Ex Parte KANG et al

Patent Trial and Appeal Board

Nov 22, 2017

13175133 (P.T.A.B. Nov. 22, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/175,133 07/01/2011 Hyun A. KANG PNK0842US 2044
23413 7590 11/27/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street SCHOENHOLTZ, JOSEPH
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
2893
NOTIFICATION DATE DELIVERY MODE
11/27/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HYUN A. KANG, EUN JOO JANG, YOUNG HWAN KIM,
SHIN AE JUN, and HYO SOOK JANG
Appeal 2016-002269
Application 13/ 175,13s1
Technology Center 2800
Before CHUNG K. PAK, N. WHITNEY WILSON, and JULIA HEANEY,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants request review pursuant to 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—3, 7, 8, 10-26, 30, and 32—57 of
Application 13/175,133. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 Appellants identify the real party in interest as Samsung Electronics Co.,
Ltd. App. Br. 5.
2 This Decision refers to the Specification filed July 1, 2011, as amended
July 15, 2014 (“Spec.”), Final Action dated Dec. 16, 2014 (“Final Act.”),
Appeal Brief dated July 15, 2015 (“App. Br.”), Examiner’s Answer dated
Oct. 19, 2015 (“Ans.”), and Reply Brief dated Dec. 21, 2015 (“Reply Br.”)
Appeal 2016-002269
Application 13/175,133
BACKGROUND
The subject matter on appeal relates to a composition for a light
emitting particle-polymer composite. App. Br. 6. The light emitting
particles of the composite are semiconductor nanocrystals, also known as
quantum dots. Spec. 19,11. 11—22. The composite also comprises a first
monomer including at least three thiol groups each located at a terminal end,
and a second monomer including at least two unsaturated carbon-carbon
bonds each located at a terminal end. App. Br. 6.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, is illustrative of the subject matter on appeal:
1. A composition for a light emitting particle-polymer
composite, the composition comprising:
a first light emitting particle;
a first monomer including at least three thiol groups, each
located at a terminal end of the first monomer; and
a second monomer including at least two unsaturated
carbon-carbon bonds, each located at a terminal end of the
second monomer,
wherein the first light emitting particle consists of a
semiconductor nanocrystal comprising a Group II-VI
compound, a Group III-V compound, a Group IV-VI
compound, or a combination thereof, and
wherein the first light emitting particle has a core/shell
structure having a first semiconductor nanocrystal being
surrounded by a second semiconductor nanocrystal, and the
first semiconductor nanocrystal being different from the second
semiconductor nanocrystal
wherein the first monomer is represented by the
following Chemical Formula 1-1:
Chemical Formula 1-1
2
Appeal 2016-002269
Application 13/175,133
R^'Ya /Yb' -r
Rc—Y''^ XY^'Rd
wherein, in Chemical Formula 1-1, LI’ is carbon, a
substituted or unsubstituted C6 to C30 arylene group, a
substituted or a unsubstituted C3 to C30 heteroarylene group, a
substituted or unsubstituted C3 to C30 cycloalkylene group, or
a substituted or unsubstituted C3 to C30 heterocycloalkylene
group;
each of Ya to Yd is independently a substituted or
unsubstituted Cl to C30 alkylene group; a substituted or
unsubstituted C2 to C30 alkenylene group; or a Cl to C30
alkylene group or a C2 to C30 alkenylene group wherein at
least one methylene group is replaced by sulfonyl, carbonyl,
ether, sulfide, sulfoxide, ester, amide of formula -C(=0)NR-
wherein RI hydrogen or a Cl to CIO alkyl group, imine of
formula -NR- wherein R is hydrogen or a Cl to CIO alkyl
group, or a combination thereof; and
Ra to Rdare R'or -SH, provided that at least three of Rato
Raare -SH and
R1 is hydrogen, a substituted or unsubstituted Cl to C30
alkyl group, a substituted or unsubstituted C6 to C30 aryl
group, a substituted or unsubstituted C3 to C30 heteroaryl
