Aziz et al.v.Wang et al.

Board of Patent Appeals and Interferences

Sep 28, 2010

10702859 (B.P.A.I. Sep. 28, 2010)

1
Mail Stop Interference Paper 23 2
P.O. Box 1450 Filed: September 28, 2010 3
Alexandria Va 22313-1450 4
Tel: 571-272-4683 5
Fax: 571-273-0042 6
7
UNITED STATES PATENT AND TRADEMARK OFFICE 8
9 10
11
BEFORE THE BOARD OF PATENT APPEALS 12
AND INTERFERENCES 13
14 15
16
SUNING WANG and RUIYAO WANG 17
Junior Party 18
(U.S. Application 10/825,685), 19
20
v. 21
22
HANY AZIZ, GEORGE VAMVOUNIS, NAN-XING HU, 23
ZORAN D. POPOVIC, AND JENNIFER A. COGGAN 24
Junior Party 25
(U.S. Patent 7,291,404). 26
27 28
29
Patent Interference No. 105,691 (MPT) 30
(Technology Center 1700) 31
32 33
34
MEMORANDUM OPINION and ORDER 35
Decision on Motions 36
37
Before: SALLY G. LANE and SALLY C. MEDLEY and MICHAEL P. TIERNEY, 38
Administrative Patent Judges. 39
40
TIERNEY, Administrative Patent Judge. 41

2
This interference is before a motions panel for a decision on preliminary 1
motions. 2
3
I. Introduction 4
This interference is directed to photoluminescent and electroluminescent 5
azole compounds and electroluminescent devices employing such compounds. 6
Both Aziz and Wang have been designated junior party as the parties 7
coordinated the filing of provisional patent applications such that they would be 8
filed on the same day.1 37 C.F.R. § 41.201. Specifically, Aziz’s involved ‘404 9
patent and Wang’s involved ‘685 application have the same constructive reduction 10
to practice date based on provisional applications filed April 17, 2003. The 11
provisional applications and subsequent patent applications however, cited 12
different inventive entities and different assignees. (Id.). Aziz and Wang are now 13
commonly assigned to LG Display. 14
There are three (3) pending preliminary motions awaiting decision. The 15
motions were filed jointly by Wang and Aziz, hereinafter “Wang.” Wang 16
Motion 1 requests judgment for no interference-in-fact, Wang Motion 2 moves to 17
redefine the count and Wang Contingent Motion 3 requests that Aziz claims 2, 23 18
and 24 be designated as not corresponding to Count 1. 19
We deny Wang Motion 1 as we hold that Wang has failed to meet its burden 20
of proof that there is no interference-in-fact between the parties’ claims. We 21
likewise deny Wang Motion 2 to substitute a count and deny Wang Motion 3 as 22

1 Wang, during prosecution of its ‘685 application informed the Examiner that Aziz
and Wang had worked together and decided that each of them would file a patent
application on the same day. (Wang ‘685, Amendment filed August 11, 2008, pgs.
10-11).

3
Wang has failed to demonstrate that Aziz claims 2, 23 and 24 should not be 1
designated as corresponding to Count 1. 2
3
II. Findings of Fact 4
A. The Real Party in Interest 5
1) LG Display Co. Ltd. is the real party in interest for Aziz. (Order, July 24, 6
2009, Paper 5, p. 2). 7
8
2) At the time the interference was declared Queen’s University of Kingston, 9
Canada, was the real party in interest in Wang’s involved ‘685 application. 10
(Paper 3). After the interference was declared, Wang’s ‘685 application was 11
assigned to LG Display Co., Ltd., which is the real party in interest for Aziz. (Id.). 12
13
B. Priority of Invention 14
3) Aziz is involved in the interference based on U.S. Patent 7,291,404, issued 15
on November 6, 2007, based on U.S. Application 10/702,859, filed November 6, 16
2003. (Declaration, Paper 1, p. 3). 17
18
4) Wang is involved in the interference based on U.S. Application 10/825,685, 19
filed April 16, 2004. (Declaration, Paper 1, p. 3). 20
21
5) Wang and Aziz both filed provisional applications, Wang: 60/463,337 and 22
Aziz: 60/463,312, on April 17, 2003. (Declaration, Paper 1, pp. 4-5). The parties 23
decided to file their provisional applications on the same day so that the 24
applications would not be citable against each other. (Wang Exhibit 2003, ‘685 25
Amendment filed August 11, 2008, pp.10-11). 26

