Ex Parte Geisow et al

Board of Patent Appeals and Interferences

Jun 26, 2007

10419763 (B.P.A.I. Jun. 26, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ADRIAN DEREK
and STEPHEN CHRISTOPHER KITSON
______________

Appeal 2006-3072
Application 10/419,763
Technology Center 1700
_______________

Decided: June 26, 2007
_______________

Before CHARLES F. WARREN, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 7, 27 through 34, and

Appeal 2006-3072
Application 10/419,763
36 through 43,1 in the Office action mailed June 15, 2005. 35 U.S.C.
§§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2005).
We affirm the decision of the Primary Examiner.
Claims 1 and 2 illustrate Appellants’ invention of a liquid crystal
device, and are representative of the claims on appeal:
1. A liquid crystal device comprising first and second opposed
spaced-apart walls enclosing a layer of a liquid crystal material, electrodes
on at least one cell wall for applying an electric field across at least some of
the liquid crystal material, at least a part of the inner surface of the first cell
wall including a first surface layer formed from a polymerised aligned
mesogenic material, and at least a part of the inner surface of the second cell
wall including a second surface layer formed from a polymerised [sic]
aligned mesogenic material, which surface layers are in contact with the
liquid crystal material at first and second interfaces respectively; the
anchoring energy at the first interface differing from the anchoring energy at
the second interface.
2. A device as claimed in claim 1, wherein the difference in
anchoring energies results from polymerisation [sic] of the mesogenic
material of the surface layers at different temperatures.
The Examiner relies on the evidence in these references:
Nakamura US 5,686,019 Nov. 11, 1997
Walton US 6,201,588 B1 Mar. 13, 2001
Martinot-Lagarde US 6,452,573 B1 Sep. 17, 2002
Appellants request review of the ground of rejection of claims 1
through 7, 27 through 34, and 36 through 43 under 35 U.S.C. § 103(a) as
being unpatentable over Walton in view of Nakamura as evidenced by
Martinot-Lagarde (Answer 2-6; Br. 6).

