Ex Parte Wittek et al

Patent Trial and Appeal Board

Feb 15, 2019

14437244 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/437,244 04/21/2015
23599 7590 02/20/2019
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
Michael Wittek
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.
MERCK-4305 2294
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL WITTEK,
BRIGITTE SCHULER, and
LARS LIETZAU
Appeal2018-005217
Application 14/ 4 3 7,244
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-17, 21, 22, and 25-28. We have
jurisdiction under 35 U.S.C. § 6(b). 2
We AFFIRM.
1 Appellant is the Applicant, Merck Patent GmbH, which, according to the
Appeal Brief, is the real party in interest. Appeal Brief (Appeal Br. 1) filed
Nov. 3, 2017.
2 Our Decision additionally refers to the Specification filed Apr. 21, 2015
("Spec."), the Examiner's Answer dated Feb. 23, 2018 ("Ans."), and the
Reply Brief dated Apr. 23, 2018 ("Reply Br.").
Appeal2018-005217
Application 14/437,244
BACKGROUND
The subject matter on appeal relates to a liquid-crystalline medium
(see, e.g., claim 1). According to the Inventors, there is a demand for liquid
crystal displays that have various properties without exhibiting the
disadvantages of conventional liquid crystal displays ( e.g., angle dependence
for contrast and response times as well as insufficiently high specific
resistance of the liquid crystal mixture). Spec. 3:4--14, 4:19--23. The
Inventors disclose a liquid crystal medium comprising one or more
compounds so the medium has fast response times and low rotational
viscosities while having a high clearing point, high dielectric anisotropy, and
a low threshold voltage. Id. 5:26-36.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.
1. A liquid-crystalline medium comprising:
one or more compounds of the formula IA,
IA
in which
RA denotes a halogenated or unsubstituted alkyl or
alkoxy radical having 1 to 15 C atoms, where, in addition, one
or more CH2 groups in these radicals may each be replaced,
independently of one another, by, -C=C-, -CF20, -CH=CH-,
-<)- -<)<)- -0- -C0-0- or 0-CO- in such a way that 0
' ' ' ' atoms are not linked directly to one another,
XA denotes F, Cl, CN, SF5, SCN, NCS, a halogenated
alkyl radical, a halogenated alkenyl radical, a halogenated
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Application 14/437,244
alkoxy radical or a halogenated alkenyloxy radical, each having
up to 6 C atoms,
y 1-2 each, independently of one another, denote Hor F,
and
y 3-6 each denotes H; and
one or more compounds selected from the compounds of
formula XXIX
F' F
·······O
Ro--------(· K. 0 .
0 -
~x"
F XXIX
in which
R0 denotes a halogenated or unsubstituted alkyl or alkoxy
radical having 1 to 15 C atoms, where, in addition, one or more
CH2 groups in these radicals may each be replaced,
independently of one another, by, -C=C-, -CF20, -CH=CH-,
-0- -<)(>- -0- -C0-0- or 0-CO- in such a way that 0 ' . ' ' '
atoms are not linked directly to one another, and
X0 denotes F, Cl, CN, SF s, SCN, NCS, a halogenated
alkyl radical, a halogenated alkenyl radical, a halogenated
alkoxy radical or a halogenated alkenyloxy radical, each having
up to 6 C atoms.
REJECTIONS ON APPEAL
I. claims 1-12, 14--17, 21, 22, and 25-28 under 35 U.S.C.
§ I03(a) as being unpatentable over Czanta3 in view of
Wittek 4
'
II. claim 13 as being unpatentable under 35 U.S.C. § I03(a)
3 Czanta et al., US 2010/0127213 Al, published May 27, 2010 ("Czanta").
4 Wittek et al., US 2011/0001089 Al, published Jan. 6, 2011 ("Wittek").
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Application 14/437,244
over Czanta and Wittek and further in view of Bematz; 5
III. claims 1-12, 14--17, 21, 6 22, and25-28 as being
unpatentable under 35 U.S.C. § I03(a) over Wittek in
view of Lietzau; 7 and
IV. claim 13 as being unpatentable under 35 U.S.C. § I03(a)
over Wittek and Lietzau and further in view of Bematz.
DISCUSSION
Rejection I
Claims 1-12, 14--17, 21, 22, and 25-28 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Czanta in view of Wittek.
Appellant argues claims 1, 2, 5-8, 10, 12, 14--17, 21, 22, 25, and 26 as
a first group, claims 11 and 28 as a second group, claims 3 and 27 as a third
group, claim 4 as a fourth group, and claim 9 as a fifth group. Appeal Br. 3-
12. We select claims 1, 11, 3, 4, and 9 as representative of the respective
groups.
Claims 1, 2, 5-8, 10, 12, 14--17, 21, 22, 25, and 26
The Examiner finds Czanta discloses a liquid crystalline medium
comprising a component A that can be in the form of formula I. Ans. 3.
The Examiner finds an embodiment of Czanta's formula I, formula I"'B-3,
can have groups (L 11-L16) that can be hydrogen or fluorine. Id. at 3--4. In
5 Bematz et al., US 2009/0103011 Al, published Apr. 23, 2009 ("Bematz").
6 The Examiner lists claim 22 twice in the statement of the rejection (Ans. 9)
but sets forth a rejection for claims 21 and 22 (id. at 10). Appellant appears
to agree that claims 1-12, 14--17, 21, 22, and 25-28 are rejected over Wittek
and Lietzau. Appeal Br. 14.
7 Lietzau et al., US 2010/0127212 Al, published May 27, 2010 ("Lietzau").
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Application 14/437,244
view of this, the Examiner finds formula I"'B-3 corresponds to formula IA
of claim 1. Id. at 4, 23.
The Examiner finds Czanta does not disclose a compound
corresponding to formula XXIX of claim 1 but finds Wittek discloses a
liquid crystalline medium comprising formula I. Id. at 4. The Examiner
finds formula I-2, an embodiment of Wittek's formula I, is equivalent to
formula XXIX of claim 1. Id. The Examiner concludes it would have been
obvious to one of ordinary skill in the art to add Wittek's formula I-2 to
Czanta's composition to provide a liquid crystal display device with fast
response times and low rotational viscosities while also providing high
birefringence, a high clearing point, high dielectric anisotropy, and low
threshold voltage, as taught by Wittek. Id. at 5.
Appellant contends Czanta discloses a preference for substituents of
its formula to be fluorine and for a high degree of fluorination in its
formulas, which is consistent with Czanta's desire for media having a high
dielectric anisotropy. Appeal Br. 3--4; Reply Br. 2--4. Appellant further
notes that Czanta's examples use highly fluorinated compounds and
Czanta's Table Dis directed to highly fluorinated compounds. Appeal Br.
6-8. Appellant further asserts the rejection does not explain why one of
ordinary skill in the art would have selected Czanta's formula I"'B-3 from
the numerous formulas disclosed for Czanta's formula I, noting that Czanta
discloses that various other formulas are preferred. Appeal Br. 5---6; Reply
Br. 1-2.
Appellant's arguments are unpersuasive. Czanta discloses a liquid
crystalline media including a first component, component A, which can
comprise formula I. Czanta ,r,r 9-10. Czanta discloses that component A
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comprises "and very preferably entirely consists of' one or more of formulas
I', I", and I"'. Id. ,r 39. Czanta discloses an embodiment in which
component A comprises one or more compounds from formulas I'' 'B-1 to
I"'B-3, but "preferably of the formula I"'B-3." Id. ,r 55. Therefore, the
Examiner's findings and rejection are not based upon a general formula
containing variables (as in In re Baird, 16 F.3d 380, 381-82 (Fed. Cir.
1994)) or upon the disclosure of a class or genus encompassing various
species (as in In re Jones, 958 F.2d 347, 349 (Fed. Cir. 1992)), but upon the
reference's disclosure and preference for a formula that is encompassed by a
claimed formula (i.e., formula IA of claim 1 ). To the extent Czanta
discloses other preferred formulas, such disclosures do not negate Czanta's
disclosure of, and preference for, component A consisting of formula I'' 'B-
3.
With regard to the makeup of formula I'' 'B-3, Czanta discloses that
formula I'' ' has parameters according to the meanings set forth for formula I
(i.e., that parameters L 11-L 14 can also denote hydrogen or fluorine but
preferably fluorine) and parameters L 15 and L 16 can denote hydrogen or
fluorine but preferably denote fluorine. Id. ,r 19, 55. To the extent Czanta
discloses a preference for fluorinated compounds and discloses examples
using fluorinated compounds, such disclosures do not negate Czanta's
disclosure that parameters of formula I'' 'B-3 can be hydrogen instead of
fluorine. Disclosed examples and preferred embodiments do not constitute a
teaching away from a broader disclosure or non-preferred embodiments. In
re Susi, 440 F.2d 442,446 n.3 (CCPA 1971). Further, "the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
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considered." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (quoting In re Lamberti, 545 F.2d 747,750 (CCPA 1976)).
With regard to Wittek, Appellant argues the properties cited by the
Examiner to support the conclusion of obviousness are "very general in
nature and desirable in most liquid crystal media" and thus an insufficient
reason for one of ordinary skill in the art to have selected one of Wittek' s
specific compounds (i.e., formula I-2) from all of the possible compounds
for liquid crystal media. Appeal Br. 8-10; Reply Br. 4--5.
These arguments are also unpersuasive. Wittek discloses a liquid
crystal medium comprising one or more compounds of formula I. Wittek ,r
28. Wittek discloses formula I-2 as one of four preferred compounds for
formula I. Id. ,r 34. Thus, Wittek's disclosure suggests using formula I-2 as
one of four preferred compounds. Further, Wittek discloses its object is to
provide a medium having desired properties and that:
the LC media should have fast response times and low
rotational viscosities at the same time as high birefringence. In
addition, the LC media should have a high clearing point, high
dielectric anisotropy and a low threshold voltage.
Id. ,r 26. Appellant does not direct us to any indication in Wittek's
disclosure that this teaching would not apply to formula I-2 or direct our
attention to any evidence or persuasive technical reasoning that adding
Wittek's formula I-2 to Czanta's formula I" 'B-3 would not result in the
advantageous properties taught by Wittek.
Appellant also argues Czanta desires low rotational viscosities but
Wittek discloses examples having rotational viscosities higher than those
desired by Czanta. Appeal Br. 10-11. This is also unpersuasive. Wittek
expresses a desire for liquid crystal media to have "low rotational
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viscosities." Wittek ,r 26. Thus, Wittek suggests its liquid crystal media
would meet Czanta's desire. Appellant does not cite evidence or persuasive
technical reasoning explaining that adding Wittek's liquid crystal formula I-
2 to Czanta's I'' 'B-3 formula would not result in a low rotational viscosity.
Therefore, Appellant's arguments do not identify a reversible error in the
rejection of claim 1 over Czanta and Wittek.
Claims 11 and 28
Claims 11 and 28 depend from claim 1 and recite compositional
ranges for formulas IA and XXIX of claim 1.
For the rejection of claims 11 and 28, the Examiner finds Czanta
discloses a compositional range of 3-30% for component A. Ans. 4.
Appellant contends the paragraph cited by the Examiner refers to Czanta's
component A, not to a specific compound like formula I" 'B-3, and the
paragraph provides no suggestion for what amount of Appellant's formula
IA should be used in a liquid crystal medium. Id. at 11.
Appellant's arguments are unpersuasive. Czanta discloses compound
A can have a concentration of 1-50% or more preferably 1-30%. Czanta ,r
158. As discussed above with regard to claim 1, Czanta discloses compound
A may consist of formula I"'B-3. Id. ,r 55. Therefore, Czanta's teachings
regarding the concentration of compound A apply to the concentration of
formula I"'B-3.
Claims 3, 4, 9, and 27
The Examiner finds Czanta discloses its composition can further
include a component B that can have a formula corresponding to the
formulas recited in the rejected claims. Ans. 5-7. Appellant argues for each
of claims 3, 4, 9, and 27 that the rejection does not present a rationale why
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one of ordinary skill in the art would have selected the compounds cited by
the Examiner in the rejections. Appeal Br. 11-12.
The Examiner responds by explaining the inclusion of Czanta's
component B, particularly the compounds cited by the Examiner in the
rejections, is the combination of compositions, each taught to be useful for
the same purpose, to form a third composition useful for the same purpose
and cites In re Susi to support this rationale. Ans. 36-40. Appellant does
not respond to this explanation or otherwise identify a reversible error in the
Examiner's rejections of claims 3, 4, 9, and 2 7.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 103(a) rejection of claims 1-12, 14--17, 21, 22, and
25-28 over Czanta and Wittek.
Re} ection II
Claim 13 is rejected as being unpatentable under 35 U.S.C. § 103(a)
over Czanta and Wittek and further in view of Bematz.
The Examiner finds Czanta, as modified in view of Wittek, does not
teach polymerizable compounds but finds Bematz discloses a liquid crystal
composition including a polymerizable compound. Ans. 8. The Examiner
concludes it would have been obvious to modify Czanta, as modified in view
of Wittek, further to include a polymerizable compound to provide a liquid
crystal composition with low threshold voltages, low rotational viscosities,
and very good low temperature stabilities with maintenance of high clearing
points and shortened response times for polymer stabilized displays. Id. at
8-9.
Appellant asserts Czanta teaches away from the Examiner's proposed
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modification because Czanta contrasts its invention with polymeric materials
and one of ordinary skill in the art would not have looked to Bematz' s
disclosure because Bematz's Example 1 exhibits a very high rotational
viscosity and high threshold voltage while Czanta's examples exhibit lower
rotational viscosities and lower threshold voltages. Appeal Br. 12-14.
Appellant's arguments are unpersuasive. The Examiner correctly
finds that Czanta discloses its liquid crystal media may be modified for use
in various types of liquid crystal displays, including PDLC (polymer
dispersed liquid crystal) displays. Ans. 41--42; Czanta ,r 178. Furthermore,
Bematz teaches its composition provides the advantageous effects cited by
the Examiner as a reason to modify the modified composition of Czanta
further in view of Bematz, including low threshold voltages and low
rotational viscosities. Bematz ,r 251. Appellant does not persuade us that
any particular example in Bematz constitutes a teaching away from the
broader disclosure that Bematz's composition provides low threshold
voltages and low rotational viscosities. In re Susi, 440 F.2d at 446 n.3.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 103(a) rejection of claim 13 over Czanta, Wittek,
and Bematz.
Rejection III
Claims 1-12, 14--17, 21, 22, and 25-28 are rejected as being
unpatentable under 35 U.S.C. § 103(a) over Wittek in view of Lietzau.
Appellant argues claims 1, 2, 5-8, 10, 12, 14--17, 21, 22, 25, and 26 as
a first group, claims 11 and 28 as a second group, claims 3 and 27 as a third
group, claim 4 as a fourth group, and claim 9 as a fifth group. Appeal Br.
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14--17. We select claims 1, 11, 3, 4, and 9 as representative of the respective
groups.
Claims 1, 2, 5-8, 10, 12, 14--17, 21, 22, 25, and 26
The Examiner finds Wittek's formula I-2 is equivalent to formula
XXIX of claim 1 but Wittek does not disclose formula IA of claim 1. Ans.
9. The Examiner finds Lietzau discloses a liquid crystal formula I3 that is
equivalent to formula IA of claim 1 and concludes it would have been
obvious to add Lietzau's compound to Wittek's to modify its dielectric
and/or optical anisotropy and/or optimize the latter's threshold voltage
and/or viscosity. Id. at 9-10.
Appellant contends the Examiner has not provided a reason why one
of ordinary skill in the art would have selected Lietzau's formula I3 from the
possible compounds for modifying the properties cited by the Examiner.
Appeal Br. 14--15; Reply Br. 5.
