MERCK PATENT GMBH

Patent Trials and Appeals Board

Jul 28, 2020

13763741 - (D) (P.T.A.B. Jul. 28, 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.
13/763,741 02/11/2013 Helmut HAENSEL MERCK-4055 4399
23599 7590 07/28/2020
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
07/28/2020 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 HELMUT HAENSEL, ANDREAS POHLE, CHANG-JUN YUN,
YONG-KUK YUN, HEE-KYU LEE, and CHANG-SUK CHOI

Appeal 2019-005370
Application 13/763,741
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–13, 15–20, and 22–52.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—“Merck Patent GmbH” (Application Data Sheet filed
February 11, 2013 at 5), which is also identified as the real party in interest
(Appeal Brief filed February 19, 2019 (“Appeal Br.”) at 1).
2 See Appeal Br. 4–17; Reply Brief filed July 8, 2019 (“Reply Br.”) at 1–8;
Final Office Action entered April 17, 2018 (“Final Act.”) at 3–30;
Examiner’s Answer entered May 8, 2019 (“Ans.”) at 3–31.
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I. BACKGROUND
The subject matter on appeal relates generally to a liquid-crystalline
medium, which is used for electro-optical purposes such as dielectrics in
liquid crystal displays (Specification filed February 11, 2013 (“Spec.”) at 1,
ll. 3–18). Representative claim 1 is reproduced from the Claims Appendix
to the Appeal Brief, as follows:
1. A liquid-crystalline medium having a positive anisotropy,
said medium comprising:
two or more compounds of formula IA,

;
two or more compounds of formula IIA,
;
and one or more compounds selected from formulae IIB
and IIC,

in which
RA, R2A, R2B and R2C
each, independently of one another, denote 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, where,
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in addition, one or more CH2 groups in these
radicals may be 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,

XA denotes F, Cl, CN, SF5, SCN, NCS, a halogenated
alkyl radical, a halogenated alkenyl radical, a
halogenated alkoxy radical or a halogenated
alkenyloxy radical, each having up to 6 C atoms,
Y1-6 each, independently of one another, denote H or F,
L1 and L2 each, independently of one another, denote F,
Cl, CF3 or CHF2,
L3-6 each, independently of one another, denote H, F, Cl,
CF3 or CHF2, but at least two of L3-6 denote F, Cl,
CF3 or CHF2,
Z2 denotes a single bond in formula IIA,
Z2 and Z2’ in formula IIB each, independently of one
another, denote a single bond, -CH2CH2-,
-CH=CH-, -C≡C-, -CF2O-, -OCF2-, -CH2O-,
-OCH2-, -COO-, -OCO-, -C2F4-, -CF=CF-,
-CH=CHCH2O-,
p denotes 0, 1 or 2,
q denotes 0 or 1,
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o denotes 0 or 1,
(O)CvH2v+l denotes OCvH2v+l or CvH2v+l, and
V denotes 1 to 6;
wherein the proportion of compounds of the formulae IIA, IIB
and IIC in the medium as a whole is at least 10 % by weight, and
wherein:
(a) said medium contains in total ≥ 20 % by weight of
compounds of the formula IA and compounds of the formula IIB,
based on the medium; or
(b) said medium contains at contains in total ≥ 20 % by
weight of compounds of the formula IA and compounds of the
formula IIC, based on the medium.
(Appeal Br. 19–21).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103(a) (pre-
AIA), as follows:
A. Claims 1–13,3 16–18, 20, 22, 23, 26, 29–45, and 47–50 as
unpatentable over Wu et al.4 (“Wu”);
B. Claims 24, 27, and 46 as unpatentable over Wu in view of
Klasen-Memmer et al.5 (“Klasen-Memmer”);

