Ex Parte Bazan et al

Patent Trials and Appeals Board

Mar 22, 2019

14087702 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/087,702 11/22/2013
22462 7590 03/26/2019
GA TES & COOPER LLP (General)
HOW ARD HUGHES CENTER
6060 CENTER DRIVE
SUITE 830
LOS ANGELES, CA 90045
FIRST NAMED INVENTOR
Guillermo C. Bazan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
30794.512-US-Dl 8924
EXAMINER
HILL, NICHOLAS E
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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-us@gates-cooper.com
gates-cooper@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUILLERMO C. BAZAN, LEI YING, BEN B.Y. HSU,
WEN WEN, HSIN-RONG TSENG, and GREGORY C. WELCH 1
Appeal 2018-003768
Application 14/087,702
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 8, 12, 13, 17, and 18. We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.
BACKGROUND
The subject matter on appeal relates to methods of preparing
conjugated polymers. E.g., Spec. ,r 2; Claim 1. Claim 1 is reproduced
below from page 11 (Claims Appendix) of the Appeal Brief:
1 The Appellant is the Applicant, The Regents of the University of
California, and The University of California is identified as the real party in
interest. See App. Br. 2.
Appeal 2018-003768
Application 14/087,702
1. A method of preparing a regioregular donor-acceptor copolymer,
compnsmg:
regioselectively preparing a monomer, wherein the monomer
comprises a donor moiety having a first electron affinity in
combination with an acceptor moiety having a second electron
affinity; and
reacting the monomer to produce a donor-acceptor copolymer
that comprises a regioregular conjugated main chain section,
wherein the combination of the donor moiety having the first
electron affinity and the acceptor moiety having the second
electron affinity is selected so as to induce charge transfer
between the donor moiety and the acceptor moiety in the donor-
acceptor copolymer, wherein:
the charge carrier mobility of the regioregular donor-acceptor
copolymer is greater than the charge carrier mobility of a
regiorandom donor-acceptor copolymer of similar composition.
ANALYSIS
Claims 1, 8, 12, 13, 17, and 18 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Berson (Solenn Berson et al., Effect of
carbonitrile and hexyloxy substituents on alternated copolymer of
polythiophene-Performances in photovoltaic cells, 94 Solar Energy
Materials & Solar Cells 699 (2010)).
All claims on appeal, either directly or through claim dependency,
concern methods of preparing "a regioregular donor-acceptor copolymer"
and include a step of "reacting" a monomer "to produce" a copolymer "that
comprises a regioregular conjugated main chain section" ( emphasis added).
The issue before us is whether the method of Berson yields a copolymer that
comprises a regioregular conjugated main chain section. The issue hinges
on interpretation of the term "regioregular." During prosecution, "the PTO
must give claims their broadest reasonable construction consistent with the
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Application 14/087,702
specification." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007).
In the Final Action, the Examiner found that "[ t ]he polymer of Berson
is regioregular because the regio-relationship between the nitrile and hexyl
substituents on the bithiophene monomer is regular/consistent along the
chain of the polymer." Final Act. 3 (emphasis added). Thus, the Examiner
apparently interpreted the term "regioregular" as requiring a
regular/consistent regio-relationship of substituents along the polymer chain.
See id.
In the Appeal Brief, the Appellant persuasively argues that the regio-
relationship between Berson's nitrile and hexyl substituents is random rather
than "regular/consistent along the chain of the polymer." See App. Br. 4--8.
In the Answer, the Examiner repeats the portion of the Final Action
quoted above, but adds the following emphasized language: "The polymer of
Berson is regioregular because the regio-relationship between the nitrile and
hexyl substituents on the bithiophene monomer is regular/consistent along
the chain of the polymer because each repeat unit is derived from the same
isomer of the monomer." Ans. 4 ( emphasis added), 8 ("[T]he term
'regioregular' refers only to whether a single isomer of a monomer is used to
prepare a polymer."). The Examiner does not persuasively dispute the
Appellant's assertion that the regio-relationship between the nitrile and
hexyl substituents of Berson is random. Instead, the Examiner for the first
time appears to broadly construe the term "regioregular" to require only that
"each repeat unit is derived from the same isomer of the monomer," and the
Examiner determines that, because each repeat unit in Berson's polymer is
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Application 14/087,702
derived from the same isomer of Berson's monomer, Berson's polymer
constitutes a regioregular polymer. See id. at 6-10.
The record as a whole does not support the Examiner's interpretation
and application of the term "regioregular" as that term is used in the claims
and the Specification. The primary support cited by the Examiner for the
