Ex Parte Buchholz et al

Patent Trial and Appeal Board

Feb 24, 2016

12739655 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121739,655 10/29/2010
123223 7590 02/26/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Herwig Buchholz
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.
074025-0184-US (287003) 1806
EXAMINER
CLARK, GREGORY D
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERWIG BUCHHOLZ, SUSANNE HEUN,
AURELIE LUDEMANN, and REMI MANOUK ANEMIAN
Appeal2014-006288
Application 12/739,655
Technology Center 1700
Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
BRIAND. RANGE Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-006288
Application 12/739,655
SUMMARY
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
33. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF CASE
Appellants 1 describe the present invention as relating to "an opto-
electronic device comprising a layer comprising a polymer containing
fluorine-containing groups, where a cohesive fluorine-fluorine interaction
exists at least between some of the fluorine-containing groups of the layer."
Appeal Br. 6. Claims 1-33 are pending on appeal. Claim 1 is the only
independent claim and is reproduced below:
1. Opto-electronic device comprising at least one layer
comprising a polymer containing 1 to 50% of fluorine-containing
groups, and at least a further structural unit selected from:
a) fluorene derivatives, indenofluorene derivatives,
spirobifluorene derivatives, phenanthrene derivatives or
dihydrophenanthrene derivatives;
b) substituted or unsubstituted triarylamines, benzidines,
tetraarylene-para-phenylenediamines, phenothiazines,
phenoxazines, dihydrophenazines, thianthrenes, dibenzo-
p-dioxins, phenoxathiynes, carbazoles, azulenes,
thiophenes, pyrroles or furans; and/or
c) substituted or unsubstituted pyridines, pyrimidines,
pyridazines, pyrazines, pyrenes, perylenes, anthracenes,
benzanthracenes, oxa-diazoles, quinolines, quinoxalines,
phenazines, benzimidazoles, ketones, phosphine oxides,
sulfoxides or triazines;
where a cohesive fluorine-fluorine interaction exists at least
between some of the fluorine-containing groups of the layer.
1 According to the Appellants, the real party in interest is Merck Patent
GmbH. Appeal Br. 2.
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Application 12/739,655
REFERENCES
The Examiner relied upon the prior art below when rejecting the
claims on appeal:
Li
Naito
Matsuura et al.
(hereinafter "Matsurra")
Robeson et al.
(hereinafter "Robeson")
Ito et al.
(hereinafter "Ito")
Becker et al.
(hereinafter "Becker")
US 6,399,224 Bl June 4, 2002
US 2002/0106531 Al Aug. 8, 2002
US 2003/0137239 Al July 24, 2003
US 2004/0056255 Al Mar. 25, 2004
US 2006/0006797 Al Jan. 12, 2006
US 2007/0265473 Al Nov. 15, 2007
REJECTIONS
The Examiner made the following rejections:
Rejection 1. The Examiner rejected claims 1-11, 13-19, 21-24, and
30-332 under 35 U.S.C. § 103(a) as obvious over Naito in view of Li.
Rejection 2. The Examiner rejected claim 12 under 35 U.S.C.
§ 103(a) as obvious over Naito in view of Li and Ito.
Rejection 3. The Examiner rejected claims 17 and 20 under 35 U.S.C.
§ 103(a) as obvious over Naito in view of Matsuura.
Rejection 4. The Examiner rejected claims 25 and 26 under 35 U.S.C.
§ 103(a) as obvious over Naito in view of Robeson.
2 The Final Rejection inadvertently did not list claim 33 when summarizing
the first rejection at paragraph 6. Claim 33, however, is addressed with
paragraph 7 with particular reference to claim 33 at page 5. It is clear that
the Examiner treated claim 3 3 as part of the group of claims addressed by
the Examiner's first rejection. The Examiner's error was thus harmless. We
likewise address claim 33 as a part of the Examiner's first rejection.