3 The Examiner indicates in the Answer that claim 14 is also rejected (Ans.
3). But claim 14 was canceled in the Amendment filed October 23, 2018,
which appears to have been entered (Advisory Action entered November 13,
2018 (“STATUS OF CLAIMS”); Appeal Br. 4).
4 US 2011/0140039 A1, published June 16, 2011.
5 WO 2011/098224 A1, published August 18, 2011. The Examiner relies
on the corresponding United States published application—US
2012/0305843 A1, published December 6, 2012 in the name of “Klasen-
memmer et al.”—as a translation. Therefore, our citations to Klasen-
Memmer are to the US document.
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C. Claims 15, 25, 51, and 52 as unpatentable over Wu in view of
Kondo et al.6 (“Kondo”);
D. Claim 19 as unpatentable over Wu in view of Bernatz et al.7
(“Bernatz”); and
E. Claim 28 as unpatentable over Wu in view of Weber et al.8
(“Weber”).
(Ans. 3–31; Final Act. 3–30).
III. DISCUSSION
Rejection A (Claims 1–13, 16–18, 20, 22, 23, 26, 29–45, & 47–50).
The Appellant relies on the same arguments for all claims subject to
Rejection A (Appeal Br. 4–12). Therefore, we confine our discussion to
claim 1, which we select as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
By this rule, claims 2–13, 16–18, 20, 22, 23, 26, 29–45, and 47–50 stand or
fall with claim 1.
The Examiner finds that Wu describes a liquid crystal composition
comprising at least one compound falling within formula I and at least one
compound selected from compounds falling within formulae IA–IE (Ans. 3;
Final Act. 3). Significant to this appeal, the Examiner finds that:
(i) Wu’s compounds having formula I, as defined in Wu’s paragraph
29, correspond to the compounds having formula IA, as recited in claim 1;

6 US 6,197,217 B1, issued March 6, 2001.
7 US 2009/0103011 A1, published April 23, 2009.
8 US 5,387,369, issued February 7, 1995.
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(ii) Wu’s compounds having formula IB-1, as defined in Wu’s
paragraph 66, correspond to the compounds having formula IIA, as recited
in claim 1; and
(iii) Wu’s compounds having formula ID-2, as defined in paragraph
69, corresponds to the compounds having formula IIC, as recited in claim 1
(Ans. 3–5; Final Act. 3–5). According to the Examiner, “[t]he fact that Wu .
. . teaches at least one compound [having formula I, IB-1, and ID-2] can be
used in the liquid crystal composition suggests that two compounds of the
same formula can be used” (Ans. 4; Final Act. 4). The Examiner states that
“[a]lthough Wu . . . does not teach a specific example of the above
compounds together in a composition, it is known to one of ordinary skill in
the art to combine equivalents known for the same purpose” (Ans. 5; Final
Act. 6) (citing MPEP § 2144.06(I)).
The Appellant contends that “while Wu . . . do[es] disclose formula
ID, they do not disclose any specific compounds thereof” and that none of
Wu’s “mixture examples contain a compound of general formula ID, let
alone a compound of subformula ID-2” (Appeal Br. 6; see also id. at 9).
The Appellant argues that although it is “arguably possible” in view of Wu’s
disclosure to arrive at a composition encompassed by the claims on appeal,
“obviousness under the statute is not established by mere possibility” (id. at
7). The Appellant argues that, “[i]nstead, to establish obviousness, there
must be some motivation demonstrated that would suggest or lead one of
ordinary skill in the art to the [claimed] composition” (id.). In the
Appellant’s view, “one could list a seemingly infinite number of possible
combinations that fall within the generic disclosure of Wu . . . but yet do not
encompass an embodiment of [the Appellant’s] claimed liquid-crystalline
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media” and, therefore, Wu’s broad disclosure does not provide sufficient
motivation or suggestion to make the claimed composition (id. at 8 (citing In
re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994); In re Jones, 958 F.2d 347, 350
(Fed. Cir. 1992)).
The Appellant’s arguments9 fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Wu describes a liquid-crystalline medium comprising one or more
compounds falling within the scope of formula I

and a small amount of at least one negative dielectric anisotropy compound
falling within the scope of formulae IA–IE

