Ex parte TOKAILIN et al.

Board of Patent Appeals and Interferences

Jan 4, 1999

08087134 (B.P.A.I. Jan. 4, 1999)

Application for patent filed July 2, 1993. According to1
appellants, the application is a continuation of Application
07868,726, filed April 14, 1992, now abandoned; which is a
division of Application 07.490,337, filed March 8, 1990, now
U.S. Patent 5, 130,603.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HIROSHI TOKAILIN, HISAHIRO HIGASHI
and CHISHIO HOSOKAWA
__________
Appeal No. 96-1122
Application 08/087,1341
___________
ON BRIEF
___________
Before WINTERS, DOWNEY and OWENS, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
Appeal No. 96-1122
Application 08/087,134
2
claims 2, 3, 11, 22 and 23, which are all of the claims
remaining in the application.
THE INVENTION
Appellants claim an aromatic dimethylidyne compound
having a specified general formula. Appellants state
(specification, page 1) that the compound is useful as an
emitting material in an
electrolu minescence device.
Claim 2 is illustrative and
reads as follows:
2. An aromatic dimethylidyne compound of the formula:
wherein X and Y may be the same or different and are each an
alkyl group having 1 to 4 carbon atoms, a phenyl group, a
substituted phenyl group, a cyclohexyl group, a substituted
cyclohexyl group, a naphthyl group, a substituted naphthyl
group, a pyridyl group or a substituted pyridyl group, wherein
the substitutent [sic]is an alkyl group having 1 to 4 carbon
atoms, an alkoxy group having 1 to 4 carbon atoms, or a phenyl
group, and each substituted group may be substituted by a
plurality of said substituent groups, and -Ar'- is
Appeal No. 96-1122
Application 08/087,134
3
THE REFERENCES
Matsunaga et al. (Matsunaga) 3,980,713 Sep. 14,
1976
Ueda 4,971,874 Nov. 20,
1990
THE REJECTIONS
Claims 2, 3 and 11 stand rejected under 35 U.S.C.
§§ 102(a) and 102(e) as being anticipated by Ueda. Claims 2,
3, 11, 22 and 23 stand rejected under 35 U.S.C. § 103 as being
obvious over Ueda in view of Matsunaga.
OPINION
We have carefully considered all of
the arguments advanced by appellants and the examiner and
agree with appellants that the aforementioned rejections are
not well founded. Accordingly, we reverse these rejections.
Appeal No. 96-1122
Application 08/087,134
4
Under the provisions of 37 CFR
§ 1.196(b), we introduce a new ground of rejection of claims
2, 3, 11, 22 and 23.
Rejection under 35 U.S.C. §§ 102(a) and (e) over Ueda
Ueda discloses an electrophotographic photosensitive
member having a photosensitive layer which comprises, as a
main component, a styryl compound having a specified general
formula wherein group “A”, which corresponds to “Ar’” in the
formula in appellants’ claim 2, is “an alkylene group, an
aralkylene group, an arylene group or a bivalent heterocyclic
group, each of which may have a substituent” (col. 1, lines 9-
13; col. 1, line 53 - col. 2, line 9).
The examiner argues that “‘A’ may be aralkylene or
arylene, which reads on diphenylene, either of which may have
a substituent” (answer, page 3). As acknowledged by the
examiner (see id.), Ueda does not disclose that group “A” can
be diphenylene. Furthermore, the examiner has not explained,
and it is not apparent, why the disclosure in Ueda that group
“A” can be arylene, along with any preferences ascertainable
from the remainder of Ueda’s disclosure, would have led one of
Appeal No. 96-1122
Application 08/087,134
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ordinary skill in the art to “diphenylene”. See In re
Schaumann, 572 F.2d 312, 316, 197 USPQ 5, 9 (CCPA 1978); In re
Petering, 301 F.2d 676, 681, 133 USPQ 275, 279-80 (CCPA 1962).
Consequently, we do not sustain the examiner’s rejection under
35 U.S.C. §§ 102(a) and 102(e).
Rejection under 35 U.S.C. § 103 over
Ueda in view of Matsunaga
Matsunaga discloses fluorescent brighteners having a
generic formula, and discloses species of the formula which
differ from the compound in appellants’ claim 2 only in that
one of the end constituents of each of Matsunaga’s vinyl
radicals is hydrogen rather than one of the groups recited in
appellants’ claim 2 (abstract; cols. 15 and 16, formulas 59,
61 and 62). Matsunaga states that the fluorescent brighteners
“can be used for fibers, fabrics, textiles, film, sheet,
shaped articles, paint, ink etc.,” (col. 5, lines 45-48) made
of natural organic materials, semi-synthetic materials, and
synthetic organic materials (col. 5, lines 30-41).
The examiner’s statement of the rejection is as follows
(answer, pages 3-4):
Ueda does not explicitly teach the arylene as
Appeal No. 96-1122
Application 08/087,134
In the phrase “substitute Matsunga’s bisstyryl as Ueda’s2
arylene” in the above statement, it appears that “bisstyryl”
should be replaced by “biphenylene”.
6
being diphenylene. However, Matsunga [sic,
Matsunaga] discloses processes for the production of
bisstyryl compounds wherein a substituted aldehyde
is condensed with an aromatic, bis-phosphorous acid
diester or mono-phosphorous acid diester (column 1,
lines 5-50). It would have been obvious to one