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Application 12/739,655
Rejection 5. The Examiner rejected claims 27 and 28 under 35 U.S.C.
§ 103(a) as obvious over Naito in view of Li and Becker.
Rejection 6. The Examiner rejected claim 29 under 35 U.S.C.
§ 103(a) as obvious over Naito in view of Li, Becker, and Ito.
ANALYSIS
Appellants' arguments with respect to each of the Examiner's
rejections are discussed below.
Rejection 1. Appellants do not independently argue this rejection as it
applies to claims 2-11, 13-19, 21-24, or 30-33. We therefore limit our
discussion to one claim, i.e., claim 1. Claims 2-11, 13-19, 21-24, and 30-
33 stand or fall with that claim with respect to this rejection. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
For rejection 1, the Examiner finds that Naito teaches an organic
electroluminescent device making use of a fluorinated polyfluorene material,
finds that Li teaches the use of copolymers, and concludes that it would be
obvious to combine Naito's material with Li's copolymers in order to
improve electron transporting. Final Act. 4-5. We agree.
In particular, Naito teaches an organic electroluminescent device that
could be used in displays. Naito ,-i 5. Naito explains that organic molecules
having fluorine groups are particularly beneficial in this context. Id. ,-i 20.
For example, Naito explains:
[W]hen a carbon-fluorine bond is introduced to the polymer
constituting an-electron conjugated system, the excited singlet state
is relatively more stabilized than the excited triplet state, and therefore
the difference L1 becomes small. . . . Therefore, when such host
molecule is used in combination with a luminescent dye molecule
whose energy levels are highly degenerated, the efficiency of energy
transfer from the host molecule to the luminescent dye molecule is
improved.
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Application 12/739,655
Id.
Naito depicts various host molecules. The compound of formula H9
as it appears following paragraph 30 of Naito is reproduced below:
H9 is a polymer chain including two C4F 9 groups. H9 is the polymer
discussed in Example 1 of Naito. Id. iJ 48.
The Examiner admits that Naito does not mention copolymers and
relies on Li for this teaching. Final Act. 4. Li is entitled "CONJUGATED
POLYMERS WITH TUNABLE CHARGE INJECTION ABILITY." Li
explains that it can be used for "luminescent light-emission, such as a light-
emitting device (LED) for active flat-panel display applications ... and/or
photovoltaic devices." 5 :7-12. Li teaches the use of copolymers with
"strong luminescent properties and balanced charge transporting/injection
properties .... " Id. at abstract. Li explains various benefits of copolymers.
For example, Li explains that"[ c ]opolymers have been considered as an
alternative approach to modify the final polymer properties, such as
mechanical strength, and to provide a good balance between rigid strength
and flexible toughness of a polymer." Id. at 2:49-52. Li also explains that
co-polymerization allows tuning of the conjugated polymer "to provide a
strong electron affinity and/or strong electron rich property, and preferably
with a balanced electron and hole injection/transporting ability." Id. at 8:64-
9:5. Li teaches use of, for example, a pyridine, quinolone, fluorine, and
substituted fluorine as monomers. Id. at 5:34-50.
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Application 12/739,655
Appellants present four arguments as to why the Examiner's rejection
of claim 1 in view of Naito and Li is improper. First, Appellants argue that
neither Naito nor Li teach a "cohesive fluorine-fluorine interaction" as
required by claim 1 and that, as a pure legal matter, this property cannot be
inherently disclosed because the rejection is based on a combination of
references. Appeal Br. 8-9.
We disagree with Appellants' legal proposition. The Federal Circuit
has stated, "the inherency doctrine may apply to an otherwise obvious claim
as well." Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1294 n. l (Fed. Cir.
2013). Past courts have found inherent disclosures of prior art combinations.
