Ex Parte Cheng et al

Patent Trial and Appeal Board

Sep 29, 2016

13316995 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/316,995 12/12/2011
60601 7590 09/30/2016
Muncy, Geissler, Olds & Lowe, P,C,
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
FIRST NAMED INVENTOR
Chien-Hong CHENG
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.
094l/2709PUS1 3778
EXAMINER
YANG, JAY
ART UNIT PAPER NUMBER
1786
MAILDATE DELIVERY MODE
09/30/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIEN-HONG CHENG, FANG-LY WU, CHIN-HSIEN CHEN,
HSIU-YUN TSAI, and LUN-CHIA HSU1
Appeal2015-000665
Application 13/316,995
Technology Center 1700
Before CHUNG K. PAK, TERRY J. OWENS, and JULIA HEANEY,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 finally rejecting claims 4-8. 3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is said to be National Tsing Hua University, 101,
Section 2, Kuang-Fu Road, Hsinchu, Taiwan, R.O.C., 30013. Appeal Brief,
filed April 29, 2014 ("App. Br.") at 2.
2 Final Office Action, entered September 30, 2013 ("Final Act.") at 2-13 and
the Examiner's Answer, entered August 11, 2014 ("Ans.") at 2-10.
3 Claims 1-3 and 9, the other pending claims, stand with drawn from
consideration by the Examiner. App. Br. 4.
Appeal2015-000665
Application 13/316,995
STATEMENT OF THE CASE
The subject matter on appeal is directed to carbazole serial
compounds, which may be useful as a host material or a guest material in a
light emitting layer of an organic light emitting diode. Spec. ,-i,-i 4-10.
Details of the appealed subject matter are recited in representative
claim 4,4 which is reproduced below from the Claims Appendix of the
Appeal Brief (with disputed limitations in italicized form):
4. A carbazole serial compound, having a formula:
wherein Ar is selected from a para-t-butyl phenyl group, a
biphenyl group, a naphthalenyl group, or a thienyl group,
wherein R' is selected from a substituted or non-
substituted C1-4o alkyl group, a substituted or non-substituted C2-
40 alkenyl group, a substituted or non-substituted C2-4o alkynyl
group, a substituted or non-substituted C6-4o aryl group, or a
substituted or non-substituted C4-40 hetero aryl group, and
wherein each R is a hydrogen atom.
App. Br. 12 (Claims App'x.).
4 Appellants state that claims 5-8, by virtue of their dependency on
independent claim 4, "are also allowable[,]" but do not separately argue the
limitations of claims 5-8. App. Br. 9-11. Therefore, for purposes of this
appeal, we limit our discussion to claim 4. 37 C.F.R. § 41.37(c)(l)(iv)
(2012).
2
Appeal2015-000665
Application 13/316,995
The Examiner maintains, and Appellants seek review ot: the rejection
of claims 4-8 under 35 U.S.C. § 103(a) as unpatentable over the disclosure
of Ikeda5 (JP 2010-073987 A, published April 2, 2010). Final Act. 2-6 and
Ans. 2-6.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the respective positions advanced by the Examiner and Appellants, we
determine that a preponderance of the evidence supports the Examiner's
determination that Ikeda would have rendered the subject matter recited in
claims 4-8 obvious to one of ordinary skill in the art within the meaning of
35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's§ 103(a)
rejection of the above claims substantially for the findings and the reasons
set forth in the Final Office Action and the Examiner's Answer. We add the
following primarily for emphasis and completeness.
Appellants do not dispute the Examiner's finding that Ikeda discloses
carbazole derivatives having the following formula:
(TH)
5 Our reference to Ikeda is to the corresponding English translation entered
into the record by the Examiner on June 11, 2013.
3
Appeal2015-000665
Application 13/316,995
"where Ar3 =alkyl group and R23-34 =hydrogen, substituted or unsubstituted
aryl group, or substituted or unsubstituted heteroaryl group ([0031 ],
abstract)." Compare Final Act. 3 and Ans. 3 with App. Br. 9-11. Nor do
Appellants dispute the Examiner's finding that "Ikeda ... discloses such aryl
groups include substituted or unsubstituted phenyl, 4-biphenyl, and 1-
naphtyl group ([0019]) ... [and such] heteroaryl groups include substituted
or unsubstituted thienyl (thiophenyl) groups [0020])." Compare Final Act. 3
and Ans. 3 with App. Br. 9-11. Appellants also refer to paragraph 33 of
Ikeda, which exemplifies using hydrogen as R23- 34 substituents in forming
carbazole derivatives. App. Br. 10; Ikeda iJ 33.
Under the above circumstances, we concur with the Examiner that one
