Ex Parte ENGEL et al

Patent Trials and Appeals Board

Jun 25, 2019

13861851 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/861,851 04/12/2013
23599 7590 06/27/2019
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
Martin ENGEL
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.
MERCK-4085 3809
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN ENGEL,
ANDREAS TAUGERBECK, CONSTANZE BROCKE,
HELMUT HAENSEL, STEPHAN DEROW,
and JULIAN VOGT
Appeal2018-006320
Application 13/861,851
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-5, 11, 13, 18, 20, 22, 23, and
29-37 of Application 13/861,851 on the grounds ofnonstatutory
obviousness-type double patenting (OTDP). Final Act. 3--4 (August 21,
201 7). The Examiner further rejected claims 1-18, 20, 22, 23, 2 8-3 7 under
Appeal2018-006320
Application 13/861,851
35 U.S.C. § 103(a) as obvious. Id. at 5-9. 1 Appellants2 seek reversal of
these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.
BACKGROUND
The '851 Application describes polymerizable compounds for use in
liquid crystal (LC) displays, particularly in polymer sustained alignment
type LC displays. Spec 1: 1-5.
Claim 1 is representative of the '851 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief ( emphasis
added):
1. A liquid-crystal (LC) medium or a LC display comprising
a compound of formula I
P1-Sp1-(A1-Z1)n-A2-Sp4-CH(Sp2-P2)(Sp3-P3) I
in which the individual radicals have the following
meanings:
P1, P2, P3 independently of each other denote a
polymerisable group,
Sp1 is a spacer group or a single bond,
Sp2 and Sp3 denote -(CH2)p2-, in which p2 is an integer
from 1 to 6,
1 The Examiner did not finally reject claims 33-36 as obvious, but rejected
these claims as obvious under new grounds. Answer 6-7. According to the
Examiner, the omission of these claims from the obviousness rejection in the
Final Office Action was a typographical error. Id. at 11; see also Reply
Br. 1.
2 Merck Patent GmbH is identified as the applicant and real party in interest.
Appeal Br. 1.
2
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Application 13/861,851
Sp4 is -(CH2)p4-, in which p4 is an integer from 1 to 6,
A1, A2 independently of each other, and on each
occurrence identically or differently, denote an aromatic,
heteroaromatic, alicyclic or heterocyclic group having 4 to 25 C
atoms, which may also contain fused rings, and which is
optionally mono- or polysubstituted by L,
Z 1 is selected from the group consisting of -0-, -C0-0-,
-OCO-, -OCH2-, -CH20-, -CF20-, -OCF2-, -CH2CH2-,
-CH =CH- -CF=CF- -CH =CF- -CF=CH- -C=C- and a single
' ' ' ' ' bond,
L denotes P 1-, P 1-Sp1-, F, Cl, Br, I, -CN, -N02, -NCO,
-NCS, -OCN, -SCN, -C(=O)N(Rx)2, -C(=O)Y1, -C(=O)RX,
-N(Rx)2, optionally substituted silyl, optionally substituted aryl
or heteroaryl having 5 to 20 ring atoms, or straight-chain or
branched alkyl having 1 to 25 C atoms, in which, in addition,
one or more non-adjacent CH2 groups may each be replaced,
independently of one another, by -C(R00)=C(R000)-, -C=C-,
-N(R00)- -0- -S- -CO- -C0-0- -0-CO- -O-C0-0- in such a
' ' ' ' ' ' way that O and/ or S atoms are not linked directly to one
another, and in which, in addition, one or more H atoms may be
replaced by F, Cl, CN, P1- or P1-Sp 1-,
R00 and R000 each, independently of one another, denote
Hor alkyl having 1 to 12 C atoms,
Y 1 is halogen,
Rx denotes P1-, P1-Sp1-, H, halogen, straight chain,
branched or cyclic alkyl having 1 to 25 C atoms, wherein one or
more non-adjacent CH2-groups are optionally replaced by -0-,
-S- -CO- -C0-0- -0-CO- -O-C0-0- in such a manner that
' ' ' ' 0- and/or S- atoms are not directly connected with each other,
and wherein one or more H atoms are optionally replaced by F,
Cl, P1- or P1-Sp1-, optionally substituted aryl, aryloxy,
heteroaryl or heteroaryloxy having 5 to 20 ring atoms,
n is 1, 2, 3 or 4.