1 The Examiner has withdrawn claims 9 through 26 from consideration
under 37 C.F.R. § 1.142(b) and objected to claims 8, 35, and 44 as drawn to
allowable subject but dependent on a rejected claim.
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Appellants argue the claims as a group as well as group claims 2 and
37 separately (Br. 7, 9, 11, and 12). Thus, we decide this appeal based on
claims 1 and 2 as representative of Appellants’ groupings of claims.
37 C.F.R. § 41.37(c)(1)(vii) (2005).
The Examiner contends Walton teaches all of the claim elements,
including an aligned polymerized mesogenic material as a surface layer 14
on at least a part of the inner surface of each of the first and second cell
walls, except the element “that the anchoring energy or other properties at
the first interface is different from the anchoring energy or other properties
at the second interface” (Answer 3-4, citing Walton col. 8, ll. 50-56, and Fig.
5A). The Examiner contends Nakamura teaches a device in “which surface
layers are in contact with the liquid crystal [material] at first and second
interfaces respectively” (id. 4, citing Nakamura col. 14, ll. 27-40). The
Examiner contends “Nakamura teaches that in order to suppress the
occurrence of alignment defects to a practically negligible level, the surface
energies of the first and second surface layers are different through
appropriate designing of the alignment control layers of the substrates”
(id., citing Nakamura col. 13, ll. 13-18). The Examiner contends
Martinot-Lagarde evinces “[c]hanging the surface energy changes the
anchoring energy at the interface” (id. 4-5, citing Martinot-Lagarde col. 1, ll.
25-40). The Examiner concludes it would have been obvious to one of
ordinary skill in this art “to have designed the first and second surface layers
of Walton with different surface energies, and hence different anchoring
energies, in order to obtain a liquid crystal device with minimal alignment
defects, as taught by Nakamura, and as evidenced by Martinot-Lagarde”
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(id. 5). With respect to claim 2, the Examiner contends the claim is a
product-by-process claim and the claimed product is taught by the references
(id. 5-6).
Appellants contend modifying Walton’s “device so that the anchoring
energies at the two interfaces differ” is contrary to Walton’s objective of “a
controlled degree of tilted-off homeotropic alignment . . . [achieved] by
using identical alignments on both surfaces, each providing the same tilted-
off alignment . . . because the anchoring energies on both surfaces are the
same” (Br. 7-9, citing Walton col. 2, ll. 29-50, col. 7, ll. 58-60, col. 8,
ll. 44-45, col. 10, ll. 9-39 and Figs. 5A-C, 7, and 8; see also Br. 10). In this
respect, Appellants point out Walton states “the ‘pre-tilt produces a single
favored direction for tilting of the liquid crystal molecules when a voltage is
applied across the liquid crystal layer 16’” (Br. 9, citing Walton col. 10,
ll. 9-11).
Appellants contend Walton would not have been combined with
Nakamura because neither reference discloses how to modify Walton so that
polymeric liquid crystal alignment layers 14 of Fig. 5A-C have different
anchoring energies, that is, there is no enabling disclosure in the references
“how different interfaces between a liquid crystal layer and a polymerized
mesogenic material can have different anchoring energies” (id. 10-11). In
this respect, Appellants contend Walton’s opposed layers 14 “are made in
the same way” and there is “no disclosure of how to make the layers 14 on
opposite sides of the cell different from each other” or to make the anchoring
energies of the two opposed layers differ (id. 10). Appellants contend
“Nakamura is not concerned with polymerized aligned mesogenic materials”
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because “alignment film 13a is made of a polyimide or aromatic polyamide
subjected to a uniaxial aligning treatment, such as rubbing” and “alignment
film 13b is made of a saline coupling agent, polyimide, polysiloxane, etc.,
not subjected to a uniaxial alignment treatment” (id., citing Nakamura col.
14, ll. 30-36). Appellants contend the references do not show that
Nakamura’s arrangement to reduce alignment defects with alignment films
used in layers 13a,13b would be applicable to Walton’s polymerized
mesogenic material of surface layers 14 (id. 11-12, citing Nakamura col. 14,
ll. 30-36). With respect to claim 2, Appellants contend the references do not
disclose how to arrive at different mesogenic material having different
anchoring energies, including polymerization at different temperatures (id.
12).
The Examiner responds Walton “teaches that a true homeotropic
alignment, which is a vertical alignment, as shown by Figs. 7A and 7B, may
give rise to regions of different tilt directions, whereby all the different tilt
directions cause optical scattering effects,” and “that it is better to provide a
slightly off-homeotropic alignment, with a built-in pre-tile which produces a
single favored direction for tilting,” thus reducing "the number of defects or
distortions in the liquid crystal alignment” (Answer 6-7, citing Walton
col. 10, ll. 1-11). The Examiner contends “Walton’s ultimate objective is to
minimize the number of defects in the liquid crystal alignment, not to
achieve identical alignments and therefore identical anchoring energies of
the opposing mesogen alignment layers” (id. 7). The Examiner contends
“Nakamura changes the anchoring energy at the interface” thus, teaching
“that the alignment defects are minimized to a practically negligible
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level . . . providing the motivation to use it to modify Walton” whose
“ultimate objective is to minimize the number of defects in the liquid crystal
alignment,” thus addressing “the common problem of providing a defect-
free alignment of liquid crystal” (id. 7-8, citing Nakamura col. 13, ll. 13-18).
The Examiner contends “Walton teaches that the mesogenic alignment layer
is formed from a mixture of first and second polymerizable liquid crystal
monomers,” and Nakamura teaches the “concept of suppressing the
occurrence of alignment defects . . . through appropriate design of the
alignment control layers of the substrates” including its anchoring energy,
thus enabling one of ordinary skill in this art to arrive at the claimed
invention (id. 8-9 and 9-10, citing Walton col. 5, ll. 1-6, and Nakamura col.
13, ll. 13-18, and col. 5, ll. 38-45). With respect to claim 2, the Examiner
contends different polymerizable liquid crystals have different
polymerization temperatures (id. 11).
In the Reply Brief, Appellants contend one of ordinary skill in this art
would not have modified Walton in light of the teachings of Nakamura
because Walton and Nakamura differ in the type of liquid crystal devices
with respect to liquid crystal materials, alignment layers, mechanisms and
defects, and on this basis, respond to specific findings of the Examiner in the
Answer (Reply Br. 2-6). Appellants point out Walton discloses “near-
homeotropic alignment of liquid crystal devices” generally containing
nematic liquid crystal materials while Nakamura discloses “homogeneous
alignment” 2 devices containing chiral smectic liquid crystal materials which

