Ex parte Aihara et al.

Board of Patent Appeals and Interferences

Apr 29, 1998

07899361 (B.P.A.I. Apr. 29, 1998)

Application for patent filed June 16, 1992. According1
to appellants, the application is a continuation-in-part of
Application 07/863,316, filed April 1, 1992, now abandoned,
which is a continuation of Application 07/736,596, filed July
26, 1991, now abandoned.
-1-
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journal and (2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte YOSHIHIKO AIHARA, TADAAKI ISOZAKI,
NORIKO YAMAKAWA and ICHIRO KAWAMURA
________________
Appeal No. 95-4830
Application 07/899,3611
________________
ON BRIEF
________________
Before DOWNEY, WARREN and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
Appeal No. 95-4830
Application 07/899,361
-2-
claims 1 and 2, which are all of the claims in the
application. Claim 1 is illustrative and is appended to this
decision.
THE REFERENCES
Reference relied upon by the examiner
Suzuki et al. (Suzuki) 4,973,738 Nov. 27, 1990
Additional reference relied upon by the board
Hopf et al. (Hopf) 5,075,032 Dec. 24, 1991
(parent filed May 13,
1987)
THE REJECTION
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Suzuki.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejection is not well
founded. Accordingly, this rejection will be reversed. Under
the provisions of 37 CFR § 1.196(b), we will introduce a new
ground of rejection of claims 1 and 2.
Suzuki discloses (col. 2, lines 34, 44-47 and 67; col. 7,
lines 35-43) a liquid crystal compound which differs from that
Appeal No. 95-4830
Application 07/899,361
In the examiner’s answer, only page 7 is numbered. The2
numbers referred to herein of the other pages are those which
should have been assigned to those pages.
-3-
recited in appellants’ claims 1 and 2 only in that in the
terminal ester group shown at the left in each compound, the
positions of the carbonyl and oxygen in Suzuki’s ester are
reversed relative to the structure in appellants’ claim 1.
That is, Suzuki discloses a terminal alkyloxycarbonyl group,
whereas the compound recited in appellants’ claim 1 has a
terminal alkanoyloxy group.
The examiner argues that in the original parent case,
appellants claimed both compounds having R-COO- and R-OCO-
terminal ester groups, and therefore presented them as
equivalents (answer, page 5). Also, the examiner argues,2
appellants’ specification teaches that both terminal ester
groups are capable of performing the same tasks. See id. The
examiner states that she cannot understand how the compounds
now can differ just because only one of them now is claimed.
See id.
The deficiency in the examiner’s argument is that she
relies only upon appellants’ disclosure for the functional
Appeal No. 95-4830
Application 07/899,361
-4-
equivalence of the R-COO- and R-OCO- terminal ester groups.
Actual functional equivalence is not enough to justify refusal
of a patent to a compound having one of the terminal ester
groups when a compound having the other of the terminal ester
groups is disclosed in the prior art. See In re Ruff, 256
F.2d 590, 599, 118 USPQ 340, 348 (CCPA 1958). The functional
equivalence must be disclosed in, or have been obvious to one
of ordinary skill in the art in view of, the prior art. See
id. Appellants’ disclosure “may not be used against them as
prior art absent some admission that matter disclosed in the
specification is in the prior art.” In re Wertheim, 541 F.2d
257, 269, 191 USPQ 90, 102 (CCPA 1976). The examiner has not
shown, and we do not independently find, where appellants have
made such an admission.
The examiner argues that Suzuki teaches tri-stable states
(answer, page 7). Suzuki shows tri-stable phases (Fig. 7,
8D). The examiner’s argument, however, is deficient because
the examiner has not explained why Suzuki would have fairly
suggested, to one of ordinary skill in the art, compounds
having an R-COO- terminal ester group.
Appeal No. 95-4830
Application 07/899,361
-5-
For the above reasons, we conclude that the examiner has
not carried her burden of establishing a prima facie case of
obviousness of appellants’ claimed invention. The rejection
of appellants’ claims 1 and 2 under 35 U.S.C. § 103 over
Suzuki therefore is reversed.
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 1 and 2 are rejected under 35 U.S.C. § 103 over
Suzuki in view of Hopf.
