds from which
the compounds are selected to combine, their selection and combination
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would not have been obvious. Merck, 874 F.2d at 807; Susi, 440 F.2d at 445;
Kubin, 561 F.3d at 1359. This is especially true where, as here, the Hattori
reference provides ample guidance for the selection of a compound. For
example, Hattori, like Saito, discloses the main characteristics and effects of
the component compounds on the composition, thereby guiding the ordinary
artisan in selecting compounds. Hattori ¶¶ 22–23. The fact that there are
multiple compounds having the same desirable effect on the composition
alone is insufficient to overcome the prima facie case of obviousness, as all
such combinations would have been obvious absent a persuasive showing of
unexpected results. Appellant neither presents nor argues unexpected results
attached to the particular selection of compounds present in the claim 1.
Thus, for the reasons given in the Examiner’s Answer and those
discussed above, we sustain the Examiner’s obviousness rejection of claim
1, and dependent claims 2–5, 7–11, 13–17, and 19–22, over the combined
teachings of Saito and Hattori.
Claim 6
Claim 6 depends from claim 1, and further requires one or more
compounds of formulae L-1 to L-11. See Appeal Br., Claims App’x, 27–29.
The Examiner rejects claim 6 under 35 U.S.C. § 103 as unpatentable
over Saito in view of Hattori, and further in view of Klasen. The Examiner
acknowledges that Saito in view of Hattori fails to include a compound of
formulae L-1 to L-11. Ans. 9. For this feature, the Examiner finds that
Klasen teaches a liquid crystal composition comprising compound 1A’-1a
(such as compound LY-3-O2) corresponding to formula L-1, wherein this
compound exhibits broad nematic phase ranges, very favorable values for
the capacitive threshold, relatively high values for the holding ratio, very
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good low-temperature stability, and very low rotational viscosities. Id. at 10.
The Examiner, therefore, concludes that it would have been obvious to add
Klasen’s compound 1A’-1a to Saito’s liquid crystal composition as modified
in view of Hattori in order to benefit from this compound’s favorable
properties. Id.
Appellant asserts that Klasen’s disclosure includes a large number of
compounds and does not provide guidance for the selection of compound
1A’-1a over any of the other compounds disclosed. Appeal Br. 19–21.
However, this argument is similar to arguments raised against Saito and
Hattori—the fact that the prior art references disclose numerous compounds
having beneficial properties dictates against a finding of obviousness as to
the selection of any particular one or several of these compounds. As set
forth above, this argument is not persuasive. As our reviewing court has
stated, the fact that the prior art “discloses a multitude of effective
combinations does not render any particular formulation less obvious. This
is especially true because the claimed composition is used for the identical
purpose.” Merck, 874 F.2d at 807.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 6.
Claim 12
Claim 12 depends from claim 1, and further requires one or more
compounds of formulae P-1 to P-4.
The Examiner rejects claim 12 under 35 U.S.C. § 103 as unpatentable
over Saito in view of Hattori, and further in view of Manabe. The Examiner
acknowledges that Saito in view of Hattori fails to include a compound of
formulae P-1 to P-4. Ans. 10. For this feature, the Examiner finds that
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Manabe teaches a liquid crystal composition comprising compound I-1 (such
as compound PPGU-3-F) corresponding to formula P-1, wherein this
compound has high clearing points and relatively low thresholds. Id. at 11.
The Examiner, therefore, concludes that it would have been obvious to add
Manabe’s compound I-1 to Saito’s liquid crystal composition as modified in
view of Hattori in order to benefit from this compound’s favorable
properties. Id.
Appellant asserts that Manabe discloses that every compound of
formula I has the beneficial properties on which the Examiner’s rejection
relies for selecting compound I-1 and Manabe does not provide guidance for
the selection of compound I-1 over any of the other compounds disclosed.
Appeal Br. 21–22. However, this argument is similar to arguments raised
against Saito and Hattori, as well as claim 6 above—the fact that the prior art
references disclose numerous compounds having beneficial properties
dictates against a finding of obviousness as to the selection of any particular
one or several of these compounds. As set forth above, this argument is not
persuasive. As our reviewing court has stated, the fact that the prior art
“discloses a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose.” Merck, 874 F.2d at
807.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 12.

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CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Examiner’s Answer, the decision of the Examiner rejecting claims 1–
17 and 19–22 under 35 U.S.C. § 103 as unpatentable over Saito and Hattori,
alone or further in view of Klasen or Manabe, is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–5, 7–11,
13–17,
19–22
103 Saito, Hattori 1–5, 7–11,
13–17,
19–22

6 103 Saito, Hattori, Klasen 6
12 103 Saito, Hattori, Manabe 12
Overall
Outcome
1–17, 19–
22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED