Ex Parte WADA

Patent Trial and Appeal Board

May 7, 2018

14017796 (P.T.A.B. May. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/017,796 09/04/2013 MitsuoWADA
22850 7590 05/09/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
421134US99CONT 5595
EXAMINER
LE, HOA VAN
ART UNIT PAPER NUMBER
1737
NOTIFICATION DATE DELIVERY MODE
05/09/2018 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):
patentdocket@oblon.com
oblonpat@oblon.com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUO WADA
Appeal 2016-008287
Application 14/017,796
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 3, 4, 9, 10, and 15-192 under 35 U.S.C.
§ 103(a) over Wada (JP 2010-139645, published June 24, 2010 as translated)
with Koichi (JP 07-036203, published February 7, 1995 as translated). An
oral hearing was conducted on May 2, 2018.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
1 Appellant is the applicant, Mitsubishi Chemical Corporation, which is also
stated to be the real party in interest (Appeal Br. 1 ).
2 The Examiner objected to claims 11 and 12 as being dependent upon a
rejected base claim, but would be allowable if rewritten in independent form.
Final Act. 5. Accordingly, these claims are not before us for review on
appeal.
Appeal 2016-008287
Application 14/017,796
We AFFIRM.
Independent claims 3 and 4 are illustrative of the subject matter on
appeal:
Claim 3. An electrophotographic photoreceptor
compnsmg:
a conductive support; and
at least a photosensitive layer formed over the support,
wherein the photosensitive layer comprises:
a compound represented by formula (2); and
oxytitanium phthalocyanine having a crystal form
which, when examined by X-ray powder diffractometry
using a CuKa characteristic X-ray line, gives a spectrum
which shows diffraction peaks at Bragg angles (28 ±
0.2°) of at least 24.l 0 and 27.2:
Fornni!a (2)
wherein R9 and R 10 each independently represent an alkyl
group, and R11 to R17 each independently represent a hydrogen
atom, an alkyl group, an aryl group, or an alkoxy group, and n2
represents an integer of 2-5, and 1 and m each independently
represent an integer of 1-5.
2
Appeal 2016-008287
Application 14/017,796
Appeal. Br. 14 (Claims App'x).
Claim 4. The electrophotographic photoreceptor
according to claim 3, wherein the compounds represented by
formula (2) are a positional-isomer mixture obtained by mixing
compounds of different structures each represented by the
formula (2).
Appeal. Br. 15 (Claims App'x).
Appellant argues all of the claims except dependent claim 4 as a group
(Appeal Br. 5-10). Accordingly, all the claims stand or fall with claim 3,
except for claim 4, which we address separately below.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellants'
claims is unpatentable over the applied prior art. We sustain the Examiner's
§ 103 rejection essentially for the reasons set out by the Examiner in the
Answer.
We add the following primarily for emphasis.
Claim 3
Appellant's principal argument in the Brief is unpersuasive for
reasons well stated by the Examiner (Ans. 5, 6; Reply Br. 2 (Appellant
admits that there is no limit on the molecular weight of additional charge
transporting materials in Wada)). In the Reply Brief, Appellant argues for
the first time that the compounds encompassed by claim 3 exhibit
3
Appeal 2016-008287
Application 14/017,796
"unexpectedly superior results" (Reply Br. 3). Any new arguments and new
facts relied upon in the Reply Brief which were not raised or relied upon in
the Appeal Brief will not be considered by the Board unless good cause is
shown. 37 C.F.R. § 41.37(c)(l)(iv) ("Except as provided for in§§ 41.41,
41.47 and 41.52, any arguments or authorities not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal.").
In any event, it is well established that the burden of showing
unexpected results rests on the person who asserts them by establishing that
the difference between the claimed invention and the closest prior art was an
unexpected difference. It is not enough for the Appellants to show that the
results in the compared examples differ. The difference must be shown to
be an unexpected difference. See In re Freeman, 474 F.2d 1318, 1324
(CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellant
does not direct us to any statement in the Specification indicating that the
results would have been unexpected by one of ordinary skill in the art.
Appellant has provided mere attorney argument to that effect, and such
arguments of counsel cannot take the place of evidence. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315
(CCPA 1979); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978).
Further, the showing of unexpected results must be commensurate in scope
with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir.
2003). Appellant has not shown that the inventive Specification examples
are commensurate in scope with the breadth of any of the claims on appeal,
and therefore, the Specification examples are not persuasive evidence of
nonobviousness.
4
Appeal 2016-008287
Application 14/017,796
Dependent Claim 4
It has also been established that "the [obviousness] analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled
that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
With respect to claim 4, Appellant argues that Koichi does not
expressly teach a mixture of its positional isomer compounds 7 6 and 77, and
"offers absolutely no guidance" to arrive at such a mixture (Reply Br. 4;
Appeal Br. 11 ). To the contrary, Koichi expressly lists these two
compounds as charge transport materials, and both Koichi and Wada
expressly teaches that mixtures of known charge transport materials may be
used (Koichi i-fi-161, 62; Wada i-f 143).
Merely because a prior art reference discloses a multitude of effective
compositions does not render any particular formulation less obvious.
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(affirming obviousness of composition selected from among more than 1200
compositions disclosed in patent). 3 Furthermore, one of ordinary skill in the
3 Cf Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir.
2005) ("This court rejects the notion that one of [ 14 listed] ingredients
cannot anticipate because it appears without special emphasis in a longer
list."); In re Gleave, 560 F.3d 1331, 1333 (Fed. Cir. 2009) (the Federal
Circuit expressly addressed the issue of lists of large numbers of
5
Appeal 2016-008287
Application 14/017,796
art would have readily inferred that the use of a mixture of two or more
known charge transport materials would have also been suitable, as indeed
expressly taught in each of Wada and Koichi. Cf In re Kerkhoven, 626 F.2d
846, 850, (CCPA 1980) ("[i]t is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose."). Similar to the situation in Merck, the artisan of
ordinary skill need only make two choices from a list explicitly set forth in
Koichi to select an appropriate mixture. Thus, in our view, one of ordinary
skill would have considered the addition of both compounds 7 6 and 77
obvious from the explicit teaching, and list, set out in Koichi. See Merck,
874 F.2d at 806--07.
Appellant's arguments that the applied prior art does not teach or
suggest the use of both compounds 76 and 77 of Koichi as a known mixture
for use in Wada is not persuasive of reversible error. KSR Int'! Co., 550
U.S. at 417 ("the predictable use of prior art elements according to their
established functions" is normally prima facie obvious).
Accordingly, we affirm the Examiner's prior art rejection of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
compounds, where the "list includes more than 1400 sequences," and found
that "Wraight expressly lists every possible ... sequence in IGFBP-2, and
under our precedent, this list anticipates Gleave's claims." Id. at 1338).
In the instant case, the rejection is obviousness, not anticipation, so it is only
necessary that the teaching of the applied prior art render obvious the use of
a mixture of compounds 76 and 77.
6
Appeal 2016-008287
Application 14/017,796
DECISION
The Examiner's§ 103 rejection is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
7