skilled in the art to substitute Matsunga’s [sic]
bisstyryl as Ueda’s arylene because varying the
reactants of the condensation reaction of Matsunga
[sic] one would obtain the claimed reaction products
and Ueda’s reaction products because the basic
reactants are of the same or similar chemical
classes. In re Schwarze, 190 USPQ 294.[2]
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritsch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
would have suggested to one of ordinary skill in the art the
desirability of the modification. Id. at 1266, 23 USPQ2d at
Appeal No. 96-1122
Application 08/087,134
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1783-84.
We do not find such an explanation in the above statement
of the rejection. In the “response to argument” section of
the answer (page 4), the examiner argues that appellants
indicate on page 16 of the specification that “arylene”
includes “biphenylene”, and that appellants indicate on pages
19-21 of their specification that the same process is used to
produce essentially the same compounds claimed in the
references and by appellants. The examiner does not explain,
however, why the teaching from the prior art itself would have
fairly suggested, to one of ordinary skill in the art, use of
biphenylene as Ueda’s group “A”. See Rinehart, 531 F.2d at
1051, 189 USPQ at 147. Ueda is directed toward photosensitive
layers of electrophotographic photosensitive members (col. 1,
lines 9-13) and Matsunaga is directed toward fluorescent
brighteners “for fibers, fabrics, textiles, film, sheet,
shaped articles, paint, ink etc.” (col. 5, lines 45-48). The
examiner has provided no evidence that compounds which were
known to be useful as fluorescent brighteners were known to be
useful in photosensitive layers of electrophotographic
Appeal No. 96-1122
Application 08/087,134
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photosensitive members, or provided any other reason why the
references themselves would have motivated one of ordinary
skill in the art to use Matsunaga’s biphenylene group as
Ueda’s arylene. The motivation relied upon by the examiner
comes solely from appellant’s specification. Thus, the
examiner used impermissible hindsight when rejecting the
claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983); In re
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
Accordingly, we do not sustain the examiner’s rejection under
35 U.S.C. § 103.
Since no prima facie case of obviousness has been
established, we need not address the experimental results in
the declarations. See In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); Rinehart, 531 F.2d at
1052, 189 USPQ at 147.
New ground of rejection under 37 CFR § 1.196(b)
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection of claims 2, 3, 11, 22 and
23.
Appeal No. 96-1122
Application 08/087,134
9
Claims 2, 3, 11, 22 and 23 are rejected under the
judicially created doctrine of obviousness-type double
patenting over, respectively, claims 2, 3, 24, 16, and 17 of
U.S. Patent 5,130,603 to Tokailin et al. (Tokailin).
Tokailin claims electroluminescence devices comprising
light emitting materials which comprise specified compounds.
The compounds in appellants’ claims 2, 3, 11, 22 and 23 are
recited, respectively, in Tokailin’s claims 2 (where Ar’ is
biphenylene), 3, 24, 16, and 17. Hence, appellants’ claimed
compounds are unpatentable under the doctrine of obviousness-
type double patenting over the respective claims of Tokailin.
See In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 621-22
(CCPA 1970).
In the application which issued as the Tokailin patent,
i.e., Application 07/490,337, a restriction requirement was
made (paper no. 5) between a first group of claims directed
toward luminescent compounds and electroluminescence devices
thereof, and a second group directed toward a process for
making the luminescent compounds. Appellants elected the
first group and did not traverse the restriction requirement
Appeal No. 96-1122
Application 08/087,134
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(paper no. 8, page 14). Since the claims in the present
application are in the
elected group of the Tokailin application, an obviousness-type
double patenting rejection is appropriate regard less of the
restriction requirement.
DECISION
The rejections of claims 2, 3 and 11 under 35 U.S.C.
§§ 102(a) and 102(e) as being anticipated by Ueda, and claims
2, 3, 11, 22 and 23 under 35 U.S.C. § 103 as being obvious
over Ueda
in view of Matsunaga, are reversed. A new ground of rejection
has been entered under the provisions of 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
Appeal No. 96-1122
Application 08/087,134
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37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, 37 CFR § 1.196(b)
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 96-1122
Application 08/087,134
12
MARY F. DOWNEY )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
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