of ordinary skill in the art would have been led to select appropriate
substituent groups for Ar3 and R23- 34 (e.g., a biphenyl or thienyl group as
R23, hydrogen as R24- 34, and an alkyl group as Ar3) from the substituents
listed in Ikeda to arrive at the carbazole derivatives included in claim 4.
Merck & Co., Inc. v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir. 1989) (The
fact that a reference "discloses a multitude of effective combinations does
not render any particular formulation less obvious"); In re Corkill, 771 F.2d
1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in
light of prior art teaching that "hydrated zeolites will work" in detergent
formulations, even though "the inventors selected the zeolites of the claims
from among 'thousands' of compounds").
Appellants contend that:
R23-R34 in Formula (III) of Ikeda include a lot of substituent
groups, but most of these groups are not enabled, as seen
paragraph 0031 in Ikeda. In fact, only some of R23 to R34 are
substituted in the Examples of Ikeda, and R23 in Ikeda is always
4
Appeal2015-000665
Application 13/316,995
hydrogen in the Examples, as seen paragraphs 0033, 0035, 0061,
0067, and 0071 in Ikeda. Ikeda fails to disclose how to form a
carbazole compound with an aromatic R23 . In addition, Ikeda
fails to disclose any bromination of the carbazole compounds.
Accordingly, there would be no reasonable motivation and/or
successful expectation for one skilled in the art to further
halogenate Hin R23 position of Formula (III) of Ikeda, and then
couple an aromatic group to halogenated R23 position in Formula
(III) in an effort to achieve the carbazole compound in claim 4 of
the present application, on the basis of the disclosure of Ikeda.
[App. Br. 10.]
We do not find this argument persuasive.
Although Appellants assert that Ikeda does not disclose a method of
attaching a biphenyl or thienyl group to the R23 position of its formula III in
the manner disclosed in the Specification to arrive at the claimed carbazole
derivatives, they do not explain why one of ordinary skill in the art could not
attach such substituents to the R23 position of formula III disclosed in Ikeda,
without undue experimentation6 based on the disclosure of Ikeda and
information known in the art. App. Br. 9-10. Ikeda "cited by an examiner
is presumptively enabling barring any showing to the contrary by a patent
applicant or patentee." In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed.
6 To show that a disclosure is not enabling, Appellants must provide
adequate reasoning or evidence to show why one of ordinary skill in the art
could not make or use the claimed invention from the disclosure of Ikeda,
coupled with information known in the art, without undue experimentation.
U.S. v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988); In re
Stephens, 529 F.2d 1343, 1345 (CCPA 1976). Undue experimentation is
determined based on both the nature of the invention and the state of the art.
See Elan Pharm., Inc. v. Mayo Found.for Med. Educ. & Research, 346 F.3d
1051, 1055 (Fed. Cir. 2003) (quoting In re Wands, 858 F.2d 731, 737 (Fed.
Cir. 1988)).
5
Appeal2015-000665
Application 13/316,995
Cir. 2012). Nevertheless, on this record, Appellants do not provide any
adequate reasoning or evidence 7 to demonstrate that one of ordinary skill in
the art could not make or use the claimed carbazole derivatives (i.e., attach
the phenyl or thienyl substituents to the R23 position ofikeda's formula III)
based on the disclosure of Ikeda, coupled with information known in the art,
without undue experimentation.
Accordingly, on this record, we find no reversible error in the
Examiner's determination that Ikeda would have rendered the subject matter
recited in claims 4-8 obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103(a).
ORDER
In view of the foregoing, the decision of the Examiner to reject claims
4-8 is 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)(l )(iv).
AFFIRMED
7 As also stated by Appellants, "evidence showing that attempts to prepare
that compound were unsuccessful before the date of invention" is needed
to show inoperability or non-enablement even "[ w ]hen a prior art reference
merely discloses the structure of the claimed compound[.]" App. Br. 9
(citing In re Wiggins, 488 F.2d 538 (CCPA 1971)). However, Appellants do
not refer to any evidence sufficient to show that attempts to attach the
biphenyl or thienyl group to the R23 position of Ikeda's formula III were
unsuccessful before the date of the invention. App. Br. 9-11.
6