group, a substituted or unsubstituted C3 to C30 cycloalkyl
group, a substituted or unsubstituted C3 to C30
heterocycloalkyl group, a hydroxyl group, -NH2, a substituted
or unsubstituted Cl to C30 amine group of formula -NRR’
wherein R and R/ are each independently hydrogen or a Cl to
C30 alkyl group, an isocyanate group, an isocyanurate group, a
(meth)acrylate group, a halogen, -ROR' wherein R is a
substituted or unsubstituted Cl to C20 alkylene group and R' is
hydrogen or a Cl to C20 alkyl group, an acyl halide of formula
RC(0)X wherein R is a substituted or unsubstituted alkylene
group and X is a halogen, -C(=0)0R' wherein R' is hydrogen
or a Cl to C20 alkyl group, -CN, or -C(=0)0NRR' wherein R
and R' are each independently hydrogen or a Cl to C20 alkyl
group;
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Application 13/175,133
wherein the second monomer is represented by the
following Chemical Formula 2:
Chemical Formula 2
wherein, in Chemical Formula 2,
X is an acrylate group, a methacrylate group or a C2 to
C30 alkenyl group;
R2 is hydrogen, a substituted or unsubstituted Cl to C30
alkyl group, a substituted or unsubstituted C6 to C30 aryl
group, a substituted or unsubstituted C3 or C30 heteroaryl
group, a substituted or unsubstituted C3 to C30 cycloalkyl
group, a substituted or unsubstituted C3 to C30
heterocycloalkyl group, a hydroxyl group, -NH2, a substituted
or unsubstituted Cl to C30 amine group of formula—NRR'
wherein R and R' are each independently hydrogen or a Cl to
C30 alkyl group, an isocyanate group, an isocyanurate group, a
(meth)acrylate group, a halogen, -ROR' wherein R is a
substituted or unsubstituted Cl to C20 alkylene group and R' is
hydrogen or a Cl to C20 alkyl group, an acyl halide of formula
—RC(0)X wherein R is a substituted or unsubstituted alkylene
group and X is a halogen, -C(=0)0R' wherein R is hydrogen or
a Cl to C20 alkyl group, -Cn, or -C(=0)0NRR' wherein R and
R' are each independently hydrogen or a Cl to C20 alkyl
group;
L2 is a single bond, a substituted or unsubstituted Cl to
C30 alkylene group, a substituted or unsubstituted C6 to C30
arylene group, or a substituted or unsubstituted C3 to C30
heteroarylene group;
Y2 is a single bond; or a substituted or unsubstituted Cl
to C30 alkylene group; or a Cl to C30 alkylene group wherein
at least one methylene group is replace by a sulfonyl, a
carbonyl, an ether, a sulfide, a sulfoxide, an ester, an amide of
formula -C(=0)NR-wherein R is hydrogen or a Cl to CIO alkyl
k4
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Application 13/175,133
group, an imine of formula —NR- wherein R is hydrogen or a
Cl to CIO alkyl group, or a combination thereof;
n is an integer of 1 or more;
k3 is an integer of 0 to 1 or more;
k4 is an integer of 1 or more;
the sum of n and k4 is an integer of 3 or more;
n does not exceed the valance of Y2; and
k3 and k4 does not exceed the valence of the L2.
THE REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1-3, 8, 10-14, 16, 18, 2A-26, 31-35, 37, 38, 44—51, and
54—57 are rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Cheon3 and Hoyle.4 Final Act. 22.
2. Claims 7 and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Cheon, Hoyle, and
Kawauchi.5 Final Act. 40.
3. Claims 15, 36, 52, and 53 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Cheon, Hoyle, and Jang.6
Final Act. 41.
3 Cheon et al., US 2008/0173886 A1 (pub. July. 24, 2008) (“Cheon”).
4 Hoyle, Charles E., Thiol-Enes: Chemistry of the Past with Promise for the
Future, Journal of Polymer Science: Part A; Polymer Chemistry, Vol. 42,
pp. 5301 -5338 (2004) (“Hoyle”).
5 Kawauchi, JP-07165859 (pub. June 27, 1995) (“Kawauchi”).
6 Jang et al., US 2008/0252209 Al (pub. Oct. 16, 2008) (“Jang”).
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4. Claims 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Cheon, Hoyle, and Gross.7 Final Act. 43.
