Ji-Won Jeong et al.

Patent Trials and Appeals Board

Nov 4, 2019

14379793 - (D) (P.T.A.B. Nov. 4, 2019)

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.
14/379,793 08/20/2014 Ji-Won Jeong MERCK-4221 9583
23599 7590 11/04/2019
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
VISCONTI, GERALDINA
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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 JI-WON JEONG,
YONG-KUK YUN, DONG-MEE SONG,
and JUNG-MIN LEE
____________________

Appeal 2019–000384
Application 14/379,793
Technology Center 1700
____________________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 In this Decision, we refer to the Specification filed August 20, 2014
(“Spec.”); the Final Office Action dated July 26, 2017 (“Final Act.”); the
Appeal Brief filed April 26, 2018 (“Appeal Br.”); the Examiner’s Answer
dated August 13, 2018 (“Ans.”); and the Reply Brief filed October 15, 2018
(“Reply Br.”).
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 1–13 and 17–30.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
The claims are directed to a liquid crystalline medium used for
electro-optical displays. Claims 1 and 23, reproduced below from the
Claims Appendix of the Appeal Brief, illustrate the claimed subject matter
with disputed terms italicized:
1. A liquid-crystalline medium based on a mixture of
polar compounds having negative dielectric anisotropy,
comprising
at least two reactive mesogens, at least two of said
reactive mesogens having sufficiently different polymerization
reactivity from one another allowing their polymerization by
two separate polymerizations
and
at least one compound selected from the group of
compounds consisting of the compounds of formulae IIA, IIB
and IIC,
IIA

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Merck Patent
GmbH. Appeal Br. 1.
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IIB

IIC,

in which
R2A, R2B and R2C each, independently of one another, denote
H, an alkyl or alkenyl radical having up to
15 C atoms which is unsubstituted,
monosubstituted by CN or CF3 or at least
monosubstituted by halogen, in which one
or more CH2 groups are optionally replaced
by -O-, -S-, , -C≡C-, -CF2O-,
-OCF2-, -OC-O- or -O-CO- in such a way
that O atoms are not linked directly to one
another,
denotes

Y1-6 each, independently of one another, denote H or
F[,]
L1 and L2 each, independently of one another, denote F, Cl,
CF3 or CHF2,
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L3-6 each, independently of one another, denote H, F,
Cl, CF3 or CHF2, but at least two of L3-6 denote F,
Cl, CF3 or CHF2
Z2 and Z2’ each, independently of one another, denote a single
bond, -CH2CH2-, -CH=CH-, -C≡C-, -CF2O-,
-OCF2-, -CH2O-, -OCH2-, -COO-, -OCO-, -C2F4-,
-CF=CF-, or -CH=CHCH2O-,
p denotes 1 or 2, and, in the case where Z2 = single
bond, p also denotes 0,
q denotes 0 or 1,
y denotes 0 or 1, and
v denotes 1 to 6.

23. The liquid[-]crystalline medium according to claim
1, wherein at least two of said reactive mesogens have a
substantially different polymerization UV absorption spectrum
from each other.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Saynor et al. (“Saynor”) US 6,157,427 Dec. 5, 2000
Bernatz et al. (“Bernatz”) US 8,999,459 B2 Apr. 7, 2015
REJECTIONS3
The Examiner maintains the following rejections: (1) claims 1–13
and 17–30 under 35 U.S.C. § 112, first paragraph, for failing to comply with
the written description requirement; (2) claims 1–13 and 17–30 under 35

