Ex Parte Wittek et al

Patent Trial and Appeal Board

Oct 25, 2018

14342541 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/342,541 03/04/2014
23599 7590 10/29/2018
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-4176 2650
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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):
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, NORIHIKO TANAKA, MALGORZATA
RILLICK, MATTHIAS BREMER, and MILA FISCHER
Appeal2017-007302
Application 14/342,541
Technology Center 1700
Before BEYERL YA. FRANKLIN, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 2, and 5-15. 3 We have jurisdiction under
35 U.S.C. § 6(b).
1 In explaining our Decision, we refer to the Specification filed March 4,
2014 ("Spec."); Final Office Action dated June 8, 2016 ("Final Act.");
Advisory Action dated August 22, 2016 ("Adv. Act."); Appeal Brief filed
November 8, 2016 ("Appeal Br."); Examiner's Answer dated February 10,
2017 ("Ans."); and Reply Brief filed April 7, 2017 ("Reply Br.").
2 "MERCK PA TENT GMBH" is identified as the real party in interest.
Appeal Br. 1. According to the Appeal Brief, MERCK PA TENT GMBH is
a subsidiary of Merck KGaA. Id.
3 Claims 3 and 4 are withdrawn and not before us on appeal. Ans. 23.
Appeal2017-007302
Application 14/342,541
We AFFIRM.
The Claimed Invention
Appellants' disclosure relates to mesogenic media comprising one or
more compounds that preferably exhibit a blue phase and the use of such
materials in electro-optical light modulation elements and displays.
Abstract; Spec. 1. Claim 1 is illustrative of the claimed subject matter on
appeal and is reproduced below from the Claims Appendix to the Appeal
Brief ( Appeal Br. 10-11) (key disputed claim language italicized and
bolded):
1. A mesogenic medium, comprising one or more compounds
of formula E and/or H
02
L F
X
X is each independently F, CF3 or CN,
E
H
are independently of one another H or F,
is alkyl, which is straight chain or
branched, is unsubstituted, mono- or poly-
substituted by F, Cl or CN, and in which
one or more CH2 groups are optionally
replaced, in each case independently from
one another by -0- -S- -NR01 -SiR01R02-
' ' ' ' ' -CO- -COO- -OCO- -OC0-0- -S-CO-, ' ' ' '
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Application 14/342,541
-CO-S- -CY01 =CY02- or -C=C- in such a
' manner that O and/ or S atoms are not
linked directly to one another,
zo is -COO- or -CF20-,
y 01 and Y02 are, independently of each other, F, Cl or
CN, and alternatively one of them may be
H,
R01 and R02 are, independently of each other, Hor
alkyl with 1 to 12 C-atoms,
said mesogenic medium exhibiting a blue phase.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Haseba et al., US 5,858,272 Jan. 12, 1999
(hereinafter "Haseba")
Kubo et al., US 5,874,022 Feb. 23, 1999
(hereinafter "Kubo")
Tomi et al., US 6,162,372 Dec. 19, 2000
(hereinafter "Tomi")
Takeshita et al., US 6,325,949 Bl Dec. 4, 2001
(hereinafter "Takeshita")
Kirsch et al., US 2006/0061699 Al Mar. 23, 2006
(hereinafter "Kirsch")
Bematz et al., US 2009/0103011 Al Apr. 23, 2009
(hereinafter "Bematz")
Czanta et al., US 2010/0127213 Al May 27, 2010
(hereinafter "Czanta")
Wittek et al., US 2011/0001089 Al Jan. 6, 2011
(hereinafter "Wittek")
Jansen et al., US 2011/0253935 Al Oct. 20, 2011
(hereinafter "Jansen")
Hattori et al., US 2012/0217438 Al Aug. 30, 2012
(hereinafter "Hattori '43 8")
Hattori et al., US 9,487,701 B2 Nov. 8, 2016
(hereinafter "Hattori '701 ")
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Application 14/342,541
Naito
Ueda
Hattori
JP 2000-198765
JP 2002-012865
WO 2011/036985 Al
The Rejections
July 18, 2000
Jan. 15,2002
Mar. 31, 2011
On appeal, the Examiner maintains (Ans. 2) the following rejections4:
1. Claims 1 and 2 are rejected under pre-AIA 35 U.S.C. § I02(b)
as being anticipated by Naito5 ("Rejection 1 "). Ans. 2.
2. Claims 1, 2, 14, and 15 are rejected under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Ueda6 ("Rejection 2"). Ans. 3.
3. Claims 5, 10, and 11 are rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Ueda as applied to claim 1
above, and further in view of Czanta ("Rejection 3"). Ans. 4.