5. Claims 18, 19, 21—23, 38, 39, and 41—43 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Cheon,
Hoyle, and Konishi.8 Final Act. 44.
6. Claims 20 and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Cheon, Hoyle, Konishi, and
Clear Plastic.9 Final Act. 48.
DISCUSSION
Appellants argue independent claims 1 and 24 together, based on their
common limitations, and do not separately argue the dependent claims,
except for claims 8 and 14. App. Br., generally. We therefore limit our
discussion to claims 1, 8, and 14. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Having considered Appellants’ arguments in light of the appeal record, we
are not persuaded that Appellants identify reversible error. Accordingly, we
affirm the rejections generally for the reasons set forth in the Final Action ||
38—126 and Examiner’s Answer, which we adopt as our own. We add the
following primarily for emphasis.
Cheon teaches a solid state lighting device containing quantum dots
dispersed in polymeric acrylates. Cheon, Abstract. The Examiner relies on
7 Gross et al., US 6,605,691 B1 (pub. Aug. 12, 2003) (“Gross”).
8 Konishi, M., Enhancement of photoluminescence ofZnS:Mn nanocrystals
by hybridizing with polymerized acrylic acid, Journal of Luminescence 93
1-8 (2001) (“Konishi”).
9 Clear Plastic Supplies, downloaded from URL
http://www.clearplasicsupplies.co.uk/material.htm on 12-13-2012 (“Clear
Plastic”).
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Cheon as teaching the first light emitting particle of claim 1, and using an
“encapsulant layer (typically urethane acrylate) that reduces oxygen
permeability” which is typically associated with device degradation. Final
Act. 142, citing Cheon 169. The Examiner finds that Cheon teaches cross-
linking the acrylate groups by a typical reaction such as Michael addition.
Final Act. 145 (citing Cheon | 51). The Examiner further relies on Cheon as
teaching the claimed second monomer including at least one unsaturated
carbon-carbon bond each located at a terminal end, and acknowledges that
Cheon does not explicitly disclose the claimed first monomer including at
least three thiol groups. Final Act. || 46-47.
Hoyle is a review of thiol-ene chemistry and its applications,
including for clear protective coatings (Hoyle 5329) and optical lenses {id. at
5327). The Examiner relies on Hoyle as teaching a polymer with a first
monomer including at least three thiol groups, and a second monomer
including at least two unsaturated carbon-carbon bonds, as recited in claim
1. Final Act. || 49—50. The Examiner further finds that polymerization of
thiol-ene systems as taught by Hoyle involves a Michael addition reaction
that forms a thioether group serving as an antioxidant stabilizer that
improves immunity to oxidation. Final Act. || 53, 54, 56—59 (citing Hoyle
5317, 5319, 5329).
The Examiner determines that a person of ordinary skill in the art
would have been motivated to reduce oxygen permittivity by using
polyurethane acrylate formed by Michael addition as taught by Cheon, based
on Hoyle’s teaching concerning antioxidant stabilizers, in order to eliminate
oxygen radicals and improve device stability. Final Act. || 57—58. The
Examiner further determines it would have been obvious to a person of
ordinary skill in the art to substitute Cheon’s polyurethane acrylate host with
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a Michael addition thiol-acrylate host as taught by Hoyle, in order to
improve immunity to oxygen induced degradation as taught by Cheon. Id.
159.
Reaction Mechanisms
Appellants argue that the Examiner’s rationale for modifying Cheon
in view of Hoyle is insufficient because Hoyle’s reaction “proceeds by an
entirely different mechanism than a conjugate addition reaction, which the
Examiner alleges is equivalent to the Michael addition of Cheon.” App. Br.
17. Appellants argue that because Cheon’s fundamental reaction mechanism
(i.e., an addition reaction involving addition of a nucleophile to an activated
double bond) differs from Hoyle’s radical polymerization reaction, a person
of ordinary skill in the art could only have achieved the Examiner’s
proposed substitution by selective combination of Cheon and Hoyle, and
thus would not have had a reasonable expectation of success. Id. Appellants
further argue that a person of ordinary skill would not have had a reasonable
expectation of success because Cheon’s reaction mechanism produces
products with a different structure than would result from a radical
polymerization process. App. Br. 18—19. Appellants further argue that
Mather10 supports their position that Hoyle’s thiol-ene polymerization is not
a Michael addition reaction, because Mather teaches that Michael addition
involves nucleophilic addition. Id. 19—20.