Appeal Br. 21-22.
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Appeal2018-006320
Application 13/861,851
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 18, 20, 22, 23, and 33-36 are rejected on the ground of
OTDP as unpatentable over claims 1-10 of Farrand '200. 3 Answer 4.
2. Claims 1-5, 11, 13, 18, 20, 22, 23, and 29-37 are rejected on
the ground of OTDP as unpatentable over claim 4 of Farrand '500. 4
Answer 5.
3. Claims 1-5, 11-13, 18, 20, 22, 23, and 29-37 are rejected under
35 U.S.C. § 103(a) as unpatentable over Farrand '760. 5 Answer 6.
4. Claims 6-10, 14--17, and 28 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination of Farrand '760 and Jansen. 6
Answer 7.
DISCUSSION
Rejections 1-2. Appellants note that the prior art applied in the
OTDP rejections is related to Farrand '760, which the Examiner relied upon
in Rejections 3--4. Specifically, Appellants note that Farrand '200 issued
from Application 09/654,516 (the '516 Application) and Farrand '500 issued
from a division of the '516 Application. Appeal Br. 6-8. Appellants further
note that a division of the '516 Application published as Farrand '760. Id.
Appellants thus assert that the disclosures in Farrand '760, Farrand '200, and
Farrand '500 are identical. Id. Consequently, Appellants argue that the
OTDP rejections should be reversed for the same reasons that Rejections 3--
3 US 7,060,200 Bl, issued June 13, 2006.
4 US 7,125,500 B2, issued Oct. 24, 2006.
5 US 2005/0133760 Al, published June 23, 2005.
6 US 2011/0261311 Al, published Oct. 27, 2011.
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Application 13/861,851
4 should be reversed. Id.; see also Reply Br. 1-2. Accordingly, we tum
next to whether Appellants' arguments identify reversible error in the
Examiner's conclusion that Farrand '760, either with or without Jansen,
renders the presently appealed claims obvious under§ 103(a).
Rejections 3--4. Appellants argue for reversal of these rejections on
the basis of limitations common to independent claims 1 and 18. See
generally Appeal Br. 8-20; Reply Br. 2-7. We select claim 1 as
representative. Accordingly, we limit our discussion to claim 1 with the
understanding that it applies with equal force to independent claim 18 on
appeal.
In rejecting claim 1, the Examiner found that Farrand '760 teaches a
liquid crystal medium comprising a multireactive polymerizable mesogenic
compound of the formula I: R 1-MG-R2, wherein R1 is P-(Sp-X)n- where P
is a polymerizable group and n is 0, MG is formula Ila:
where r is 0, and R2 is preferably formula Ii:
-X-alkyl-CH( ( CH2)aP 1 )( ( CH2)bP2),
wherein Xis a single bond, alkyl is a straight-chain alkyl having 1 C atom, a
and b are 1, and P, P1, and P2 are all methacrylate, which is equivalent to
formula I of instant claim 1. Answer 6 ( citing Farrand '760 ,r,r 29, 31-35,
63, 64, 52, 54, 55, 59). Though the Examiner acknowledges that Farrand
'7 60 does not teach a specific example of a compound having each of the
components set forth above, the Examiner determined that "it would have
been obvious to one of ordinary skill in the art at the time the invention was
made to obtain such a compound because Farrand ['760] teaches equivalent
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Application 13/861,851
groups for" R1, R2, X, and P1, P2, and MG. Answer 6-7 (citing Farrand '760
,r,r 31-35, 52-55, 59, 63, 64).
Appellants challenge the rejections by, inter alia, detailing each
selection the ordinarily skilled artisan would have been required to make in
order to arrive at the compound recited in claim 1:
First, one would have to select R[ 1] to include a polymerizable
group Pout of the five other possible single groups and a sixth
large generic group of optionally substituted alkyl with 1 to 30
C atoms encompassed at pages 2-3, para. 0031. Farrand
specifically states that it is preferred that R[ 1] is not a
polymerizable group: see, e.g., page 3, para. 0042.
Second, one would have to select a mesogenic group MG of
Farrand which meets the -(A1-Z1)n-A2 formula of claim 1.