4
1
6) As to Count 1, the parties have agreed that Wang has priority over Aziz. 2
(Joint Priority Statement, Paper 13). 3
4
C. Count/claim correspondence 5
7) There is a single count in the interference, Count 1, which concerns claim 5 6
of Wang, U.S. Application 10/825,685 and claim 41 of Aziz, U.S. Patent No. 7
7,291,404. 8
9
8) Claim 5 of Wang is directed to a photo/electroluminescent azole compound. 10
Claim 41 of Aziz overlaps in scope and claims a photo/electroluminescent azole 11
compound used in an electroluminescent device, specifically an organic light 12
emitting device (OLED). 13
14
9) The claims of the parties are: 15
Wang ‘685 Application: 2, 5-14, 17-22, 40-47 and 49-52 16
Aziz ‘404 Patent: 1-62 17
18
10) The claims of the parties which correspond to Count 1 are: 19
Wang ‘685 Application: 2, 5-14, 17-22, 40-47 and 49-52 20
Aziz ‘404 Patent: 1-62 21
22
11) The claims of the parties which do not correspond to Count 1, and therefore 23
are not involved in this interference, are: 24
None. 25
26

5
D. One of ordinary skill in the art 1
12) The relevant art is that of organic light emitting devices (OLEDs). 2
3
13) A person of ordinary skill in the OLED art would have at least a bachelors 4
degree in chemistry, materials science, or other related field of study and some 5
work experience. (Wang Exhibit (“WX”) 2001, Declaration of Jungkeun Kim, 6
¶ 6). 7
8
14) Wang states that one of ordinary skill in the art would have knowledge of 9
the types of materials known and used in OLEDs and the basic structure and 10
design considerations. (Paper 14, Wang Motion 1 at 7). 11
12
15) Dr. Kim testifies on behalf of Wang and is sufficiently qualified to give 13
testimony with respect to the particular facts known by one of ordinary skill in the 14
art in the field of OLEDs. (WX 2001, ¶¶ 1-3). 15
16
16) Dr. Kim testifies that one skilled in the art understood that OLEDs typically 17
include an array of pixels having an luminescent material between two electrodes 18
(anode and cathode). When an electrical signal is applied to the electrodes, the 19
luminescent material produces light. (WX 2001, ¶ 15). 20
21
17) Dr. Kim also testifies that one skilled in the art understood that the 22
performance of an OLED may be improved by adding a layer charge injection and 23
transport layer between the electrodes and the luminescent material. (Id. at ¶ 17). 24
25
18) Dr. Kim testifies that Wang’s invention is directed to a novel organic azole 26