Appellants’ argument is not persuasive of reversible error. The
Examiner provides numerous reasons why a person of ordinary skill in the
10 Mather, Brian D. et al., Michael addition reactions in macromolecular
design for emerging technologies, Prog. Polym. Sci. 31, pp. 487-531 (2006)
(“Mather”).
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art would have used Hoyle’s thiol-ene matrix material in a light emitting
particle-polymer composite, such as resistance to UV and thermal yellowing,
and thermal stability. Final Act. || 53—58; Ans. 7—8. Appellants’ arguments
regarding the differences in reaction mechanisms of Hoyle and Cheon do not
persuade us that a person of ordinary skill in the art would not have had a
reasonable expectation of success in light of the advantages taught by Hoyle,
which teaches a composition of the claimed first and second monomers.
Based on a preponderance of the evidence of record, Appellants have not
shown that characterizations of reaction mechanisms in the prior art as
conjugate addition or Michael addition would have led a person of ordinary
skill in the art to overlook the numerous reasons for using Hoyle’s thiol-ene
polymer in Cheon’s LED lighting device.
Hindsight
Appellants further argue that the Examiner’s rationale for modifying
Cheon in view of Hoyle impermissibly uses hindsight. App. Br. 24—27.
Specifically, Appellants argue that Hoyle does not teach that oxygen
scavenging would be available after polymerization has ceased, and
therefore a person of ordinary skill in the art would not expect oxygen
scavenging to be available in a cured matrix such as Cheon’s matrix
material, and moreover, Cheon also does not teach oxygen scavenging.
App. Br. 27, 31. Appellants further argue that the Examiner erroneously
conflates the properties of oxidative stability with oxygen permeability, as
evidenced by the Examiner’s reliance on Cheon 169 teaching of “an
encapsulant layer (typically urethane acrylate) that reduces oxygen
permeability” in support of a reason to combine with Hoyle’s teaching of
oxidative stability. App. Br. 29-30.
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The Examiner responds by noting that Hoyle suggests that anti­
oxidant properties of thiol-enes persist at least for a month after curing. Ans.
9-10, 12 (citing Hoyle 5316). Appellants do not dispute this finding. Reply
Br. 4. The Examiner further notes that Zonca11 also teaches that thiol-ene
systems are oxygen and oxygen radical deficient, and relies on that teaching
as consistent with Cheon’s teaching that “oxygen and oxygen radicals are
bad news for quantum dot lifetime” to determine that a person of ordinary
skill would use materials such as taught in Hoyle and Zonca to minimize the
presence of oxygen and oxygen radicals to improve quantum dot lifetime.
Ans. 9—10. This reasoning is well supported by the record and persuades us
that the Examiner has provided “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
Appellants additionally argue that the rejection impermissibly uses
hindsight because Hoyle does not teach that thiol-enes would be particularly
suitable for LED host matrices. App. Br. 28. This argument is not
persuasive of reversible error because the Examiner relies on Cheon as
teaching an LED host. Final Act. 141. Similarly, Appellants’ argument
(see id.) that Hoyle’s teaching of a thiol-ene system including fumed silica
particles forming a physical gel would be unfavorable for preparation of the
quantum dot polymer composite of Bawendi12 is not persuasive because the
Examiner does not rely on Bawendi in the Final Rejection.
11 Zonca Jr., M. R., LED-Induced Thiol-Ene Photopolymerizations, Part A —
Pure and Applied Chemistry, Vol. A41, No. 7, pp. 741-756, (2004)
(“Zonca”).
12 Bawendi et al., US 6,426,513 B1 (iss. Jul. 30, 2002) (“Bawendi”).
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Unexpected Results
Appellants argue that evidence of unexpected results relating to the
luminance and photoconversion efficiency of the claimed composition
overcomes the Examiner’s determination of unpatentability under 35 U.S.C.