9 In re NuVasive, Inc., 842 F.3d 1376, 1380 (Fed. Cir. 2016) (explaining
that arguments are waived when the applicant fails to raise them before the
Board). See also 37 C.F.R. § 41.37(c)(1)(iv) (“[A]ny arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal.”).
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in which R0, R1, R2, L1–L5, X0, X1, X2, A1, Z1, m, p, q, and v have specified
meanings (Wu ¶¶ 29–45). According to Wu, the addition of a small amount
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of the at least one negative dielectric anisotropic compound falling within
formulae IA–IE to a high positive dielectric anisotropy liquid-crystalline
media containing one or more compounds falling within formula I
eliminates or reduces an “image sticking” problem (id. ¶¶ 26–28, 45).
With respect to the “two or more compounds of formula IA” in claim
1, Wu teaches “one or more compounds of formula I” above in which R0 is
selected from the same substituents as defined in claim 1 for RA (id. ¶ 29,
33). In addition, Wu teaches that L1–L5 are—like Y1–Y6 in claim 1—each,
independently of one another, H or F (id. ¶ 31). Furthermore, Wu teaches
that X0 has the same meaning given for XA in claim 1 (id. ¶ 30). As the 6-
member saturated ring “A” in claim 1 may be selected from the same 6-
member oxygen heterocyclic ring in Wu’s formula I, and Y1 in claim 1 may
be F, we find that formula IA, as defined in claim 1, is broader than and
reads on—i.e., it is indistinguishable from—Wu’s formula I. Cf. Titanium
Metals Corp. of America v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (“It
is . . . an elementary principle of patent law that when . . . a claim covers
several compositions, the claim is ‘anticipated’ if one of them is in the prior
art.”).
With respect to the “two or more compounds of formula IIA” in claim
1, Wu teaches 24 classes of compounds IB-1 through IB-24 as preferred
compounds falling within formula IB (Wu ¶ 66). In particular, Wu’s
compound IB-1 has the formula

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in which R2 and v are identical to R2A and v of formula IIA, as defined in
claim 1 (id. ¶¶ 33, 42). As the 6-member saturated ring “B” in claim 1 may
be selected from the same cyclohexane ring “H” in Wu, p in claim 1 may be
1, Z2 in claim 1 is a single bond (that adds nothing to the single bond already
present), and L1 and L2 in claim 1 may be F, Wu’s formula IB-1 fully meets
formula IIA. In this regard, we are in complete agreement with the
Examiner that a person having ordinary skill in the art would have found it
obvious to use two or more compounds falling within Wu’s formula IB-1
based on the reasonable expectation that a mixture of such compounds, each
identified as suitable, would also provide successful results (Ans. 4). Merck
& Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 808–09 (Fed. Cir. 1989)
(“[T]he ‘joint use [of magnesium oxide and calcium carbide] is not
patentable’ where the prior art teaches ‘that both magnesium oxide and
calcium carbide, individually, promote the formation of a nodular structure
in cast iron, and it would be natural to suppose that, in combination, they
would produce the same effect and would supplement each other.’”)
(internal citation omitted); In re Kerkhoven, 626 F.2d 846, 850 (CCPA
1980) (citation omitted) (“It is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose.”).