Appellant's arguments are unpersuasive. Lietzau discloses a liquid
crystal medium having a formula I. Lietzau ,r,r 1, 13, 29. Lietzau discloses
seven preferred embodiments for formula I, one of which is formula I3. Id.
,r 41. Thus, the selection of formula I3 is not from amongst millions of
available species but from amongst seven embodiments Lietzau prefers for
its formula. Also, as explained by the Examiner at page 44 of the
Examiner's Answer, the effects of Lietzau's composition correlate with
Wittek's objectives.
Lietzau also teaches that its formula I can be added to a liquid
crystalline material "to modify the dielectric and/or optical anisotropy of a
dielectric of this type and/or to optimise its threshold voltage and/or its
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viscosity," which provides a reason to modify Wittek's composition in view
of Lietzau' s formula I, which includes formula I3. Id. ,r 31.
As a result, Appellant's arguments do not identify a reversible error in
the Examiner's rejection of claim 1 over Wittek and Lietzau.
Appellant does not argue claims 2, 5-8, 10, 12, 14--17, 21, 22, 25, and
26 separately from claim 1. Appeal Br. 14--15.
Claims 11 and 28
Similar to the rejection of claims 11 and 28 over Czanta and Wittek,
Appellant argues the paragraph cited by the Examiner in the rejection of
claims 11 and 28 refers to all compounds of Wittek's formula, not
specifically compound I3, and the paragraph provides no suggestion of what
amount of Appellant's formula IA would be used in a medium. Id. at 15-16.
As explained by the Examiner at page 48 of the Examiner's Answer,
paragraph 64 of Lietzau, which discloses a concentration of 1--40%, applies
to the compounds disclosed by Lietzau, including formula I3. As a result,
Appellant's arguments are unpersuasive.
Claims 3, 4, 9, and 27
Appellant asserts for each of these claim groups that the Examiner has
not presented a rationale for selecting the formulas of Wittek cited in the
rejections. Id. at 16-17. The Examiner explains that Wittek's formulas are
liquid crystal compositions and combining them with the other cited
compositions provides another liquid crystal composition useful for the same
purpose. Ans. 48-52. Appellant does not respond to this explanation or
otherwise identify a reversible error in the Examiner's rejections of claims 3,
4, 9, and 27.
For these reasons and those set forth in the Examiner's Answer, we
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sustain the Examiner's § 103(a) rejection of claims 1-12, 14--17, 21, 22, and
25-28 over Wittek and Lietzau.
Re} ection IV
Claim 13 is rejected as being unpatentable under 35 U.S.C. § 103(a)
over Wittek and Lietzau and further in view of Bematz.
The Examiner finds Wittek, as modified in view of Lietzau, does not
teach polymerizable compounds but finds Bematz discloses a liquid crystal
composition including a polymerizable compound. Ans. 16. The Examiner
concludes it would have been obvious to modify Wittek, as modified in view
of Lietzau, further to include a polymerizable compound to provide a liquid
crystal composition with low threshold voltages, low rotational viscosities,
and very good low temperature stabilities with maintenance of high clearing
points and shortened response times for polymer stabilized displays. Id. at
16-17.
Appellant argues Wittek is silent with respect to polymeric materials
so there would have been no reason to modify its composition in view of
Bematz and Bematz's Example 1 exhibits a very high rotational viscosity
and high threshold voltage while Wittek' s examples exhibit lower rotational
viscosities and lower threshold voltages. Appeal Br. 17-18.
Appellant's arguments are unpersuasive. The Examiner finds Wittek
permits the use of additives with its composition. Ans. 53; Wittek ,r,r 161-
162. Bematz teaches its composition provides the advantageous effects
cited by the Examiner as a reason to further modify the modify composition
of Wittek in view ofBematz, such as to provide low threshold voltages and
low rotational viscosities. Wittek ,r 26; Bematz ,r 251. Appellant does not
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persuade us that any particular example in Bematz constitutes a teaching
away from the broader disclosure that Bematz's composition provides low
threshold voltages and low rotational viscosities.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 103(a) rejection ofclaim 13 overWittek, Lietzau,
and Bematz.
DECISION
The decision of the Examiner is affirmed.
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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