See, e.g., Application of Paul, 252 F.2d 306, 309 (CCPA 1958) (affirming
rejection where claimed "desirable result is inherent in the obvious
combination of the references"). Appellants' cited case law merely found no
inherent disclosure based on the record before it. In re Rijckaert, 9 F.3d
1531, 1534 (Fed. Cir. 1993). The In re Rijckaert court would not have
needed to assess the factual record if inherency was per se impossible in the
context of obviousness.
Second, Appellants argue that the fluorine-fluorine interaction is not
inherent in the cited art because it is not necessarily present. Appeal Br. 9-
10. The Examiner, however, finds that the combination ofNaito's Formula
H9 and the copolymer of Li includes polymer strands comprising a "fluorine
containing group." Ans. 18. The Examiner also explains why this
combination "would be fully expected to exhibit the cohesive fluorine-
fluorine interaction .... " Id. The Examiner notes that the Specification
explains that the cohesive fluorine-fluorine interaction involves a type of
physical crosslinking resulting in a "'molecular weight increase' without a
physical reaction taking place .... " Id. Thus, the Examiner finds that
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Application 12/739,655
cohesive fluorine-fluorine interaction is a natural phenomena that would
occur with the combination of Naito and Li. We agree that a preponderance
of the evidence supports this finding.
Indeed, the Specification teaches "[p ]referred recurring units in the
polymer" including, for example, the unit reproduced below:
Spec. 16:6-25. This illustration depicts a polymer chain with two groups
designated "Rf' where Rf "denotes a fluorinated radical." Id. at 17 :25-28.
Because the invention, according to the Specification's first sentence, relates
to polymers where "a cohesive fluorine-fluorine interaction exists," the
Application must be read as stating that this chain has such interactions.
This further supports that Naito' s H9 will also inherently have such
interactions. Even if Appellants' recognition of the fluorine-fluorine
interaction were new, this recognition does not make an otherwise obvious
composition patentable. See Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999) ("[T]he discovery of a previously unappreciated
property of a prior art composition, or of a scientific explanation for the
prior art's functioning, does not render the old composition patentably new
to the discoverer.")
Third, Appellants argue that a person of skill in the art would have no
reason to combine Naito and Li. We disagree. As explained above, both
Naito and Li provide teachings relating to organic light emitting displays.
Naito explains the benefits of organic molecules having fluorine groups in
that context. Naito ,-i 20. Li explains the benefit of copolymers in the same
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context. See, e.g., Li 2:49-52; 8:64-9:5. Li also teaches use of fluorine and
substituted fluorine as monomers. Id. at 5:34-50. We also agree with the
Examiner's finding that the copolymers of Li could improve Naito's H9
formulation by allowing adjustment of electron and hole transporting
properties. Ans. 19-20. No evidence suggests that addition of Li's
copolymers to the formulations of Naito would be beyond the ability of an
ordinary person of skill in the art. Thus, we find by a preponderance of the
evidence that the combination of Naito and Li is nothing more than
predictable use of prior art elements according to established functions. Cf
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Fourth, Appellants argue that they "surprisingly found" cohesive
fluorine-fluorine interaction. Appeal Br. 12. To establish unexpected
results, however, the "objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support." In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). We find here
that the Specification's experimental examples are narrow in scope
compared to the ranges of possible materials permitted by claim 1.
Moreover, Appellants only argue without evidence that the beneficial use of
fluorine is surprising. A preponderance of the evidence, as set forth in the
Naito reference, establishes that benefits of fluorine are expected.
Appellants also lack evidence that claim 1 's "1 to 50% of fluorine-
containing groups" limitation is unexpectedly beneficial. Again, the
Specification's embodiments are not commensurate in scope with the
claimed range. The Examiner also found that incorporation level of an
electron transporting monitor could be used to adjust electron transporting
properties. Ans. 6, 20. We agree with this finding as it is supported by the
teachings of Li. Moreover, the claimed range is not even the most preferred
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embodiment identified by the Specification; the Specification teaches that
"very particularly preferably" all polymers should contain fluorine-
containing groups. Spec. 6: 10-13.