6
compound for use as an emitter in OLEDs whereas Aziz’s invention is directed to 1
an OLED using a novel organic azole compound as an electron injection and 2
transport material. (Id. at ¶¶ 11 and 13). 3
4
19) Dr. Kim states that Wang and Aziz’s claimed azole compounds are similar, 5
albeit not identical. (Id. at ¶ 25). 6
7
20) In discussing the additional substituents present in Aziz’s azole compounds, 8
Dr. Kim testifies that “the addition of substituents to a chemical compound is 9
unpredictable.” (Id. at ¶ 35). 10
11
21) Dr. Kim testifies that a paper authored by all of the inventors of the Wang 12
application and Aziz patent (“Wang paper,” WX 2004) describes a specific azole 13
compound. (WX 2001, ¶ 30). According to Dr. Kim, the paper demonstrates that 14
a specific azole compound (“compound 1”) performed comparably or better than 15
an industry standard electron-transport compound, Alq3. (Id. at ¶ 31). 16
17
III. Opinion 18
There are three (3) pending motions awaiting decision. Although the 19
motions are unopposed, a party filing a motion has the burden of establishing that 20
it is entitled to the relief requested. 37 C.F.R. § 41.208, see also, Pechiney 21
Emballage Flexible Eur. v. Cryovac Inc., 73 USPQ2d 1571, 1573 (Bd. Pat. App. & 22
Int., 2004). Accordingly, Wang, as the moving party, has the burden of proof with 23
respect to its substantive motions. The evidentiary standard for Wang’s motions is 24
preponderance of the evidence. Bilstad v. Wakalopulos, 386 F.3d 1116, 1120 (Fed. 25
2004). The burden of showing something by a preponderance of the evidence 26

7
simply requires the trier of fact to believe that the existence of a fact is more 1
probable than its nonexistence before the trier of fact may find in favor of the party 2
who carries the burden. Concrete Pipe & Products of California, Inc. v. 3
Construction Laborers Pension Trust for Southern California, 508 U.S. 602, 622 4
(1993). (citation omitted). 5
6
A. Wang Motion 1 for No Interference-in-fact 7
Wang Motion 1 alleges that there is no interference-in-fact between Wang’s 8
azole compound claims and Aziz’s OLED having a transporting layer comprising 9
an azole compound. (Paper 14, 6:3-13). Specifically, Wang states that the 10
invention claimed by Wang does not anticipate or render obvious Aziz’s claimed 11
invention. (Id., 3:31-32). Wang does however state that its analysis assumes that 12
certain Wang and Aziz claims are cancelled. (Id. at 2:8-10).2 13
14
1. Legal Principles 15
An interference-in-fact exists when an application and a patent or an 16
application and another application each have at least one claim directed to 17
patentably indistinct subject matter. The existence of an interference-in-fact is 18
initially determined by applying the so called “two-way test” of 37 C.F.R. 19
§ 41.203(a)(2004): 20
An interference exists if the subject matter of a claim of one party 21
would, if prior art, have anticipated or rendered obvious the subject 22
matter of a claim of the opposing party and vice versa. 23
24
Thus, the subject matter of a claim of one party is assumed to be prior art 25

2 Wang Motion 1 requests leave to cancel Wang claims 13, 14, 17, 18, 46, 47, 49
and 50 and Aziz claims 59 and 60. (Paper 14, 3:33 – 4:2).

8
with respect to the claimed subject matter of the opponent. An evaluation is made 1
to determine if the opponent’s claimed subject matter is anticipated by or obvious 2
from the subject matter of the other party’s claims. The analysis is then repeated 3
with the opponent’s claimed subject matter assumed to be prior art. No 4
interference-in-fact is shown if the outcome of either evaluation is that one party’s 5
claims is neither anticipated nor obvious from the other party’s claims. 6
Anticipation is established only when a single prior art reference discloses 7
all elements of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 8
1990). Regarding obviousness, the U.S. Supreme Court has stated: 9
“Under § 103, the scope and content of the prior art are to be 10
determined; differences between the prior art and the claims at issue 11
are to be ascertained; and the level of ordinary skill in the pertinent art 12
resolved. Against this background the obviousness or nonobviousness 13
of the subject matter is determined. Such secondary considerations as 14
commercial success, long felt but unsolved needs, failure of others, 15
etc., might be utilized to give light to the circumstances surrounding 16
the origin of the subject matter sought to be patented.” 17
18
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). Thus, the 19
evaluation of obviousness, or non obviousness, requires consideration of the scope 20
and content of the prior art and level of ordinary skill in the art. The obviousness 21
conclusion is reached from the perspective of the hypothetical person having 22
ordinary skill in the art. That person is presumed to be aware of all the pertinent 23
prior art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. 24
Cir. 1985). 25
In more typical situations involving obviousness, such as ex parte 26
examination or a civil action for patent infringement, a party asserts that the 27
claimed subject matter would have been obvious. Yet, the situation in a motion for 28
no interference-in-fact or a motion to undesignate claims is the opposite. The 29