With respect to the “one or more compounds selected from formulae
IIB and IIC” in claim 1, the Inventors describe formula IIC-1 in dependent
claim 5 (Appeal Br. 27–28) and the Specification (Spec. 31, l. 10–13) as
falling within the scope of formula IIC (id. at 19, l. 28–32, l. 12). Wu
teaches a compound having formula ID-2, as a preferred compound:
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in which R2 may be an alkyl group and v is 1 to 6 (Wu ¶¶ 33, 42).
Therefore, we discern no reversible error in the Examiner’s finding that
Wu’s formula ID-2 meets formula IIC-1 in dependent claim 5 (Ans. 5; Final
Act. 5), and, in any event, the Appellant does not dispute that finding
(Appeal Br. 7–8). Again, as the Examiner explains (Ans. 5), Wu’s explicit
teaching that “at least one compound selected from the group of compounds
of the formulae IA to IE” (Wu ¶ 29 (emphasis added)) would have suggested
to a person having ordinary skill in the art to select and use multiple
compounds having formulae within any of IA–IE. Merck, 874 F.2d at 808–
09; Kerkhoven, 626 F.2d at 850.
Given these findings, the Appellant is incorrect in asserting that no
motivation or suggestion exists to make the claimed composition. Contrary
to the Appellant’s belief, a prior art reference’s disclosure is not limited to
its working examples or its preferred compositions. “[I]n a section 103
inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’” Merck, 874 F.2d at 807 (citing In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
In this case, Wu’s formula I falls completely within formula IA, as
recited in claim 1, and Wu’s compounds represented by formulae IB-1 and
ID-2 are disclosed as preferred classes of compounds for which only a
limited amount of picking and choosing is necessary to arrive at the
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compounds represented by formulae IIA and IIC, as recited in claim 1.
“That the [reference] discloses a multitude of effective combinations does
not render any particular formulation less obvious.” Merck, 874 F.2d at 807.
See also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (plurality)
(“[P]icking and choosing may be entirely proper in the making of a [§] 103,
obviousness rejection.”).
We also discern no persuasive merit in the Appellant’s argument that
Baird and Jones, cited above, are controlling, as these precedents are
inapposite to the facts of the current case. In Baird, 16 F.3d at 383, the court
held that a “disclosure of millions of compounds does not render obvious a
claim to three compounds, particularly when that disclosure indicates a
preference leading away from the claimed compounds” (emphasis added).
Likewise, in Jones, 958 F.2d at 350, the court held that the prior art
reference disclosed a “potentially infinite genus of ‘substituted ammonium
salts’” (emphasis added) without listing the claimed salt and that the PTO
failed to provide a reason for combining other references in the manner
claimed. Here, by contrast, Wu does not teach away10 from the claimed
composition and does not teach a “potentially infinite genus” but, instead,
lists a finite number of preferred classes of compounds of relatively narrow
scope—any of which may be selected and used to achieve Wu’s stated goals,
either alone or in combination (Wu ¶¶ 27–28). Therefore, we are in
complete agreement with the Examiner that Baird and Jones do not apply
(Ans. 26).