4. Claim 6 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ueda as applied to claim 1 above, and further in view of
Jansen ("Rejection 4"). Ans. 6.
5. Claim 6 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ueda as applied to claim 1 above, and further in view of
Kubo ("Rejection 5"). Ans. 7.
4 The Examiner's§ 112 rejection of claims 1-15 for indefiniteness (Final
Act. 2) is withdrawn at page 23 of the Answer.
5 The Examiner cites and refers to the English translation of the Naito
reference (Ans. 2), to which Appellants do not object.
6 The Examiner cites and refers to the English translation of the Ueda
reference (Ans. 3), to which Appellants do not object.
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6. Claims 7, 12, and 13 are rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Ueda as applied to claim 1
above, and further in view of Bematz ("Rejection 6"). Ans. 7.
7. Claim 8 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ueda as applied to claim 1 above, and further in view of
Haseba ("Rejection 7"). Ans. 8.
8. Claim 9 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ueda as applied to claim 1 above, and further in view of
Tomi ("Rejection 8"). Ans. 9.
9. Claim 9 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ueda as applied to claim 1 above, and further in view of
Kirsch ("Rejection 9"). Ans. 10.
10. Claim 9 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ueda as applied to claim 1 above, and further in view of
Takeshita ("Rejection 10"). Ans. 12.
11. Claim 9 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ueda as applied to claim 1 above, and further in view of
Hattori7 ("Rejection 11 "). Ans. 12.
12. Claims 1, 2, 5, 6, 9-11, 14, and 15 are rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Czanta in view ofNaito
("Rejection 12"). Ans. 13.
13. Claims 7, 12, and 13 are rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Czanta in view of Naito as
7 The Examiner cites and refers to Hattori '4 3 8, the English translation of the
Hattori (WO 2011/036985 Al) reference (Ans. 12), to which Appellants do
not object.
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Application 14/342,541
applied to claim 1 above, and further in view of Bematz ("Rejection 13").
Ans. 16.
14. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Czanta in view of Naito as applied to claim 1 above, and
further in view of Haseba ("Rejection 14"). Ans. 17.
15. Claims 1, 2, 6, 8, 9, 14, and 15 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Wittek in view of Naito
("Rejection 15"). Ans. 18.
16. Claims 5, 10, and 11 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Wittek in view of Naito as
applied to claim 1 above, and further in view of Czanta ("Rejection 16").
Ans. 19.
17. Claims 7, 12, and 13 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Wittek in view of Naito as
applied to claim 1 above, and further in view of Bematz ("Rejection 17").
Ans. 21-22.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections based on the fact finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
highlight and address specific findings and arguments below.
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Reiection 1
Appellants argue claims 1 and 2 as a group. Appeal Br. 3. We select
claim 1 as representative and claim 2 stands or falls with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner determines that Naito discloses all of the limitations of
claim 1 and thus, anticipates the claim. Ans. 2 ( citing Naito ,r,r 26, 35). In
particular, the Examiner finds that Naito discloses a liquid crystal
( mesogenic) composition comprising a compound ( Chemical formula 4)
having the following formula:
[Chemical formula 4 J
The above formula depicts the chemical structure of the compound
disclosed at paragraph 26 of Naito. See also Ans. 2 (citing Naito ,r,r 26, 35);
Spec. 7 4, 11. 19--24 ( elected species "PZG-n-N").
The Examiner finds further that Naito's is equivalent to and falls
within the scope of the compound "formula E" recited in claim 1. The
Examiner determines that because the mesogenic composition Naito
discloses is identical to the claimed composition, Naito's composition will
inherently exhibit a blue phase, as claimed.
Appellants argue that the Examiner's rejection should be reversed
because Naito is "silent on the presence of a blue phase" and the
"compositions of Naito do not exhibit any blue phase whatsoever." Appeal
Br. 3; see also Reply Br. 1--4. Appellants further argue that the prior art
compositions "are not inherently possessive of a blue phase" (Appeal Br. 4)
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because the Examiner has failed to establish that they "'necessarily and
inevitably' possess the claimed feature[]" (id. at 5).
We do not find Appellants' argument persuasive of reversible error in
the Examiner's rejection. On the record before us, we find that a
preponderance of the evidence supports the Examiner's analysis and
determination (Ans. 2, 23-27) that Naito discloses all of the limitations of
claim 1, including the recitation "exhibiting a blue phase." Naito ,r,r 26, 35.