3 Because this application is a national stage entry of a PCT application filed
before the March 16, 2013, effective date of the America Invents Act, we
refer to the pre-AIA versions of the statutes.
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U.S.C. § 112, second paragraph, as indefinite; and (3) claims 1–13 and 17–
30 under 35 U.S.C. § 103(a) as unpatentable over Bernatz in view of Saynor.
Final Act. 3–14.
OPINION
Rejection of claims 1–13 and 17–30 as lacking written description
The Examiner finds that all pending claims (1–13 and 17–30) lack
written description of “at least two reactive mesogens,[] having sufficiently
different polymerization reactivity from one another allowing their
polymerization by two separate polymerizations,” a limitation found in the
sole independent claim (claim 1). Final Act. 3–4; see also Appeal Br. 14–59
(Claims App.) (emphasis added). The Examiner notes that claim 1 has been
amended to include the alleged new matter. Final Act. 2. According to the
Examiner, the Specification does not provide any guidance “for determining
the metes and bounds of ‘sufficiently different’ polymerization reactivity.”
Final Act. 3–4. The Examiner finds that the application describes a liquid
crystal mixture having at least two polymerizable compounds with different
polymerization reactivities, but fails “to support allowing the polymerization
of the reactive mesogens by ‘two separate polymerizations.’” Id. at 3 (citing
Spec. ¶¶ 23, 90).
The Examiner finds separately that claim 23 also lacks written
description for limiting the two reactive mesogens recited in claim 1 to
having “a substantially different polymerization UV absorption spectrum
from each other, much less the metes and bounds defined by ‘substantially
different’ polymerization UV absorption spectrum.” Id. at 4 (emphasis
added).
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Appellant argues the claims as a group, with additional argument
directed to the term rejected in claim 23. Appeal Br. 4–6. Appellant argues
that the disputed limitations are supported by the Specification and Figures.
Id. Specifically, Appellant directs the reader to the following portions of the
Specification: (1) “LCD which contain LC mixtures with at least two
polymerisable [sic] compounds, preferably with different polymerization
reactivities, can be operated with a single substrate in the display” (Spec. 5,
ll. 31–34);4 (2) “[p]referred [LC] mixtures are VA mixtures which contain
two polymerisable [sic] compounds with different polymerization reactivity
(Spec. 23, ll. 12–13); (3) “RMs [reactive mesogens] with different UV
absorption band[s] show different reactivity under the certain UV exposure.
By measurement of the UV-visible spectrum of each RM it is possible to
determine the reactivity of each RM” (Spec. 23, ll. 16–18; (4) “[p]referred
mixtures contain at least one RM (RM-A) which is responsible for the
building of the RM polymer layer and at least one RM (RM-B) which is
responsible for the pre-tilt generation via PS-VA process” (Spec. 23, ll. 20–
22); and (5) “RM-A for polymer layer should be separated from LCs easily,
move toward the LC-air interface, and be polymerized by UV exposure to
build the polymer layer[,] not [the] polymer network in the bulk. RM-B
should be alive during the 1st UV exposure for the next PS-VA process”
(Spec. 23, ll. 24–27). Appeal Br. 4–5.
The sufficiency of an application’s written description is a question of
fact. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.