2 Appellants disclose the principal alignments “homeotropic,” where the
molecules are “substantially perpendicular to the plane of the cell walls,”
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form a “bookshelf” structure (Reply Br. 2). Appellants contend the defects
in orientation of the liquid crystal materials in Walton’s devices occur when
a field is applied while the defects in Nakamura’s devices occur “primarily
during formation of the cell, not during application of a field” (id. 3-4).
Appellants contend Walton “solves the field induced defect problem . . .
with identical [alignment layer] surfaces” while “Nakamura indicates that
when the difference between the surface energies is small, the static defect
problem is not solved” (id. 4-5 (original emphasis omitted), citing Nakamura
col. 5, ll. 38-45, and Examples 1, 4, and 6).
The issue in this appeal is whether the Examiner has carried the
burden of establishing a prima facie case of obviousness over the combined
teachings of Walton, Nakamura, and Martinot-Lagarde.
The plain language of independent claim 1 specifies a liquid crystal
device comprising at least, inter alia, any part of the inner surface of each of
the first and second cell walls, however small, including at least a surface
layer, however small, formed from any manner and amount of polymerized
aligned mesogenic material, that can be different on each wall, which is in
contact with, that is, interfaces with, to any extent a layer of any manner of
liquid crystal material, wherein the anchoring energies of the two interfaces
differ to any extent, however small. In claim 2, the differences in anchoring
energies is specified to result from polymerization of the mesogenic
materials, which can be different, at different temperatures. The open-ended
terms “comprising” and “including” open claim 1 to include any manner of