9
analysis starts with the presumption that the claimed subject matter would have 1
been obvious from the count subject matter. The moving party bears the burden of 2
establishing a negative – that the subject of the claims would not have been 3
obvious. 4
5
2. Analysis 6
a. Wang Claims Do Not Anticipate Aziz’s Claims 7
Aziz claims an electroluminescent device and a photo/electroluminescent 8
azole compound for use in that device. (Aziz Clean Copy of Claims, Paper 7, 9
claim 41). Wang claims a photo/electroluminescent azole compound and a method 10
of synthesizing it. (Wang Clean Copy of Claims, Paper 8, claims 5, 51). As Aziz 11
claims all elements present in Wang’s claims, Aziz’s claims anticipate Wang’s 12
claims. Conversely, Aziz claims the azole compound in combination with several 13
other elements not included in Wang’s claims. For example, Aziz requires a 14
device comprising an anode, cathode, buffer layer, and luminescent region 15
containing an electron injection and transporting zone and a mixed charge transport 16
layer. Wang’s claims do not expressly or inherently require these additional device 17
features. Therefore Wang’s claims cannot anticipate Aziz’s claims. 18
The two-way test requires that both claimed inventions, when treated as 19
prior art, anticipate or render obvious the other in order for an interference-in-fact 20
to exist. Wang’s claims does not anticipate Aziz’s claims, so our inquiry turns to 21
the question of obviousness. 22
23

10
b. Aziz’s Claimed Invention Combines Known 1
Luminescent/OLED Elements for their Known Purpose 2
3
Anticipation is the epitome of obviousness; as such Aziz renders Wang 4
obvious. See Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 5
1983). Thus, as recognized by Wang, the issue presented by Wang’s Motion is: 6
Specifically, would one of skill in the art have found it obvious to 7
combine the azole compound of the Wang claims with an OLED 8
including an anode and a cathode and to use the azole compound of 9
the Wang claims as an electron injection and transporting material in a 10
luminescent region as claimed in the Aziz claims? 11
12
(Paper 14, 6:16-19). 13
For the following reasons, we hold that Wang has failed to demonstrate by a 14
preponderance of the evidence that Aziz claims patentably distinct subject matter 15
such that there is no interference-in-fact between the parties. 16
Wang contends that, because the claimed azole compound of Wang was 17
novel, one of ordinary skill in the art would “not know of any applications of this 18
compound other than those disclosed in Wang.” (Paper 14, 7:9-11). Wang states 19
that Wang’s specification does not indicate that its claimed azole compound would 20
be used as a charge material. (Id., 7:12-18). Wang further contends that Wang’s 21
specification teaches away from using the azole compound as a charge transport 22
material because Wang uses a conventional electron transport material for the 23
electron transport layer. (Id., 7:19-23). These arguments are misplaced. 24
The question raised by Wang Motion 1 is whether Aziz’s claims are 25
rendered obvious or anticipated in light of Wang’s claimed invention assuming that 26
Wang’s claimed invention is available as §102(g) prior art to Aziz. As such, the 27
test for interference-in-fact focuses solely on the claims; therefore the obviousness 28