Third, one would have to select an R[2] group of Farrand with
two polymerizable groups which are arranged particularly with
an alkylene chain (Sp4) which connects the left side of the
compound with a branching node ( CH) which has branches of
two alkylene chains (Sp2 and Sp3) bonding to two branched
polymerizable groups (P[2] and P[3]). Note that, in claim 1, p2
and p4 are at least one, thus, a particular manner of spacing is
required between the polymerizable groups in addition to the
particular manner of branching.
In this last respect, Farrand discloses 10 generic formula Ia-Ik:
as preferred for the R[2] group (page 3, para. 0052). However,
only one of these formula Ii would encompass a structure of
with the spacing and branching required in the claims. Farrand
does not indicate a preference specific to formula Ii among
these 10 generic formulae. Further, even if one were to select Ii
for R[2], one would still need to make particular selections for
the variables X, a and b within this formula to arrive at a
structure with the spacing and branching required in the claims.
Particularly, one would need to select X to be a single bond out
of the 15 possible selections for X (see page 3, para. 0034) and
select a and b both to not be zero, despite that zero is included
in the options (see page 4, para. 0055).
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Application 13/861,851
Finally, one would have to combine all of the above selections
together in a single compound.
Appeal Br. 10-11 (paragraphing added). Appellants conclude that
Farrand fails to fairly direct one of ordinary skill in the art to
the compounds as claimed with a polymerizable group at the
left side (P[ 1]) and the two polymerizable groups (P[2] and P[3])
at the right end, even more particularly with the particular
spacing and branching required for the P[2] and P[3]
polymerizable groups.
Id. at 11; see also id. at 15.
In view of the number of selections required in R1-MG-R2 formula
I of Farrand '760 to arrive at the compound recited in instant claim 1, we
agree with Appellants that Farrand '760 identifies millions of potential
compositions that might be used to create the polymerizable material in an
LC medium or display. See Appeal Br. 9. The Examiner concludes that this
exceedingly broad disclosure combined with routine experimentation
renders the subject matter of claim 1 obvious. See generally Answer 18, 19--
20, 22, 24. In the absence of a more detailed reason for a person of ordinary
skill in the art to have made each of the selections outlined by Appellants
from Farrand '760's disclosed substitution options (Appeal Br. 10-11), we
cannot agree with the Examiner's conclusion.
In particular, the Examiner has not provided an adequate response to
Appellants' argument that Farrand '760 particularly prefers that R 1, in
R1-MG-R2, is not a polymerizable group. See Farrand '760 ,r 42. We are
not persuaded that "the motivation to arrive at Appellant[s'] claimed formula
I from Farrand ['760's] formula I is based on the knowledge of one of
ordinary skill in the liquid crystal art [ regarding] the substitution of
equivalents" (Answer 22), particularly when Farrand '760 explicitly
discloses that the selection of a polymerizable group for R 1 is not equivalent
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Application 13/861,851
to the other choices. As Appellants argue, Farrand '760's exemplified
compounds "lack a polymerizable group for the R[ 1] group ... and have an
R[2] group which does not have the spacing required for the Sp4, Sp2 and Sp3
groups of the claimed invention." Appeal Br. 11 (citing Farrand '760
Example 1). See In re Baird, 16 F.3d 380,383 (Fed. Cir. 1994) ("A
disclosure of millions of compounds does not render obvious a claim to
three compounds, particularly when that disclosure indicates a preference
leading away from the claimed compounds.").
In view of the foregoing, we reverse the Examiner's rejection of
claims 1 and 18 as unpatentable over Farrand '760. Claims 2-17, 28-32,
and 37 depend from claim 1. Claims 20, 22, 23, 33-36 depend from claim
18. We, therefore, reverse Rejections 3--4. 37 C.F.R. § 4I.37(c)(l)(iv). We
express no opinion regarding Appellants' other arguments for reversal of
Rejections 3--4.
As set forth above, Appellants rely on the same persuasive arguments
for reversal of the Examiner's OTDP rejections. We, therefore, reverse
Rejections 1-2.
CONCLUSION
For the reasons set forth above, we reverse the OTDP rejections over
claims 1-10 of Farrand '200; and claim 4 of Farrand '500. We reverse the
obviousness rejections based upon Farrand '760, either with or without
Jansen.
REVERSED
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