Examiner's applied definition of "regioregular" is a "Wiktionary" definition.
See Ans. 6 n.1. However, as the Appellant points out, ,r 15 of the
Specification states: "The term 'regioregular' ... in relation to a polymer or
a section of a polymer means the non-random orientation or arrangement of
the pyridal-N along the polymer backbone." Spec. ,r 15 (emphasis added).
Paragraph 15 is consistent with the Examiner's original interpretation of
"regioregular" as requiring a regular/consistent regio-relationship of
substituents along the polymer chain. See Final Act. 3. The Examiner
appears to acknowledge that ,r 15 of the Specification may be inconsistent
with the interpretation of "regioregular" applied by the Examiner in the
Answer, but the Examiner finds that ,r 15 concerns only "the regioregular
features of pyridine-containing polymers." See Ans. 10. The Examiner
determines that, because claim 1 is not limited to pyridine-containing
polymers, the apparent definition in ,r 15 does not apply to claim 1. Id.
We are not persuaded by that rationale. Paragraph 8 of the
Specification states that, "[i]n some embodiments, the regioregular polymer
includes a regioregular conjugated main chain section having a repeat unit
that includes a pyridine." Spec. ,r 8. Paragraph 9 describes embodiments
including "the pyridine and/ or the dithiophene." Id. ,r 9. Paragraph 15 goes
on to describe the term "regioregular" in terms of the embodiment described
by ,r 8, i.e., an embodiment including a pyridine. Id. ,r 15. However, we
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Application 14/087,702
discern no persuasive reason to attribute a broader meaning to the term
"regioregular" depending on whether a pyridine or, e.g., a dithiophene is
used.
We also observe that Berson explicitly states that Berson's method
"does not allow controlling the regioregularity of the coupling between
repeating units," and that Berson's "polymer can be considered as
regiorandom." Berson at 704 (emphases added). The Appellant's
Specification distinguishes the polymers of its invention from "polymer
systems having a regiorandom origination" and goes on to describe
polymers with "enhanced regioregularity." Spec. ,r,r 4, 5. The Examiner
does not persuasively show that an interpretation of the claims that
encompasses a method that produces a polymer expressly described as
"regiorandom," as opposed to "regioregular," is reasonable or consistent
with the Specification. Cf SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) ("Where the
specification makes clear that the invention does not include a particular
feature, that feature is deemed to be outside the reach of the claims of the
patent, even though the language of the claims, read without reference to the
specification, might be considered broad enough to encompass the feature in
question.").
Additionally, the record includes an article authored by two of the
named inventors of the application involved in this appeal. See Lei Ying,
Pei Huang, & Guillermo C. Bazan, Regioregular narrow-bandgap-
conjugated polymers for plastic electronics, Nature Communications p. 2
box 1 (2017) (filed with Reply Brief). The article includes the following:
"Regioregular (RR}-conjugated polymers follow a strict orientation of
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Application 14/087,702
alternating asymmetric repeating units throughout the polymer backbones; in
other words, they are described by translational symmetry along the
backbone vector." (emphasis added). Ying at 2 (box 1).2 Although the
article post-dates the application on appeal, the use of the word
"regioregular" in the article appears to be consistent with the use of the term
in ,r 15 of the Specification.
Finally, we observe that it is not clear that the Wiktionary definition
("polymer in which each repeat unit is derived from the same isomer of the
monomer," see Ans. 6) relied on by the Examiner is inconsistent with the
use of the term "regioregular" in the Specification and the references
described above. In particular, the term "each repeat unit" appears to refer
to the repeat units of the polymer, and it is not adequately clear that the
Wiktionary definition would encompass polymers in which the regio-
relationship of substituents is irregular and/or inconsistent along the chain of
the polymer.
On this record, we are not persuaded that the Examiner's broad
interpretation and application of the term "regioregular" is consistent with
the Specification and other evidence of record. Because the Examiner has
not adequately established that Berson teaches a method that falls within the
scope of the claims, as properly construed, we must reverse the rejection.
2 Accord Jeffrey K. Politis et al., Synthesis and Characterization of
Regiorandom and Regioregular Poly(3-octylfuran), 123 J. Am. Chem. Soc.
2537 (2001) ("Recently, much higher conductivities have been claimed with
doped, regioregular thiophenes ... whose side chains have a translational
symmetry down the polymer backbone." (emphasis added)).
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Application 14/087,702
CONCLUSION
We REVERSE the Examiner's rejections of claims 1, 8, 12, 13, 17,
and 18.
REVERSED
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