4 Though Appellant cites paragraph numbers of Jeong et al., US
2015/0036095 A1, published Feb. 5, 2015, our Decision cites the
corresponding pages and line numbers of Appellant’s original disclosure.
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2010) (en banc). Appearance of a claim in the Specification in ipsis verbis
does not guarantee that the written description requirement is satisfied. See,
e.g., Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir.
2002). At the same time, a failure to meet that standard does not require a
finding that a claim fails to comply with the written description requirement.
In re Edwards, 568 F.2d 1349, 1351‒52 (Fed. Cir. 1978). All that is
required is that the Specification demonstrate, with reasonable clarity, to a
person of ordinary skill in the art that the inventor was in possession of the
invention. Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008).
Appellant argues that the Specification as filed depicts the different
UV absorption spectra of two polymerizable compounds, i.e., RM-1 and
RM-41. Appeal Br. 6 (citing Spec. Fig. 1). Appellant explains that these
exemplified polymerizable compounds are described in the application as
“two reactive mesogens with different reactivity.” Appeal Br. 6 (citing
Spec. 112:19–26).
In response, the Examiner argues that Appellant’s relied-upon
“passages do not appear to support ‘the need for the mixture to participate in
two distinct polymerization reactions.’” Ans. 16. The Examiner contends
that “[t]here is no discussion of why [polymerizable compounds RM-1 and
RM-41] were selected, i.e., if and/or how they relate to having ‘sufficiently
different’ polymerization reactivities.” Id.
Appellant replies that “the Specification teaches monomers whose
reactivity differs enough to allow discretely different polymerization as in
Example M1, using ‘two reactive mesogenens with different reactivity . . .
RM-1 and RM-41 show different UV absorption behavior . . . [t]he
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polymerization of RM-1 and RM-41 is done selectively” using two different
UV exposures. Reply Br. 2.
The Specification describes that “[t]he polymerization of RM-1 and
RM-41 is done selectively” by first exposing RM-41 to a “UV cut filter and
the RM polymer is formed,” and in a separate step, “the PS-VA process
takes place with RM-1 under 2nd UV exposure” of 100 mW/cm2.” Spec.
112:34–113:2. In addition, the original disclosure describes that in the PS-
VA process, “polymerisation [sic] of reactive mesogens is intended to take
place in the liquid-crystalline mixture.” Spec. 9, ll. 19–20. In other words,
after selective polymerization of the RM-41 polymer layer at the LC-air
interface, the subsequent PS-VA process forms an RM-1 polymer network in
the bulk. See also Spec. 23, ll. 20–27.
The Examiner provides no explanation of why one skilled in the art
would fail to recognize that the claimed LC mixture’s participation in two
distinct polymerization reaction occur at different times to form different
polymer layers. Contrary to the Examiner’s finding, the Specification
describes that two distinct polymerization reactions are accomplished
through the use of reactive mesogens having sufficiently different
polymerization reactivities and substantially different polymerization UV
absorption spectrum. Thus, the original disclosure reasonably conveys to
one skilled in the art that, as of the application filing date, the application
had possession of the subject matter “at least two reactive mesogens,[]
having sufficiently different polymerization reactivity from one another
allowing their polymerization by two separate polymerizations,” and “have a
substantially different polymerization UV absorption spectrum from each
other.” See Appeal Br. 14, 58 (Claims App.). Therefore, Appellant shows
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reversible error in the Examiner’s finding that claim 1 and its dependent
claims (including claim 23) lack written description.
We do not reach the merits of the Examiner’s 35 U.S.C. § 112, first
paragraph/written description rejection of claims 26 and 27 for the reasons
set forth below discussing the Examiner’s 35 U.S.C. § 112, second
paragraph/indefiniteness rejection of these claims. Cf. In re Moore, 439
F.2d 1232, 1235 (CCPA 1971) (one is not in a position to determine whether
a claim is enabled under 35 U.S.C. § 112, first paragraph, until the metes and
bounds of that claim are determined under the second paragraph of this
section of the statute).
We reverse the rejection of claims 1–13, 17–25, and 28–30 under 35
U.S.C. § 112, first paragraph, as lacking written description. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Rejection of claims 1–13 and 17–30 as indefinite
The Examiner finds that claims 1–13 and 17–30 are indefinite for
reciting “sufficiently different polymerization reactivity.” Final Act. 5. The
Examiner makes additional specific findings rejecting claims 23, 26, and 27,
each depending directly or indirectly from claim 1. Id. at 5–6.
With respect to independent claim 1 (and, by extension, its dependent
