Ex Parte Grushin et al

Board of Patent Appeals and Interferences

Nov 3, 2008

10696048 (B.P.A.I. Nov. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VLADIMIR GRUSHIN,
DANIEL D. LECLOUX,
VIACHESLAV A. PETROV,
and YING WANG
____________

Appeal 2008-4124
Application 10/696,048
Technology Center 2800
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Decided: November 3, 2008
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and LINDA M.
GAUDETTE, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 12-18. A copy of
illustrative claims 12 and 16 are appended to this decision.
The Examiner relies upon the following references as evidence of
obviousness:
Appeal 2008-4124
Application 10/696,048

Hamprecht US 6,169,184 B1 Jan. 2, 2001
Forrest US 6,894,307 B2 May 17, 2005

Djurovich et al., Ir(III) Cyclometalated Complexes as Efficient
Phosphorescent Emitters in Polymer Blend and Organic LEDs," Polymer
Preprints, Vol. 1, No. 1, 770-71 (2000).

Dedeian et al., "A New Synthetic Route to the Preparation of a Series of
Strong Photoreducing Agents: fac Tris-Ortho-Metalated Complexes of
Iridium (III) with Substituted 2-Phenylpyridines," Inorg. Chem., Vol. 30,
1685-687 (1991).

Appellants' claimed invention is directed to the recited compounds
and their use in an electronic device.
Appealed claims 16-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hamprecht in view of Forrest and Djurovich.
Claims 12-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over the stated combination of references further in view of Dedeian.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we find that the subject matter of
claim 12 would have been obvious to one of ordinary skill in the art in view
of the applied prior art. However, we will not sustain the Examiner's
rejection of claims 13-18 which are directed to an electronic device.
We consider first the Examiner's rejection of claim 12 which defines
compounds having one of nine recited structures. Hamprecht discloses
substituted phenylpyridines that, like Appellants' compounds, have methyl
substituents on the heterocyclic ring and fluorine substituents on the phenyl
ring. In particular, the structural formula of Hamprecht encompasses
compounds wherein the only distinction between Appellants' first recited
compound is the placement of the methyl substituent on the heterocyclic
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Appeal 2008-4124
Application 10/696,048

ring. Hamprecht teaches substituted phenylpyridines wherein the methyl
substituent is located on the adjacent carbon relative to the first formula
recited in claim 12.
It is well settled that a prima facie case of obviousness exists when a
claimed compound is sufficiently similar in structure to a prior art compound
that one of ordinary skill in the art would have a reasonable expectation that
the claimed and prior art compounds share similar properties. See In re
Hoch, 428 F.2d 1341, 1344 (CCPA 1970). In the present case, in view of
the substantial structural similarity between the first recited compound of
claim 12 and the substituted phenylpyridines encompassed by Hemprechts'
formula, we are satisfied that one of ordinary skill in the art would have
reasonably expected that Appellants' substituted phenylpyridine would be an
effective herbicide, as suggested by Hamprecht. In general, a different use
of an obvious compound, which use was not taught in the art, does not speak
to the nonobviousness of the compound. In re Shetty, 566 F.2d 81, 85
(CCPA 1977); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972); In re
Hoch, supra. Significantly, claim 12 on appeal defines compounds per se.
Appellants may not gain patent protection for a compound that would have
been obvious to one of ordinary skill in the art by finding another use for the
compound.
The rejection of claims 13-18, which are drawn to an electronic
device, is another matter. We agree with Appellants that Hamprecht and the
other cited references would have provided no teaching or suggestion of
using the herbicides of Hamprecht in an electronic device, let alone
modifications of Hemprechts' substituted phenylpyridines in accordance
with the applied secondary references. We concur with Appellants that
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Application 10/696,048

Hemprecht is non-analogous art with respect to the claimed electronic
device and the teachings of the secondary references. We find no merit in
the Examiner's rationale that the applied references are all in the same field
of endeavor inasmuch as they are directed to "organic compounds that
utilize phenylpyridines ligands" (Ans. 8, first para.). Manifestly, simply
because compounds are structurally similar does not result in them being in
the same field of endeavor. Clearly, a reference disclosure directed to
herbicides is not in the same field of endeavor as the electronic applications
of the secondary references applied by the Examiner.
In conclusion, based on the foregoing, the Examiner's rejection of
claim 12 is sustained, but we are constrained to reverse the Examiner's § 103
rejections of claims 13-18. Accordingly, the Examiner's decision rejecting
the appealed claims is affirmed-in-part.
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)(effective
Sept. 13, 2004).
AFFIRMED-IN-PART

cam

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Appeal 2008-4124
Application 10/696,048

APPENDED CLAIMS 12 AND 16

12. A compound having one of the following structures:

16. An electronic device comprising an organic layer comprising at
least one Ir(III) compound made from precursor compounds having the
following structure:

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Appeal 2008-4124
Application 10/696,048

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