§ 103(a). App. Br. 32—54. Specifically, Appellants argue that the Examiner
erred by finding irrelevant Appellants’ comparative examples, which use a
polydimethylsiloxane polymer resin. App. Br. 32—33. The Examiner takes
the position that Cheon is the closest prior art because it uses an acrylate
host. Ans. 13. We are not persuaded that Appellants have met their burden
to show that the difference between the claimed invention and the closest
prior art is an unexpected difference, or that the evidence of unexpected
results is reasonably commensurate with the scope of the claims.
Appellants rely on Specification Examples 7, 8, 10, and 14, the
Declaration of Hyun A. Kang dated July 15, 2014 (including new Examples
24—28), and the Declaration of Hyun A. Kang dated November 24, 2014
(including Examples 29 and 30) as evidence of unexpected results. App. Br.
32-46. Those Examples provide results relating to luminance and
photoconversion efficiency for 11 compositions purportedly commensurate
with the scope of the claims. The data presented, however, show that among
the 11 compositions, only three distinct thiol-ene compounds were used for
the “first monomer” of the composition. See App. Br. 32 (Table 1), 37
(Table 2), 39 (Table 3), and 45 (Table 5). The “first monomer” described in
claim 1 is far broader and encompasses many more compounds than the
three compounds for which Appellants present results. Accordingly, the
experimental data relied on by Appellants is not commensurate in scope with
the degree of protection sought by the claims. See In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983) (“objective evidence [of] non-obviousness must be
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Application 13/175,133
commensurate in scope with the claims which the evidence is offered to
support” ); see also In re Peterson, 315 F.3d 1325, 1329—31 (Fed. Cir. 2003)
(holding that evidence of unexpected results for several data points within
claimed range of “about 1 to 3 percent” was not commensurate in scope).
Further, the Examiner’s findings that the purportedly unexpected
results of Specification Examples 8 and 10 were previously taught in Cheon
are well supported. Ans. 13—17. The Examiner’s findings concerning the
data presented for the red quantum dot source material are supported by
Cheon’s Fig. 10, which shows stability monitored over 4000 hours, and
teaches results consistent with Specification Example 8. Ans. 16. Further,
the Examiner’s finding that Appellants’ luminescence data for green
emission is uncertain because a control was not run (Ans. 16, citing Spec.
Exs. 24—25) is also supported by the record, and Appellants do not address
this in reply. Reply Br., generally. Accordingly, Appellants’ examples do
not establish an unexpected difference between the claimed invention and
the closest prior art, as the law requires. See In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991)(“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.”).
Dependent Claims 8 and 14
Claim 8 recites the composition of claim 1, wherein the first monomer
comprises at least one of four chemical formulas, including pentaerythritol
tetrakis(3-mercaptopropionate). App. Br. 55. Pentaerythritol tetrakis(3-
mercaptopropionate) is the first monomer in the composition of
Specification Examples 7, 8, and 10 as well as several of the Examples in
the Declarations of Hyun A. Kang. Appellants argue that the Examples
show unexpected improvement in luminance and photoconversion efficiency
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when the first monomer is pentaerythritol tetrakis(3-mercaptopropionate).
App. Br. 55—56. Appellants do not address, however, the “second
monomer” of claim 1, which is far broader and encompasses many more
compounds than the “second monomer” compounds for which Appellants
present results in Tables 1—3 and 5 of the Appeal Brief. Indeed, the “second
monomers” listed in Tables 1—3 and 5 include only four different
compounds. Accordingly, the experimental data relied on by Appellants is
not commensurate in scope with the degree of protection sought by claim 8.
Claim 14 depends from claim 1 and recites that the second monomer
comprises at least one of three chemical formulas, including 1,3,5 -triallyl-
l,3,5-triazine-2,4,6(lH,3H,5H)-trione. App. Br. 56—57. Appellants’
argument that their comparative test data shows unexpected results is not
persuasive for the same reasons as discussed above for claim 1, because the
“first monomer” recited in claim 1 is also in claim 14.
SUMMARY
We affirm the rejections of claims 1—3, 7, 8, 10-26, 30, and 32—57.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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