claims), the Examiner finds that “‘sufficiently different polymerization
reactivity’ . . . is a relative term which renders the claim indefinite.” Id. The
Examiner finds that that the term “is not defined by the claim, the
[S]pecification does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill in the art would not be reasonably apprised
of the scope of the invention.” Id. at 5.
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The Examiner finds that claim 23 is indefinite for the additional
reason of reciting “substantially different polymerization UV absorption
spectrum.” Id. The Examiner again finds that the term is a relative term, is
not defined by the claim, is not standardized by the Specification, and would
not allow the skilled artisan to reasonably understand the scope of the claim.
Id. at 5–6.
Appellant contends:
[i]t is clear from the sections of the text, and from the examples
quoted in respect to the response to the rejection under first
paragraph, that one of ordinary skill in the art would understand
from these passages that it is necessary for a portion of the
combined mixture (the first reactive mesogen) to be
polymerized by exposure to UV of one wavelength, and then a
portion subject to a second polymerization by UV of a different
wave length, whereby the second reactive mesogen is
polymerized, so that different layers of polymer can be
produced.
Appeal Br. 7.
The use of relative terms such as “substantially” does not
automatically render a claim indefinite. See, e.g., Deere & Co. v. Bush Hog,
LLC, 703 F.3d 1349, 1359 (Fed. Cir. 2012) (“This court has repeatedly
confirmed that relative terms such as ‘substantially’ do not render patent
claims so unclear as to prevent a person of skill in the art from ascertaining
the scope of the claim.”); see also Ecolab, Inc. v. Envirochem, Inc., 264 F.3d
1358, 1367 (Fed. Cir. 2001); Andrew Corp. v. Gabriel Elecs., Inc., 847 F.2d
819, 821–822 (Fed. Cir. 1988). Rather, the test for indefiniteness is whether
the claim, when read in light of the Specification, reasonably apprises one
skilled in the art of its scope. In re Warmerdam, 33 F.3d 1354, 1361 (Fed.
Cir. 1994). “Claim language employing terms of degree has long been
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found definite where it provided enough certainty to one of skill in the art
when read in the context of the invention.” Interval Licensing LLC v. AOL,
Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014).
We are persuaded by Appellant’s arguments that the Specification’s
disclosure reasonably apprises the skilled artisan of the scope of the
invention. Appellant’s relied-upon passages (discussed supra in relation to
the written description rejection) adequately describe to one of ordinary skill
in the art the degree of difference required by each claim for polymerization
reactivities and polymerization UV absorption spectra in the liquid-
crystalline medium. Appellant, therefore, shows the Examiner reversibly
errs in finding claims 1 and 23 to be indefinite.
With respect to claim 26, the Examiner finds that the terms “at least
one compound of formulae IIA, IIB and/or IIC of claim 1” and “different
polymeric components produced obtained or obtainable by separate
polymerization” to be indefinite. Final Act. 6; see also Ans. 18. The
Examiner finds claim 27 to be indefinite for reciting “polymerization of the
at least two reactive mesogens is achieved or achievable by UV radiation.”
Ans. 18; see also Final Act. 6. According to the Examiner, “the antecedent
basis for ‘a spectral distribution different from that one used for the
polymerization of the other of said at least two reactive mesogens’ is not
clear.” Final Act. 6. The Examiner finds that “the antecedent basis for []at
least one o[f] said polymerizations is also unclear.” Id. at 7.
Appellant fails to substantively argue or adequately address the
Examiner’s concerns regarding the indefiniteness of the additional terms in
dependent claims 26 and 27. Rather, Appellant merely alleges that “separate
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polymerization would be well understood by one of ordinary skill in the art.”
Appeal Br. 7.
Appellant’s fails to show the Examiner reversibly errs in finding that
claims 26 and 27 are indefinite.
In summary, we reverse the rejection of claims 1–13, 17–25, and 28–
30 under 35 U.S.C. § 112, second paragraph, as indefinite. See 37 C.F.R.
§ 41.37(c)(1)(iv). We affirm the rejection of claims 26 and 27 under 35
U.S.C. § 112, second paragraph.
Rejection of claims 1–13 and 17–30 as unpatentable over Bernatz in
view of Saynor
The Examiner rejects claims 1–13 and 17–30 as obvious over Bernatz
in view of Saynor. Final Act. 7–14. The Examiner finds that Bernatz
discloses a liquid crystal medium with: (1) at least one polymerizable
compound represented by the general formula Rα-A1-(Z1-A2)m1-Rb, which is
inclusive of the polymerizable compounds of claimed formula I; (2) at least
one compound represented by the general formula CY, which is inclusive of
compounds of claimed formula IIA (claim 4); (3) at least one compound
represented by the general formula LY, which is inclusive of compounds of