and “planar,” where the molecules are “inclined substantially parallel to the
plane of the cell walls” (Specification 1:29-2:1).
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additional materials and layers. See, e.g., Exxon Chem. Pats., Inc. v.
Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir.
1995) (“The claimed composition is defined as comprising - meaning
containing at least - five specific ingredients.”); In re Baxter, 656 F.2d 679,
686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as one of the
monomers in the reaction is propylene, any other monomer may be present,
because the term ‘comprises’ permits the inclusion of other steps, elements,
or materials.”); In re Bertsch, 132 F.2d 1014, 1019, 56 USPQ 379, 384
(CCPA 1942) (“it is true that the word ‘comprising’ is usually in patent law
held to be synonymous with the word ‘including’”); cf. Ex parte Davis,
80 USPQ 448, 449 (Bd. App. 1948) (“the word ‘comprising’ alone being
synonymous with ‘including’”).
There is no requirement in claim 1 that the difference in anchoring
energies is due to the polymerized aligned mesogenic material (see Br. 7) as
there is in dependent claim 2, wherein the differences in anchoring energies
is specified to result from polymerization of the mesogenic materials at
different temperatures. Thus, claim 2 is framed in product-by-process
format. See, e.g., In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985). There is also no requirement in these claims with respect
to the affect of the anchoring energies of the surfaces of the cell walls on the
alignment of the liquid crystal material.
We note here that independent claim 27 encompasses the same subject
matter in this respect as claim 1 while in independent claims 36 and 38, the
polymerized mesogenic material causes the difference in anchoring energies,
and claim 38 further specifies the polymerized mesogenic material has
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different properties (see Br. 7). These claims also do not require the
anchoring energies of the surfaces of the cell walls to affect the alignment of
the liquid crystal material to any particular extent.
We find that Walton would have disclosed to one of ordinary skill in
this art a liquid crystal device in which the degree of tilted-off homeotropic
alignment of the liquid crystal material is controlled by at least one
polymerized mesogenic material alignment layer in contact with the liquid
crystal material (Walton, e.g., col. 2, ll. 49-67; col. 3, l. 66, to col. 4, l. 3; col.
4, ll. 14-17 and 29-65; col. 5, ll. 25-34; col. 11, ll. 36-67; and col. 11, l. 21,
to col. 12, l. 12). By way of background, Walton acknowledges “[i]t is very
well known to provide a rubbed alignment layer to control the alignment and
pretilt angle of adjacent liquid crystal molecules,” which “requires the use of
specific combinations of the liquid crystal layer and alignment layer,” as
well as methods “which do not require rubbing of the alignment layer” (id.
col. 1, l. 19, to col. 2, l. 46). The “titled-off” homeotropic alignment
generally has “a slight tilt (typically 1-10°) away from the homeotropic (90°)
alignment” (id. col. 2, ll. 29-31; see also col. 11, ll. 21-35).
Walton teaches the use of at least one tilted-off homeotropic
alignment layer formed from a mixture of first and second mesogenic
materials that have at least one polymerizable function group, wherein (1)
the number of polymerizable functional groups of the second mesogenic
material is less that that of the first mesogenic material, and (2) the ratio of
the first and second materials in the mixture is selected to provide a pre-
determined pretilt angle to liquid crystal molecules in the liquid crystal layer
(Walton, e.g., col. 2, ll. 55-67; col. 3, ll. 1-9; col. 3, l. 56, to col. 4, l. 3; and
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col. 4, l. 66, to col. 5, l. 19). We find this disclosure would have suggested
to one of ordinary skill in this art that the layer on the opposite side of the
liquid crystal layer can be an alignment layer formed from the same or
different mesogenic materials as the first alignment layer, from any other
alignment material, and from combinations thereof (id., e.g., col. 4,
ll. 37-65; col. 6, ll. 37-42; col. 8, ll. 49-56; Example 1; and Figs. 1 and 5).3
The polymerized mesogenic material in the first alignment layer and the
material in the opposed or second alignment layer can be formed on “a pre-
formed alignment layer such as a rubbed polyimide layer,” illustrated by the
liquid crystal cell in Figs. 1 and 5 wherein polymeric liquid crystal
alignment layers 14 overlay polyimide alignment layers 12 (id., e.g., col. 5,
ll. 20-24; col. 6, ll. 37-42; col. 8, ll. 49-56; col. 10, l. 45, to col. 11, l. 5; and
Example 3).
Walton’s Examples 1-4 illustrate liquid crystal cells in which the
polymeric liquid crystal alignment layers 14 are formed from the same
mixture of polymeric mesogenic material and interface with a nematic liquid
crystal mixture, wherein each of the four mixtures tested provide different
pretilt angle measured in degrees (Walton, cols 6-8 and table at col. 7,
ll. 24-30). Walton’s Example 5 illustrates the defect occurring where “the
liquid crystal molecules tilt in different directions” upon application of an