Suzuki discloses a liquid crystal compound (col. 7, lines
37-43) which differs from that recited in appellants’ claim 1
only in that the terminal ester radical shown at the left in
Suzuki’s compound is alkoxycarbonyl, whereas that in
appellants’ claim 1 is alkanoyloxy. However, Hopf discloses a
liquid crystal compound of the formula R -Q -A-(Q ) -R , wherein1 1 2 2q
R can be, inter alia, an alkanoyloxy group (R-COO-) or an1
alkoxycarbonyl group (R-OCO-) having 1 to 15 carbon atoms, Q1
can be, inter alia, A -Z where A is 1,4-phenylene and Z iso o o o
Appeal No. 95-4830
Application 07/899,361
-6-
-COO- or -OCO-, A can be, inter alia, tetralin or 1,2,3,4-
tetrahydrophenanthrene, q can be either zero or 1, and R can2
be, inter alia, an alkyl group having 1 to 15 carbon atoms,
wherein one or more CH groups are replaced by a group from a2
list including -CHhalogen-, -O-CO- and -CO-O- (col. 1, line 6
- col. 3, line 38). In our view, such a Hopf compound is
sufficiently similar to that of Suzuki that one of ordinary
skill in the art would have expected Hopf’s -O-CO- and -CO-O-
terminal esters to be interchangeable not only in Hopf’s
compound, but also in that of Suzuki. Thus, one of ordinary
skill in the art would have been motivated to use either of
these terminal esters in the Suzuki liquid crystal compound
and would have had a reasonable expectation of success in
doing so. Accordingly, use of a terminal alkanoyloxy group
instead of a terminal alkoxycarbonyl group in Suzuki’s
compound would have been prima facie obvious to one of
ordinary skill in the art in view of Hopf. See In re Vaeck,
947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In
re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed.
Cir. 1988); In re Longi, 759 F.2d 887, 892-93, 225 USPQ 645,
Appeal No. 95-4830
Application 07/899,361
-7-
648 (Fed. Cir. 1985).
Regarding appellants’ claim 2, Suzuki teaches that X can
be either -COO- or -OCO- (col. 2, lines 44-48).
Appellants argue that Table 2 of their specification
shows that appellants’ claimed invention produces a surprising
improvement in a significant property, i.e., response time
(brief, page 13). Appellants state that since they claim both
configurations of the internal ester, the important issue is
whether the orientation of the terminal ester recited in their
claim 1 unexpectedly improves response time (brief, pages 11
and 13).
Appellants argue that appellants’ Table 2 shows that in
one of six tests, appellants’ compound had a response time
which was only 80% as fast as that of Suzuki, whereas in the
other five tests, the response times of appellants’
compositions were faster by factors of 1.6, 1.7, 3.4, 4.3 and
9.9 (brief, page 12). For the following reasons, we do not
find this argument to be convincing.
First, it is not enough for appellant to show that the
results for appellant’s invention and the comparative examples
differ. The difference must be shown to be an unexpected
Appeal No. 95-4830
Application 07/899,361
Appellants’ specification includes numerous amendments3
which were entered from an amendment filed on June 9, 1993
(paper no. 6). These amendments were canceled by an amendment
filed on January 24, 1994 (paper no. 10). The examiner wrote
“please enter” and her initials in the margin on the first
page of the latter amendment, but this amendment has not been
entered clerically. In this opinion, we refer to appellants’
-8-
difference. See In re Freeman, 474 F.2d 1318, 1324, 177 USPQ
139, 143 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080, 173
USPQ 14, 16 (CCPA 1972). Appellants merely provide attorney
argument that their Table 2 shows unexpected results, and
arguments of counsel cannot take the place of evidence. See
In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed.
Cir. 1984); In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 256
(CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ
227, 230 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405, 181
USPQ 641, 646 (CCPA 1974). In their specification (page 39,
lines 5-6), appellants state that of the compounds whose test
results are shown in their Table 2, i.e., the compounds in
Examples 6 and 7, which are compounds of appellants’
invention, and the compounds of Examples 8 and 9, which are
within the scope of Suzuki, “the compound in Example 6 is the
most preferable.” This statement does not indicate that the3
Appeal No. 95-4830
Application 07/899,361
specification as it appeared prior to the June 9, 1993
amendment.
-9-
difference between this compound and those of Suzuki is an
unexpected difference but, rather, indicates that the
difference is merely an expected difference of degree.
Second, the evidence presented in the declaration is not
commensurate in scope with the claims. See In re Grasselli,
713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980).
Appellants’ claim 1 encompasses R having 5-18 carbon atoms1
and R having 6-16 carbon atoms, and Suzuki discloses an R2 1
having 1-20 carbon atoms and an R having 4-14 carbon atoms2
(col. 2, lines 19-44). However, in appellants’ Table 2, only
one R , having 8 carbon atoms, and one R , having 6 carbon1 2
atoms, are used. We find in the evidence of record no
reasonable basis for concluding that the great number of
materials encompassed by appellant’s claims would behave as a
class in the same manner as the particular materials tested.
See In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA
1972); In re Susi, 440 F.2d 442, 445-46, 169 USPQ 423, 426
Appeal No. 95-4830
Application 07/899,361
-10-
(CCPA 1971).