11
analysis does not consider information in the specification except for the purpose 1
of providing context and explanation for the claims. Noelle v. Lederman, 355 F.3d 2
1343, 1347 (Fed. Cir. 2004)(Suggestion and reasonable expectation of success 3
must be found in the prior art not in applicant’s disclosure). 4
The differences between Wang and Aziz’s claims are that Wang claims the 5
compound and method of producing the compound, while Aziz claims the 6
compound plus the structure for use in an OLED device. As to the inclusion of 7
Wang’s azole compound in an OLED, Wang claim 2 requires Wang’s azole 8
compound to be “photoluminescent or electroluminescent.” (Paper 8, claim 2). 9
Thus, Wang provides a specific reason to employ its claimed azole compound in 10
photoluminescent and/or electroluminescent devices. Further, as to Aziz’s claimed 11
OLED structure, Dr. Kim acknowledged that OLEDs were known in the art as 12
having anodes and cathodes with charge injection and transport layers for use with 13
luminescent material. (WX 2001, ¶¶ 15-17). Thus, there is reason to believe that 14
Aziz’s invention merely combines Wang’s luminescent azole compound with an 15
art recognized OLED structure for their known luminescent function to achieve a 16
predictable result. 17
Wang contends that “unexpected benefits” are obtained from Aziz’s use of 18
the azole compound in the OLED structure. (Paper 14, 8:1-3). Wang’s secondary 19
consideration contention is discussed below. 20
21
c. Wang Has Failed to Demonstrate Unexpected Results for 22
Aziz’s Claimed OLED 23
24
Wang contends that unexpected benefits are obtained from using the azole 25
compound of Wang as an electron transport material, such as Aziz has done. 26
(Paper 14, 8:1-3). As evidence of unexpected results, Wang relies upon both 27

12
Aziz’s specification and a journal article by Wang et al. which provide test results 1
for an azole compound3 that falls within the claimed genus. (Paper 14, 8:4-9:14). 2
According to Dr. Kim, the tested azole was shown to have outperformed the 3
industry standard, Alq3, and that the improved performance would have been 4
significant to one skilled in the art. (WX 2001, ¶ 31). 5
A presumption of obviousness may be rebutted by a demonstration of 6
unexpected results. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). These are 7
results that demonstrate the claimed invention exhibits a superior property or 8
advantage that a person of ordinary skill in the art would find surprising or 9
unexpected. Id. The party alleging nonobviousness must present factual evidence 10
of unexpected results; mere conclusory statements that the results are surprising are 11
insufficient. Id. The results must also be commensurate in scope with the claimed 12
invention. In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003), see also In re 13
Dill, 604 F.2d 1356, 1361 (CCPA 1979) (certain limitations of the claimed 14
invention were tested and yielded unexpected results, but the claim was drawn to a 15
much broader genus; the court held the results were not commensurate with the 16
scope of the claims). 17
Wang’s demonstration of unexpected results is insufficient as the testing was 18
not commensurate in scope with the claimed invention. Specifically, Aziz’s 19
claim 1 recites an electron injection and transporting zone having an azole 20
compound selected from a large genus of azole compounds of formula (1) 21
reproduced below: 22
23

3 The compound tested was 1-Methyl-2-(anthryl)-imidazo[4,5-f][1,10]-
phenanthroline. (Wang Paper, WX 2004, title and Aziz Spec., WX 2002, 10-15)

13
1
wherein one X represents N and the other X represents CH or 2
N; 3
Y is an atom or a group selected from the group consisting of 4
O, S, and -N(R)-, wherein R is a hydrocarbyl group of from 1 to about 5
30 carbons; 6
R1 and R2 are each a substituent selected from the group 7
consisting of hydrogen, an alkyl group of from 1 to about 25 carbon 8
atoms, an aryl group of about 6 to about 30 carbon atoms, an alkoxy 9
group of from 1 to about 25 carbon atoms, a halogen, and a 10
cyano group; and 11
Ar is an aromatic component. 12
13
(Aziz Clean Copy of Claims, Paper 7). As is apparent from Aziz claim 1, Aziz’s 14
claimed genus of azole compounds is exceedingly large. For example, the azole 15
compound of formula I requires a substituent Ar, which is loosely defined as “an 16
aromatic component.” Aziz’s specification generally defines its aromatic 17
component as follows: 18
Ar is an aromatic component, such as an aryl group having, for 19
example, from about 6 to about 30 carbons. Illustrative examples of 20
aryl group for Ar can be selected from the group consisting of a 21
phenyl, a naphthyl, an anthryl and the like. The aromatic component 22
for Ar may be a heteroaryl group of for example, a pyridyl, and a 23