3 It is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d
1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985).
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applied field that is overcome “by an alignment layer of the present
invention which produces a small surface pre-tilt away from 90°” resulting
in “a single favoured [sic] direction for tilting . . . when a voltage is applied”
(id. col. 9, l. 51, to col. 10, l. 11, and Figs. 7A-B).
We find Nakamura would have acknowledged chiral smectic liquid
crystal devices have problems arising from the liquid crystal molecules
forming two types of chevron-shaped layer structures between the liquid
crystal cell walls which have been addressed by providing a pretilt angle to
uniformly direct the chevron layer structure in one direction, and by
converting “a bent chevron structure into a bookshelf layer structure wherein
smectic layers are aligned with little inclination from those perpendicular to
the” cell walls (Nakamura col. 1, l. 53, to col. 2, l. 49). Nakamura further
acknowledges with respect to liquid crystal materials providing a bookshelf
structure or a structure close thereto, that “[g]enerally, . . . these liquid
crystal materials including a mesomorphic compound having a
perfluoroether terminal chain do not assume cholesteric phase and it is
difficult to finally produce a sufficiently good alignment state” (id. col. 2, ll.
59-63).
Nakamura would have disclosed to one of ordinary skill in this art that
this problem can be addressed in a liquid crystal device in which the liquid
crystal layer is a mesomorphic compound with perfluoroether terminal
chains that lacks a cholesteric phase and stably assumes “a bookshelf
structure or structure close thereto,” when the liquid crystal layer is
contacted on opposite sides by substrates having different surface energies
(Nakamura, e.g., col. 2, l. 66, to col. 3, l. 30, col. 3, ll. 36-65, col. 4, l. 33, to
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col. 5, l. 34, and col. 6, l. 16, to col. 9, l. 37). The surface of the first
substrate can comprise, inter alia, a polyimide or aromatic polyamide film
selectively subjected to a uniaxial aligning treatment as an alignment control
layer, and the second substrate can comprise, inter alia, a polyimide not
subjected to uniaxial alignment, a silane coupling agent, or a fluorine-
containing resin as alignment control layer, wherein the surface energy of
the first alignment control layer is greater than the surface energy of the
second alignment control layer (id., e.g., col. 3, ll. 19-22; col. 5, ll. 35-43;
col. 9, l. 38, to col. 13, l. 36; col. 14, ll. 27-54; col. 14, l. 66, to col. 15, l. 10;
Fig. 1; and Example 1). We find Nakamura teaches that in this arrangement
of elements, the alignment defects encountered with the perfluoroether
terminal chain containing liquid crystal material can be suppressed to a
negligible level and a uniform, homogeneous alignment if, in addition to
difference in the surface energies of the first and second alignment control
layers on the respective opposed cell walls, the surface energy of an ordinary
perfluoroether terminal chain containing liquid crystal material is less than
the surface energy of an alignment control film (id., e.g., col. 5, l. 35, to
col. 6, l. 4; col. 13, ll. 12-33; and Example 1). Nakamura further teaches that
if the surface energy of an ordinary perfluoroether terminal chain containing
liquid crystal material is greater than the surface energy of an alignment
control film a homeotropic alignment develops, and that the surface energy
of perfluoroether terminal chain containing liquid crystal material is less
than that of a fluorine-free liquid crystal material (id., e.g., col. 13, ll. 26-29).
We find Martinot-Lagarde would have acknowledged “[i]t is well
known to the person skilled in the art that molecules of nematic phases
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(‘nematics’) and liquid crystals in general, on coming into contact with a
boundary surface, orient themselves in one or more directions because of
their interaction with the substrate” (Martinot-Lagarde col. 1, ll. 7-11). The
reference further acknowledges the additional surface energy resulting from
applying an external field to the surface of the substrate reorients the liquid
crystal molecules and is termed the anchoring energy (id. col. 1, ll. 11-38;
see Br. 11).
We determine the combined teachings of Walton, Nakamura, and
Martinot-Lagarde, the scope of which we determined above, provide
convincing evidence supporting the Examiner’s case that the claimed
invention encompassed by claims 1 and 2, as we interpreted these claims
above, would have been prima facie obvious to one of ordinary skill in the
liquid crystal device arts familiar with the interaction at the interface
between alignment layers on cell wall surfaces and the liquid crystal layer
therebetween in liquid crystal cells of liquid crystal devices. Indeed, on this
record and in light of the advanced contentions, the acknowledgements and
teachings of the combined references establish that one of ordinary skill in
the art had knowledge of the affect of the interaction at the interface between
the alignment layers and the liquid crystal layer on the orientation of the
liquid crystal molecules relative to the liquid crystal cell walls, with and
without an applied field. This interaction is described by Nakamura and
Martinot-Lagarde in terms of surface energies of the alignment layers and
the liquid crystal layer, with Martinot-Lagarde referring to the additional
surface energy provided by an applied field as anchoring energy.
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Thus, we determine, as does the Examiner, that this person would
have adjusted the surface energies and thus, the anchoring energies of the
interfacing alignment layers on the liquid crystal cell walls relative to the
liquid crystal layer to obtain and maintain the desired alignment of the liquid
crystal layer relative to the cell walls, with and without an applied field.
Indeed, Nakamura teaches that interfacing alignment layers with different