Appellants argue that the declaration of Okabe filed on
January 24, 1994 (paper no. 8) shows that the compounds of
appellants’ claimed invention, but not those of Suzuki, show a
tristable S*(3) phase in both heating and cooling cycles
(brief, pages 13-15). For the following reasons, we are not
persuaded by this argument.
First, the declaration shows a difference between
appellants’ claimed compounds and those of Suzuki, but
appellants have provided no evidence that such a difference
would have been unexpected by one of ordinary skill in the
art. See Freeman, 474 F.2d at 1324, 177 USPQ at 143; Klosak,
455 F.2d at 1080, 173 USPQ at 16. Appellants merely provide
attorney argument that an unexpected result is produced, and
such arguments of counsel cannot take the place of evidence.
See De Blauwe, 736 F.2d at 705, 222 USPQ at 196; Payne, 606
F.2d at 315, 203 USPQ at 256; Greenfield, 571 F.2d at 1189,
197 USPQ at 230; Pearson, 494 F.2d at 1405, 181 USPQ at 646.
Second, in the comparison between Experiment 1 and
Experiment 3, both the internal and external esters are
Appeal No. 95-4830
Application 07/899,361
-11-
reversed. Thus, the cause-and-effect relationship which
appellants desire to show between terminal ester configuration
and existence of a tristable S*(3) phase upon heating is lost
in multiple unfixed
variables. See In re Heyna, 360 F.2d 222, 228, 149 USPQ 692,
697
(CCPA 1966); In re Dunn, 349 F.2d 433, 439, 146 USPQ 479, 483
(CCPA 1965). Also, since Suzuki discloses both -COO- and -
OCO- internal ester configurations (col. 2, lines 44-47), the
declaration does not provide a comparison with the closest
prior art. See In re Baxter Travenol Labs., 952 F.2d 388,
392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); De Blauwe, 736
F.2d at 705, 222 USPQ at 196.
Third, although the comparison of Suzuki’s compound in
Experiment 2 and appellants’ compound in Experiment 4 shows
that appellants’ claimed compound, but not Suzuki’s compound,
has a tristable S*(3) phase upon heating, appellants’
specification (pages 29-31) shows that a Suzuki compound
having the same terminal ester as that in Experiment 2, but
having an internal ester which is the reverse of that in this
Appeal No. 95-4830
Application 07/899,361
-12-
experiment, has a tristable S*(3) phase upon heating. Thus,
the evidence of record taken as a whole does not show that a
compound within the scope of Suzuki, which has an external
ester which is the reverse of that of the compound in
Experiment 4 of the declaration, has no tristable S*(3) phase
upon heating.
Fourth, the comparisons in the declaration are not
commensurate in scope with appellants’ claims. Only compounds
with an R having 8 or 10 carbon atoms and an R having 61 2
carbon atoms are used in the comparisons, whereas appellants’
claims encompass R having 5-18 carbon atoms and R having 6-161 2
carbon atoms, and Suzuki discloses R having 1-20 carbon atoms1
and R having 4-14 carbon atoms (col. 2, lines 34-44). See2
Grasselli, 713 F.2d at 743, 218 USPQ at 778; Clemens, 622 F.2d
at 1035, 206 USPQ at 296. Appellants provide no explanation
as to why the great number of compounds encompassed by
appellant’s claims would behave as a class in the same manner
as the particular compounds tested. See Lindner, 457 F.2d at
508, 173 USPQ at 358; Susi, 440 F.2d at 445-46, 169 USPQ at
Appeal No. 95-4830
Application 07/899,361
-13-
426.
Appellants argue that In re Carabateas, 357 F.2d 998, 149
USPQ 44 (CCPA 1966), indicates that a claimed reverse ester
can be found nonobvious (brief, page 7). Based on the
particular facts in Carabateas, the court found that the
evidence was sufficient to show unexpected results. See
Carabateas, 357 F.2d at 1000-01, 149 USPQ at 46. In the
present case, however, as discussed above, the evidence is
insufficient for showing unexpected results.
For the above reasons, we conclude, based on the
preponderance of the evidence and argument in the record, that
appellants’ claimed invention would have been obvious to one
of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103.
DECISION
The rejection of claims 1 and 2 under 35 U.S.C. § 103 as
being unpatentable over Suzuki is reversed. A new ground of
rejection has been entered under the provisions of 37 CFR
§ 1.196(b).
Appeal No. 95-4830
Application 07/899,361
-14-
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
Appeal No. 95-4830
Application 07/899,361
-15-
37 CFR § 1.196(b)
MARY F. DOWNEY )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-4830
Application 07/899,361
-16-
Cushman, Darby and Cushman
Ninth Floor
1100 New York Avenue, N.W.
Washington, DC 20005-3918
Appeal No. 95-4830
Application 07/899,361
-17-
APPENDIX