As the Examiner explains (Ans. 2), because Naito discloses a liquid crystal
composition identical to Appellants' claimed composition, absent evidence
to the contrary, it follows that Naito's composition would inherently
"exhibit[] a blue phase," as recited in the claim. Indeed, it is well settled
that:
Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on 'inherency' under 35 U.S.C. §
102, on 'prima facie obviousness' under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO' s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted). See also
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Thus, as the Examiner
correctly points outs (Ans. 24--26), the burden shifted to Appellants to
identify a difference between Naito's prior art composition and the
composition of claim 1 and, in particular, show that Naito's composition
does not exhibit a blue phase. Spada, 911 F .2d at 708---09.
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Appellants, however, have not carried that burden. Appellants have
not provided or directed us persuasive evidence in the record that shows
Naito's liquid crystal composition would fail to exhibit a blue phase as
recited in claim 1. Appellants' assertions that the "compositions of Naito do
not exhibit any blue phase whatsoever" (Appeal Br. 3) and "are not
inherently possessive of a blue phase, unless prepared with appropriate
chiral dopants" (id. at 4) are not persuasive of reversible error in the
Examiner's rejection because they are conclusory and Appellants do not
provide an adequate technical explanation to support them. Attorney
argument is not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).
Appellants' assertion that "it would be clear to one of ordinary skill in
the art that these mixtures do not exhibit a blue phase and, thus, cannot
anticipate the present claims" at page 3 of the Reply Brief is equally
unpersuasive of reversible error because it is also conclusory and, without
more, insufficient to rebut or otherwise establish reversible error in the
Examiner's rejection. De Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner's rejection of claims 1 and 2
under 35 U.S.C. § 102(b) as anticipated by Naito.
Reiection 2
In response to the Examiner's Rejection 2, Appellants argue claims 1,
2, 14, and 15 as a group. Appeal Br. 5. We select claim 1 as representative
and the remaining claims subject to this rejection stand or fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that Ueda discloses all of the limitations of
claim 1 and thus, anticipates the claim. Ans. 3 (citing Ueda ,r,r 43, 104). In
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particular, similar to the Examiner's analysis of Naito in Rejection 1, the
Examiner finds that Ueda discloses a liquid crystal composition comprising
a compound (B26) having the following formula:
( B 26) C2Hs -@-co24 F
The above formula depicts the chemical structure of the (B26)
compound disclosed at paragraph 104 of Ueda. See also Ans. 3 (citing Ueda
,r,r 43, 104); Spec. 74, 11. 19-24 (elected species "PZG-n-N"). The
Examiner finds further that Ueda's (B26) compound is equivalent to and falls
within the scope of the compound "formula E" recited in claim 1 and
determines that because the composition Ueda discloses is identical to the
claimed composition, Ueda's composition will inherently exhibit a blue
phase, as claimed.
In response to the Examiner's anticipation rejection based on Ueda,
Appellants repeat and rely on principally the same arguments previously
presented above in response to the Examiner's Rejection 1 based on Naito.
Compare Appeal Br. 5 (arguing that "Ueda is silent on liquid crystals
exhibiting a blue phase" and "the expectation in the art would be that a blue
phase is not produced"), with Appeal Br. 3--4.
We do not find Appellants' arguments persuasive of reversible error
in the Examiner's rejection for principally the same reasons previously
discussed above in affirming the Examiner's Rejection 1. In particular,
based on the fact-finding and reasoning provided by the Examiner at pages 3
and 27-29 of the Answer, we concur with the Examiner's determination that
Ueda discloses all of the limitations of claim 1, including inherently
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disclosing the recitation "exhibiting a blue phase." Ueda ,r,r 43, 104. As the
Examiner finds (Ans. 3), Ueda's (B26) compound is equivalent to and falls
within the scope of the compound "formula E" recited in claim 1 and the
mesogenic composition Ueda discloses is identical to the claimed
composition. Ueda ,r,r 43, 104.
Moreover, as previously discussed above regarding the Naito
reference, Appellants have not provided or directed us persuasive evidence
in the record that shows Ueda's liquid crystal composition would fail to
exhibit a blue phase as recited in claim 1. Best, 562 F.2d at 1255.
Accordingly, we affirm the Examiner's rejection of claims 1, 2, 14,
and 15 under 35 U.S.C. § 102(b) as anticipated by Ueda.
Rei ections 3-17
In response to the Examiner's Rejections 3 through 17, Appellants
repeat and rely on principally the same arguments previously presented
above in response to the Examiner's Rejection 1 and Rejection 2,
respectively, stated above.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for principally the same reasons discussed above for
affirming the Examiner's Rejections 1 and 2, we affirm the Examiner's
Rejections 3-17.
DECISION/ORDER
The Examiner's rejections of claims 1, 2, and 5-15 are affirmed.
It is ordered that the Examiner's decision is affirmed.
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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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