14
quinolyl, and the like. 1
2
(WE 2002, 8:3-9). 3
Neither Dr. Kim, the Wang paper or Aziz’s specification provides a 4
credible basis to conclude that the single azole compound tested was 5
sufficiently representative of Aziz’s claimed genus of azole compounds for 6
an electron injection and transporting zone. Specifically, Wang fails to 7
provide credible and sufficient evidence to demonstrate that the sole azole 8
compound tested behaves in the same or similar manner to the genus of 9
azole compounds falling within the scope of Aziz’s claims. 10
Wang has failed to meet its burden of demonstrating that they are entitled to 11
a finding of no interference-in-fact as they have not shown that Aziz and Wang are 12
drawn to patentably distinct subject matter. Wang Motion 1 is denied. 13
14
B. Wang Motion 2 to Substitute Counts 15
Wang moves to redefine the count by substituting two new counts, Counts 2 16
and 3, for Count 1. (Paper 15, 2:1-10). Wang states that, upon grant of Motion 2, 17
certain Wang and Aziz claims are to be cancelled. (Id. at 2:11-14).4 18
A party moving to substitute a count has the burden of proving that it is 19
entitled to the relief requested. 37 C.F.R. § 41.121(b). As part of its procedural 20
burden, a party must i) propose a new count, ii) show why the count is patentably 21
distinct from every other count the movant believes should remain, iii) show why 22
the parties’ claims do or do not correspond to the proposed count and iv) show why 23
the movant should be accorded any benefit for the proposed count. (Standing 24

4 Wang Motion 2 contingently requests leave to cancel Wang claims 13, 14, 17, 18,
46, 47, 49 and 50 and Aziz claims 59 and 60. (Paper 14, 3:33 – 4:2).

15
Order, Paper 2, ¶ 208.2). 1
Wang contends that Count 1 should be replaced with new proposed Counts 2 2
and 3 as the present count is directed to Wang claim 5 and Aziz claim 41, two 3
claims which Wang alleges do not interfere-in-fact. (Paper 15, 3:8-11). Wang 4
summarizes its contentions regarding the need for new counts as follows: 5
6
C. Two New Counts 2 and 3 Should Replace Count 1 7
8
As discussed above the claims of Count 1 do not interfere. 9
Hence, Wang and Aziz propose two new counts. Count 2 is defined 10
as claim 5 of Wang and claim 59 of Aziz. Count 3 is defined as claim 11
13 of Wang and claim 41 of Aziz. In Count 2 the two claims 12
identified are both compound claims that have interfering subject 13
matter. In Count 3 the two claims identified are both devices using an 14
azole compound that have interfering subject matter. 15
16
(Paper 15, 8:18-9:2). 17
Wang Motion 2 contends that there is no interference-in-fact for reasons that 18
are discussed above with respect to Wang Motion 1. As we have denied Wang’s 19
request for judgment of no interference-in-fact, we likewise deny Wang Motion 2 20
to substitute counts, as Wang Motion 2 is predicated on no interference-in-fact 21
between Wang claim 5 and Aziz claim 41. 22
Additionally, we deny Wang Motion 2 for failure to comply with the 23
procedural requirements for adding or substituting counts. For example, Wang 24
Motion 2 does not identify its claims that do or do not correspond to the proposed 25
counts or whether Wang/Aziz should be accorded benefit for the proposed counts. 26
Wang Motion 2 to redefine the interfering subject matter by substituting 27
counts is denied. 28
29