Therefore, in assessing the record as a whole, we hold that the subject
matter of claim 1 would have been obvious over the combination of Naito
and Li.
Rejections 2 and 6. These rejections address claims 12 and 29 which
require emission of white light. The Examiner explains that Naito teaches
emitting layers that emit red, green, and blue. Final Act. 12. Ito teaches an
organic light emitting device that produces white light by emitting red,
green, and blue. Id. The Examiner explains that selection of desired color
of emission is a matter of design choice, and it would have been obvious to
employ Ito's known method to produce white color using Naito. Id. We
agree with the Examiner's findings and conclusion.
Appellants do not dispute the references' teachings. Appellants
instead argue that the rationale to combine the references is lacking. Appeal
Br. 13-14, 18-19. We disagree. Naito teaches its use in organic
electroluminescent displays. Naito ,-i,-i 3-5. The display of Naito could be
predictably improved by enabling display of white light using Ito's known
method. Improvement of Naito in this manner is no more than predictable
use of prior art elements according to established functions. Thus, the
combination is proper. Cf KSR Int'!, 550 U.S. at 417.
Rejection 3. This rejection addresses claims 17 and 20 which require
a last-applied "electron-blocking layer" (claim 17) and a first-applied "hole-
blocking layer" (claim 20). The Examiner finds that Matsuura teaches these
layers and concludes that it would be obvious to combine Naito and
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Matsuura. Final Act. 13-14. We agree with the Examiner's findings and
conclusions.
Applicants do not dispute the teachings of Naito or Matsuura.
Applicants instead argue that rationale to combine the references is lacking.
We disagree. Appeal Br. 14-15. The Examiner explains improved hole and
electron transporting properties of Matsuura. Final Act. 13-14; Ans. 23-24.
Matsuura is directed to the same field as Naito; it is entitled "ORGANIC
ELECTROLUMINESCENCE ELEMENT AND DISPLAY." Matsuura
explains that its teaching provides improved "emission luminance lifetime
and emission lifetime" and "high emission luminance at reduced power."
Matsuura ,-i 9. The combination of Matsuura and Naito is no more than a
predictable use of prior art elements according to their established functions.
Thus, the combination is proper.
Rejection 4. This rejection addresses claims 25 and 26 which require
conductive polymer as part of the cathode and/or anode. The Examiner
explains that Robeson teaches a light emitting device that makes use of
conductive polymeric materials as the anode or as a coating on the anode.
Final Act. 14-15. The Examiner concludes that it would be obvious to
utilize the teachings of Robeson in combination with Naito. Id. We agree
with these findings and conclusions.
Appellants do not dispute Robeson's teachings but instead argue that
rationale to combine the references is lacking. The Examiner, however,
explains that a person of skill would use the anode or anode coating of
Robeson to improve hole injection in Naito. Ans. 24-25; see also Robeson
,-i 59. Robeson, like Naito, is directed to "electroluminescent organic
material." Id. at Abstract. The combination of Robeson and Naito is no
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more than a predictable use of prior art elements according to their
established functions. Thus, the combination is proper.
Rejection 5. This rejection addresses claims 27 and 28. The claims'
elements are connected by "or," so they are directed, for example, to the
device of claim 1 being used in a colored display. The Examiner explains
that Becker teaches use of a conjugated polymer in a full-color display.
Final Act. 15. Indeed, Naito also teaches use of its polymers in color
displays. Naito iJ 43. Li is also used in displays. Li 4:28-43. Thus, one of
ordinary skill would predictably to be able to improve Becker with the
benefits taught by Naito and Li. See also Ans. 25-26. We cannot agree
with Appellants' argument that rationale to combine is lacking and conclude
that claims 27 and 28 are obvious.
DECISION
For the above reasons, the Examiner's rejections of claims 1-33 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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