IDEMITSU KOSAN CO., LTD.

Patent Trials and Appeals Board

Sep 9, 2020

2020000057 (P.T.A.B. Sep. 9, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/854,404 12/26/2017 Tomoki KATO 510152US 6307
22850 7590 09/09/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
DAHLBURG, ELIZABETH M
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
09/09/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOKI KATO, TAKAYASU SADO, and
TAKAHIRO FUJIYAMA
Appeal 2020-000057
Application 15/854,404
Technology Center 1700

Before CATHERINE Q. TIMM, DONNA M. PRAISS,
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, and 5–8. See Final Act. 1. An oral
hearing was held on August 25, 2020.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Idemitsu Kosan Co., Ltd. as the real
party in interest. Appeal Br. 1.
2 A transcript of the hearing will be entered in due course.
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Application 15/854,404

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CLAIMED SUBJECT MATTER
The claims are directed to aromatic amine derivatives having a
substituted or unsubstituted 9,9-diphenylfluorene skeleton and organic
electroluminescence devices using the aromatic amine derivatives. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An aromatic amine derivative represented by formula
(l):

wherein in formula (1),
Ar1 represents a group selected from groups of formulae
(23) and (24):

Ar2 represents a group selected from groups of formulae
(33) and (34):

wherein in formulae (1), (33) and (34), L represents a
single bond or a divalent group represented by formula (16),
and
in formulae (23) and (24), L represents a divalent group
represented by formula (16), and when the aromatic amine
derivative represented by formula (l) includes groups L, the
groups L may be the same or different;
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in formulae (1), (23), (24), (33), (34) and (16) R1
represents a hydrogen atom, a substituted or unsubstituted alkyl
group having 1 to 20 carbon atoms, a substituted or
unsubstituted aryl group having 6 to 50 ring carbon atoms, a
halogen atom, a substituted or unsubstituted fluoroalkyl group
having 1 to 20 carbon atoms, a substituted or unsubstituted
alkoxy group having l to 20 carbon atoms, a substituted or
unsubstituted fluoroalkoxy group having l to 20 carbon atoms,
or a cyano group, and when the aromatic amine derivative
represented by formula (1) includes groups R1, the groups R1
may be the same or different;
in formula (1), R2 and R3 may be the same or different
and independently represent a hydrogen atom, a substituted or
unsubstituted alkyl group having 1 to 20 carbon atoms, a
substituted or unsubstituted aryl group having 6 to 50 ring
carbon atoms, a substituted or unsubstituted heterocyclic group
having 3 to 50 ring atoms, a halogen atom, a substituted or
unsubstituted fluoroalkyl group having 1 to 20 carbon atoms, a
substituted or unsubstituted alkoxy group having 1 to 20 carbon
atoms, a substituted or unsubstituted fluoroalkoxy group having
1 to 20 carbon atoms, a substituted or unsubstituted aryloxy
group having 6 to 50 ring carbon atoms, or a cyano group,
when groups R2 exist, the groups R2 may be the same or
different, and when groups R3 exist, the groups R3 may be the
same or different:
k represents an integer of 1 to 5;
m represents an integer of 1 to 4; and
n represents an integer of l to 3.
Appeal Br. 13–14 (Claims Appendix) (emphasis added).
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Application 15/854,404

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REFERENCES
The Examiner relies upon the following prior art reference.3
Name Reference Date
Kato WO 2011/021520 A1 Feb. 24, 2011

REJECTIONS
The Examiner maintains the following rejection. Final Act. 6; Ans. 3.
Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis
1, 3, 5–8 103(a) Kato

OPINION
The Examiner rejects claims 1, 3, and 5–8 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Kato. Final Act. 6.
Claim 1
Appellant contends Kato broadly teaches aromatic amine derivatives
for use in organic electroluminescence devices and that it would not have
been obvious to substitute a diphenyl-fluorenyl group for a dimethyl-
fluorenyl group in one of Kato’s example compounds because Kato
discloses a preference for dimethyl substitution. Appeal Br. 6 (citing Kato
¶ 39); Reply Br. 2. Appellant relies on the Declaration of Mr. Hirokatsu Ito
filed Sept. 7, 2018 to show “an advantageous improvement in emission
efficiency and lifetime obtained with a diphenyl-fluorenyl compound of
formula (I)” compared to the dimethyl-fluorenyl group in Kato’s most
preferable embodiment. Appeal Br. 8; Reply Br. 3–4. Appellant asserts the