16
C. Wang Motion 3 to Undesignate Claims 1
Wang Motion 3 requests that Aziz dependent claims 2, 23 and 24 be 2
designated as not corresponding to Count 1. (Paper 16, 2:1-3). This motion is 3
contingent on the denial of Wang Motion 1 for no interference-in-fact. (Id., 2:6-7). 4
According to Wang, Aziz claims 2, 23 and 24 are patentably distinct from the 5
claims of Wang and therefore do not correspond to the count. (Id., 2:9-14). 6
7
1. Legal Principles 8
A claim corresponds to the count when it is patentably indistinct from the 9
subject matter of the count. In other words, a “claim corresponds to a count if the 10
subject matter of the count, treated as prior art to the claim, would have anticipated 11
or rendered obvious the subject matter of the claim.” 37 C.F.R. § 41.207(b)(2). In 12
concept, claim correspondence analysis is similar to the analysis involved with 13
“one-way” obviousness-type double patenting. However, the count rather than a 14
claim is used as the presumed prior art in evaluating patentable distinctness of the 15
parties’ claims. 16
Wang contends that the Standing Order § 208.3.2 requires that claim 17
correspondence be determined by comparing the parties’ claims. Contrary to 18
Wang’s contention, both the rules and the Standing Order provide that claim 19
correspondence is determined via a count based analysis. A comparison of 20
Standing Order § 208.3.2 and Wang’s contention is provided below:21

17
1
Standing Order § 208.3.2 Wang’s Contention
A motion to have a claim designated
as not corresponding to a count must
show why the subject matter of the
count, if treated as prior art, would not
have anticipated or rendered obvious the
subject matter of the claim. Bd.R.
207(b)(2).
A movant may not seek to have all of
a party's claims designated as not
corresponding to the count. Instead,
such relief should be sought by way of a
motion for judgment of no interference-
in-fact.
A party may move to designate
claims as not corresponding to a count
when the designated claims are not
anticipated nor rendered obvious by
from the claims corresponding to the
count. SO ¶ 208.3.2. So in the present
case, it must be shown that claims 2,
23, and 24 of Aziz are patentably
distinct from the claims of Wang.
2
As shown by the above comparison, the Standing Order requires that claim 3
correspondence is a count based analysis as opposed to Wang’s alleged claim 4
versus claim analysis. Further, Wang’s mere statement that an Aziz v. Wang claim 5
based analysis should be made is insufficient to show that an exception be made to 6
the rules and Standing Order. We hold that, consistent with the rules and Standing 7
Order, the proper comparison for claim correspondence is whether the count, taken 8
as prior art, anticipates or renders obvious the subject matter of a claim. 9
10
2. Wang Fails to Meet its Burden to Demonstrate that Aziz’s 11
Claims 2, 23 and 24 are Unobvious over Count 1 12
13
Wang, as the moving party, has the burden of establishing that it is entitled 14
to the relief requested. 37 C.F.R. § 41.208. As part of its burden, Wang contends 15
that Aziz claims 2, 23 and 24 are unobvious over any claims of Wang. (Paper 16, 16
2:17-18). In particular, Wang contends that Aziz claims 2, 23 and 24 require the 17

18
presence of substituents that are not present in any of Wang’s claims. (Id., 2:15 – 1
3:15). Wang states that the additional substituents would not have been obvious 2
“because the addition of substituents to a chemical compound is unpredictable.” 3
(Id., 2:22-23, 3:4-6 and 3:10-13). 4
Count 1 is defined as the union of Wang claim 5 and Aziz claim 41. Aziz 5
claim 41 encompasses the subject matter of Aziz claims 2, 23 and 24. 6
Accordingly, the question before us is whether it would have been obvious to one 7
of ordinary skill in the art to select the substituents in question from Aziz claim 41. 8
It was Wang’s burden to provide evidence relating to the scope and content 9
of prior art so that we may determine whether the selection of the specifically 10
claimed substituents would have been obvious Graham, 383 U.S. at 17-18, see 11
also Pechiney, 73 U.S.P.Q.2d at 1573 (Bd. Pat. App. & Int. 2004). Specifically, 12
Wang must show that Aziz claims 2, 23 and 24 are nonobvious in light of Aziz 13
claim 41 and the entire scope of prior art pertaining to luminescent compounds 14
generally and/or OLED structures. Wang however, has not directed our attention 15
to evidence on the scope and content of the prior art. For example, Dr. Kim’s 16
testimony does not discuss any prior art. Wang has also failed to present sufficient 17
and credible evidence that a person of ordinary skill in the art would not have 18
found it obvious, in light of the structure of Aziz claim 41, to select the appropriate 19
substituents. Accordingly, we hold that Wang has failed to meet its burden of 20
proof with respect to Wang Motion 3 and demonstrate that the count does not 21
anticipate or render obvious Aziz claims 2, 23 and 24. 22
Additionally, Wang fails to meet its burden of proof even if Wang were 23
correct and claim correspondence allowed for a comparison between Wang’s 24
claims and Aziz’s claims. Specifically, Wang states that Aziz’s claims recite 25
substituents that are not present on Wang’s claimed azole compounds. Wang relies 26