surface energies are used for this purpose with particular liquid crystal
material.
Walton also discloses that interfacing alignment layers are used for
this purpose for any manner of liquid crystal material. In this respect,
Walton teaches at least one interfacing alignment layer on one cell wall is
formed by polymerizing a mixture of two different polymerizable mesogenic
materials in a ratio selected to provide a predetermined alignment of the
liquid crystal molecules in the liquid crystal layer, and an interfacing
alignment layer on the other cell wall can be formed from the same
polymerizable mixture or from any other material which is taught therein or
known to form an interfacing alignment layer. Indeed, contrary to
Appellants’ contentions, the fact that Walton’s Examples 1-4 illustrate liquid
crystal cells wherein the interface alignment layers on the cell walls are the
same does not limit the teachings in the reference thereto in disregard of the
clear teachings therein that interfacing alignment layers can be different as
long as one is formed from the specified polymerizable mixture. See, e.g., In
re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“[T]he
fact that a specific [embodiment] is taught to be preferred is not controlling,
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since all disclosures of the prior art, including unpreferred embodiments,
must be considered.”).
Thus, we determine that one of ordinary skill in this art routinely
following the teachings of Walton would have formed the interface
alignment layer on the second cell wall from the same or different
polymerizable mixture of polymerizable mesogenic material than that used
for the interface alignment layer on the first cell wall. In doing so, this
person would have arrived at an interface alignment layer of polymerized
aligned mesogenic material on the second cell wall that is different from that
of the first wall with respect to properties thereof, including surface energy
and thus anchoring energy, which affect the pretilt angle of the liquid crystal
layer of the liquid crystal cell. Indeed, we determine that even where each of
the interface alignment layers of the cell walls is formed by polymerizing
separate batches of the same mixture of polymerizable mesogenic materials,
one of ordinary skill in this art would have reasonably expected the resulting
polymeric aligned mesogenic materials to be different to some extent, and
thus the properties thereof to differ to that extent.
Accordingly, one of ordinary skill in this art routinely following the
combined teachings of Walton, Nakamura, and Martinot-Lagarde would
have reasonably arrived at the claimed liquid crystal device encompassed by
claims 1 and 2, including all of the limitations thereof arranged as required
therein, without recourse to Appellants’ Specification. We are not
persuaded otherwise by Appellants’ contentions. One of ordinary skill in
this art would have considered the combined acknowledgments and
teachings of the applied references in light of the knowledge in the liquid
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crystal device art and thus, would have recognized that the different interface
alignment layers on each of the cell walls taught by Walton would result in
layers with different surface energies and anchoring energies, even though as
Appellants point out, the materials, structure and mechanisms of the liquid
crystal devices of Walton and Nakamura are different. See In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) (“The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”).
Indeed, one of ordinary skill in this art routinely following Walton
would have reasonably arrived at different polymerized aligned mesogenic
materials as interface alignment layers on the liquid crystal cell walls even if
this person would not have recognized that different surface energies and
thus, anchoring energies, would result. In this respect, it is well settled that
Appellants’ discovery of a new property of a product or elucidation of the
mechanism by which that product functions does not render the old product
again patentable simply because those practicing the product may not have
appreciated the property or the mechanism. See, e.g., In re Spada, 911 F.2d
705, 707, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); Titanium
Metals Corp. v. Banner, 778 F.2d 775, 782-83, 227 USPQ 773, 779 (Fed.
Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1548,
220 USPQ 303, 309 (Fed. Cir. 1983) (“[I]t is . . . irrelevant that those using
the invention may not have appreciated the results[,] . . . [otherwise] it would
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be possible to obtain a patent for an old and unchanged process. [Citations
omitted.]”); In re Skoner, 517 F.2d 947, 950-51, 186 USPQ 80,
82-83 (CCPA 1975) (“Appellants have chosen to describe their invention in
terms of certain physical characteristics . . . . Merely choosing to describe
their invention in this manner does not render patentable their method which
is clearly obvious in view of [the reference].” (citation omitted)).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Walton, Nakamura, and Martinot-Lagarde with
Appellants’ countervailing evidence of and argument for nonobviousness,
and conclude that the claimed invention encompassed by appealed claims
1 through 7, 27 through 34, and 36 through 43 would have been obvious as a
matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
OTHER ISSUES
In view of our affirmance of the decision of the Primary Examiner, we
decline to exercise our authority under 37 C.F.R. § 41.50(b) (2006) and enter
a new ground of rejection of pending claims 8, 35, and 44 (see above note 1)
over the combined teachings of Walton, Nakamura, and
Martinot-Lagarde, as we considered this combination of references above,
leaving it to the Examiner to consider this matter upon any further
examination of the pending claims in this Application upon disposition of
this appeal.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).
AFFIRMED

clj

Hewlett Packard Company
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