10 In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (explaining that “no
teaching away [exists] where nothing in the prior art device suggested that
the claimed invention was unlikely to work”).
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For these reasons, and those well-stated in the Answer and Final
Action, we sustain the Examiner’s rejection as maintained against claim 1.
Rejection B (Claims 24, 27, & 46). The Appellant does not argue
any claim separately (Appeal Br. 12–14). Therefore, we limit our discussion
to claim 24 (Appeal Br. 36–37), which we select as representative.
The Examiner finds that Wu does not disclose the specific compounds
having formulae IIA-64 and IIA-65 in claim 24, which depends from claim 1
(Ans. 13–14; Final Act. 13). The Examiner finds further, however, that
Klasen-Memmer teaches a compound having formula I-6A-1, which
corresponds to formula IIA-64 recited in claim 24, that “provides a liquid
crystal composition . . . with the ability to operate at extremely high and
extremely low temperatures and at the same time have short response times
as well as improved reliability behavior, in particular have no or
significantly reduced image sticking after long operating times and improved
rotational viscosities” (Ans. 14; Final Act. 14). The Examiner concludes
from these findings that a person having ordinary skill in the art would have
found it obvious to add Klasen-Memmer’s compounds to Wu’s composition
in order to obtain the advantages disclosed in Klasen-Memmer (Ans. 14–15;
Final Act. 14).
The Appellant acknowledges that Wu teaches adding a small amount
of negative dielectric anisotropy compounds to a high positive dielectric
anisotropy liquid crystalline media to address the problem of image sticking
(Appeal Br. 13). The Appellant contends, however, that “[o]ne of ordinary
skill in the art would not look to the disclosure of [Klasen-memmer], which
deals with liquid crystalline media having negative dielectric anisotropy, to
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modify crystalline media with high positive dielectric anisotropy such as
disclosed by Wu” (id.).
We disagree with the Appellant. As the Examiner finds (Ans. 28
(citing Wu ¶¶ 27–28, 159, 173)), and as the Appellant acknowledges, Wu
teaches eliminating or reducing the problem of image sticking in a positive
dielectric anisotropy liquid crystalline media by adding a small amount of
negative dielectric anisotropy compounds, such as those represented by
formulae IA, IB, IC, ID, and/or IE, but not limited thereto (Wu ¶¶ 27–28,
159, 173). Given this direction in Wu, a person having ordinary skill in the
art would have had a reason to look at other references that disclose negative
dielectric anisotropy compounds, such as those disclosed in Klasen-
Memmer, that also address the problem of image sticking (Klasen-Memmer
¶¶ 25–27).
For these reasons, we uphold Rejection B.
Rejection C (Claims 15, 25, 51, & 52). The Appellant’s argument
against Rejection C is similar to that advanced against Rejection B—i.e.,
that Kondo is directed to negative dielectric anisotropy liquid crystal
compositions, and that, therefore, a person having ordinary skill in the art
would not have combined it with Wu, which is directed to positive dielectric
anisotropy liquid crystalline media (Appeal Br. 15). We disagree for reasons
analogous to those discussed above for Rejection B—i.e., that Wu provides
explicit direction to look to other references disclosing negative dielectric
anisotropy compounds (Wu ¶¶ 27–28, 159, 173), and, therefore, a person
having ordinary skill in the art would have considered Kondo’s teachings
(Kondo col. 5, ll. 13–20; col. 37, ll. 49–54).
Accordingly, we sustain Rejection C.
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Rejection D (Claim 19). The Appellant’s argument against Rejection
D is similar to that advanced against Rejections B and C—i.e., that Bernatz
is directed to negative dielectric anisotropy liquid crystal compositions, and
that, therefore, a person having ordinary skill in the art would not have
combined it with Wu, which is directed to positive dielectric anisotropy
liquid crystalline media (Appeal Br. 16). We disagree for reasons analogous
to those discussed above for Rejections B and C—i.e., that Wu provides
explicit direction to look to other references disclosing negative dielectric
anisotropy compounds (Wu ¶¶ 27–28, 159, 173), and, therefore, a person
having ordinary skill in the art would have considered Bernatz’s teachings
(Bernatz ¶¶ 22, 251, 295).
Accordingly, we sustain Rejection D.
Rejection E (Claim 28). The Examiner’s findings and reasons in
support of the rejection are found on pages 17–18 of the Answer and page
17 of the Final Action, which we incorporate by reference.
Similar to the arguments offered against Rejections B through D, the
Appellant argues that Weber teaches supertwist liquid crystal displays
(SLCD), whereas Wu is directed towards improving TN-TFT (twisted
nematic-thin film transistors) mixtures (Appeal Br. 17). According to the
Appellant, “the compounds in question disclosed by Weber . . . are said to
improve the characteristic line gradient,” whereas “Wu . . . make[s] no
disclosure regarding characteristic line gradient or any need to improve
characteristic line gradient” (id.). The Appellant argues that, therefore, a
person having ordinary skill in the art would not have combined Wu and
Weber in the manner claimed by the Inventors (id.).
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In response, the Examiner agrees with the Appellant that Wu does not
mention the need for improving characteristic line gradient (Ans. 31). The
Examiner finds, however, that “Wu teaches the media according to the
present invention are highly suitable for MLC, TN, STN [super twisted
network], FFS, or IPS displays” and that “[t]herefore, one of ordinary skill in
the art would look to the teachings of Weber for compounds which are
suitable for use in an STN type display according [to] its ideal properties”
(id. (citing Wu ¶¶ 47, 162)).
The Appellant does not offer any argument against the Examiner’s
position as set forth in the Answer, which we find to be reasonable.
Therefore, we also sustain Rejection E.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s) Affirmed Reversed
1–13, 16–18, 20,
22, 23, 26, 29–
45, 47–50
103(a) Wu 1–13, 16–18,
20, 22, 23, 26,
29–45, 47–50

24, 27, 46 103(a) Wu, Klasen-
memmer
24, 27, 46
15, 25, 51, 52 103(a) Wu, Kondo 15, 25, 51, 52
19 103(a) Wu, Bernatz 19
28 103(a) Wu, Weber 28
Overall
Outcome
1–13, 15–20,
22–52

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