3 Citations herein and in the record are to the English language equivalent,
US 2012/0146014 A1, published June 14, 2012.
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68% increase in 80% lifetime is significant, not shown by Kato, and would
be recognized by one of ordinary skill to be due to the diphenyl-fluorenyl
structure even if other elements for formulae (1), (23), (24), (22), and (34)
were changed with respect to “L” groups. Id.
We are not persuaded by Appellant’s arguments.
Appellant does not dispute the Examiner’s finding that claim 1
encompasses Kato’s example compound H-24′ when the dimethyl-fluorenyl
Ara group is substituted with a diphenyl-fluorenyl Ara group. Final Act. 7–8
(citing Kato 281, ¶ 32); Ans. 5–6 (citing Kato 281). Nor does Appellant
dispute the Examiner’s finding that Kato discloses each of R1 and R2 in
Kato’s Ara group are preferably a methyl group or a phenyl group and that
Kato teaches Ara specifically includes dimethyl-fluorenyl and diphenyl-
fluorenyl. Ans. 4 (citing Kato ¶¶ 32, 39, 57). The Examiner’s findings are
supported by the record.
Appellant’s argument (Appeal Br. 6) that it would not have been
obvious to substitute diphenyl-fluorenyl for dimethyl-fluorenyl in Kato’s
compound H-24′ because Kato teaches that the methyl group is most
preferred is not persuasive of error. In a determination of obviousness, a
reference may be relied upon for all that it would have reasonably suggested
to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874
F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious.”). That Kato discloses a most preferred aromatic
amine derivative does not limit Kato’s teaching to that most preferred
compound.
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Appellant’s comparative evidence that Appellant’s claimed
compounds (Examples 1-1 and 1-7) exhibit an improvement in emission
efficiency and lifetime compared to Kato’s compound H-24′ (Appeal Br. 7–
8) also is not persuasive of error because Appellant’s evidence is not
commensurate in scope with claim 1. “[I]t is not enough to show that results
are obtained which differ from those obtained in the prior art: that difference
must be shown to be an unexpected difference.” See In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (emphasis in original). Additionally, the relied-
upon results must be commensurate in scope with the claims. See In re
Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003). “Establishing that one
(or a small number of) species gives unexpected results is inadequate proof,
for ‘it is the view of [the CCPA] that objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.’” See In re Greenfield, 571 F.2d 1185, 1189 (CCPA
1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
As Appellant recognizes (Appeal Br. 8), the compounds used in the
comparison represent one of a number of options for the L group in formulae
(1), (23), (24), (33), and (34). Appellant’s assertion (Appeal Br. 8) that the
compounds selected based on the diphenyl-fluorenyl group are
“commensurate with this important element of Claim 1” and that the
differing result values expected with the other claimed L groups for
formulae (1), (23), (24), (33), and (34) would also bear out the same
significance, does not adequately establish that the comparative evidence is
commensurate in scope with claim 1. Appellant does not sufficiently show
or explain how the various L group modifications would change the values
for the full scope of compounds encompassed by claim 1. It is well settled
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that conclusory arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40
(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Accordingly, we find the preponderance of the evidence supports the
Examiner’s rejection of claim 1 as unpatentable over Kato.

Claims 3 and 5–8
Appellant argues the comparative evidence submitted applies equally
to the compounds encompassed by claims 3, 5, 6, and 8 and that the claimed
compounds and organic electroluminescence device comprising the
compound of claim 1 “cannot be obvious over Kato” for the same reasons
argued with respect to claim 1. Appeal Br. 10–12. As discussed above in
connection with the rejection of claim 1, we are not persuaded by
Appellant’s argument that a person having ordinary skill in the art would
have understood Kato’s disclosure to be limited to compounds containing a
dimethyl-fluorenyl Ara group such as Kato’s H-24ʹ. Based on the Appeal
record, we also find Appellant’s objective evidence is entitled to little weight
because it is not commensurate in scope with claims 3, 5, 6, and 8 which
similarly encompass various L groups in formulae (1), (23), (24), (33),
and/or (34). Appellant does not separately argue the patentability of claim 7
over Kato, therefore, claim 7 stands or falls together with claim 6 from
which it depends. 37 C.F.R. § 41.37(c)(1)(iv); Appeal Br. 5–12.
Accordingly, we likewise affirm the Examiner’s rejection of claims 3
and 5–8 for the same reasons discussed above in connection with claim 1.
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CONCLUSION
On this record and for the above reasons, we affirm the Examiner’s
rejection of claims 1, 3, and 5–8 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision is affirmed.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/ Basis Affirmed Reversed
1, 3, 5–8 103(a) Kato 1, 3, 5–8

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2018).

AFFIRMED