19
upon the testimony of Dr. Kim to establish that the “addition of substituents to a 1
chemical compound is unpredictable.” (WX 2001, ¶ 35). Dr. Kim however, does 2
not explain the underlying basis for this broad proposition and we do not credit his 3
conclusion for the reasons provided below. Rohm & Haas Co. v. Brotech Corp., 4
127 F.3d 1089, 1092 (Fed. Cir. 1997)(Nothing in the rules or in jurisprudence 5
requires trier of fact to credit unsupported or conclusory assertions). 6
The addition of a substituent to a chemical compound can, depending on the 7
specific chemical field in question, be unpredictable. The question is whether or 8
not the addition of the particularly claimed substituents to an electroluminescent 9
azole compound was unpredictable in the OLED art. As discussed above, Wang 10
has not provided a sufficient explanation as to the scope and content of the prior 11
art. Lacking such an explanation of the art in question we decline to credit Dr. 12
Kim’s conclusory testimony that the addition of substituents to a chemical 13
compound is unpredictable. 14
Additionally, Aziz’s own claims allow for a substituent identified as Ar, 15
which is loosely defined as “an aromatic component.” See, e.g., Aziz claim 41. 16
Such a general definition would, on its face, allow for the presence of an aromatic 17
ring structure having an untold number of substituents added to it. We find it 18
difficult to credit Dr. Kim’s testimony that the addition of substituents to a 19
compound was unpredictable given that Aziz’s claimed azole compound allows for 20
an undefined number of additional substituents. While it may be possible to 21
reconcile the apparent inconsistency between Dr. Kim’s testimony and Aziz’s 22
claimed compound structure, it was Wang’s burden, not the Board’s to reconcile 23
the inconsistency. 24
We deny Wang Motion 3. 25

20
IV. Conclusion 1
Wang Motions 1-3 have been denied. An interference-in-fact exists between 2
Wang and Aziz’s claimed subject matter. The parties have agreed that Wang has 3
priority over Aziz for the subject matter of Count 1. (Joint Priority Statement, 4
Paper 13). Concurrent with this decision the Board enters judgment on priority of 5
invention for Count 1 against Aziz. 6
7
V. Order 8
Based upon the evidence identified in the record, it is: 9
ORDERED that Wang Motion 1, which requests judgment of no 10
interference-in-fact, is denied. 11
FURTHER ORDERED that Wang Motion 2, which seeks to 12
redefine the interference by substituting new proposed Counts 2 and 3, is denied. 13
FURTHER ORDERED that Wang Motion 3, which seeks to 14
undesignate Aziz claims 2, 23 and 24, is denied. 15
16
17
cc (via electronic filing): 18
Counsel for Wang and Aziz: 19
Song K. Jung, Esq. 20
Matthew T. Bailey, Esq. 21
McKENNA LONG & ALDRIDGE LLP 22
1900 K Street, N.W. 23
Washington, D.C. 20006 24
Tel: 202-496-7500 25
Email: mlaip@mckennalong.com 26
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