claimed formula L1 to L11 (claim 8) and T1 to T21 (claim 9); (4) at least
one compound F1 inclusive of compounds of claimed formula O1 to O16
(claim 10), and at least one indane compound inclusive of present claim 11.
Final Act. 7–13. The Examiner finds that Bernatz discloses a liquid crystal
medium comprise at least two or more polymerizable compounds. Id. at 13.
The Examiner finds that Saynor teaches the concept of utilizing a
combination of reactive mesogens having differing polymerization
functionalities and the benefits therefrom. Id.
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The Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the
requisite art at the time the invention was made to utilize at
least two of the polymerizable compounds in the liquid crystal
medium of Bernatz as generally taught therein, and, in light of
the teachings of [Saynor] a combination of reactive mesogens
having differing polymerization functionalities, i.e., combining
mono-, di- and/or tri-functional polymerizable liquid crystal[]
compounds, and the benefits therefrom such combination, with
reasonable expectations of achieving, absent object evidence to
the contrary, the advantages taught therein.
Id. at 13–14.
Appellant argues, inter alia, that Bernatz merely encompasses the
possibility of more than one polymerizable compound present in a medium
and nothing about two polymerizable compounds having different
polymerization reactivity. Appeal Br. 8. Appellants contend that more than
a mere possibility that selection could be made from a genus is required to
support a 35 U.S.C. § 103 rejection. Id. Appellants argue that the no
advantages of using at least a second polymerizable mesogen, especially
having a substantially different polymerization reactivity are disclosed. Id.
at 9.
Appellant argues that Bernatz’s broad disclosure lacks any guidance
for formulating a liquid-crystalline medium comprising at least two reactive
mesogens having sufficiently different polymerization reactivities, such that
each reactive mesogen is capable of separate polymerization reactions.
Appeal Br. 8. Appellant argues that Bernatz fails to specifically teach
“using one or more respective compounds having a substantially different
polymerization reactivity[,] in particular[,] a different UV (light)
absorption.” Id. at 9 (citing Spec. 23:16, Fig. 1). Appellant contends that
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one of ordinary skill in the art would have had no reason or motivation to
derive the claimed subject matter based on Bernatz’s “very generic
statement at most without any apparent benefit” that more than one
polymerizable compound could be present in a liquid-crystalline medium.
Appeal Br. 8, 11.
In response, the Examiner finds that using reactive mesogens having
different functionalities, “by definition[,] inherently allow[s] for separate
polymerization reactions and subsequently have different polymerization
reactivities.” Ans. 19.
The Examiner’s findings fall short of the requirements for supporting
an obviousness rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”). We are provided no explanation of why the ordinarily
skilled artisan would have been motivated to combine Bernatz’s teachings
with Saynor’s to derive the claimed liquid-crystalline medium, but told that
the claimed subject matter is inherent when using multi-functional reactive
mesogens. See Ans. 19. Furthermore, our review of the Examiner’s cited
passage in Bernatz finds that it does not establish use of two or more
polymerizable compounds for separate polymerizations. See Bernatz 6:34–
39. Rather, Bernatz teaches that such mixtures form copolymers, i.e., a
polymer derived from more than one species of monomer. On this record,
the Examiner fails to support findings that the applied prior art teaches or
suggests that combining the teachings of Bernatz and Saynor would have
been beneficial. See In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir.
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2016) (“[T]he [PTO] must make the necessary findings and have an
adequate ‘evidentiary basis for its findings.’”).
We do not sustain the rejection of claim 1 as unpatentable over
Bernatz in view of Saynor. For the same reasons as for claim 1, we do not
sustain the rejection of claims 2–13, 17–25, and 28–30 over the same
references. See 37 C.F.R. § 41.37(c)(1)(iv).
We pro forma reverse the 35 U.S.C. § 103(a) rejection of claims 26
and 27 over Bernatz in view of Saynor because we find that the Examiner’s
rejection is based on speculative meaning as to the scope of claims 26 and
27. In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). Our reversal of the
obviousness rejection is not based on the merits of that rejection in the
context of 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13, 17–30 112 1st paragraph 1–13, 17–
25, 28–30
1–13, 17–30 112 2nd paragraph,
indefiniteness
26, 27 1–13, 17–
25, 28–30
1–13, 17–30 103(a) Bernatz, Saynor 1–13, 17–
25, 28–30
Overall
Outcome
26, 27 1–13, 17–
25, 28–30
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).
AFFIRMED-IN-PART