Kikuchi, Hirotsugu et al.

Patent Trials and Appeals Board

May 27, 2020

2019004180 (P.T.A.B. May. 27, 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.
13/392,803 03/08/2012 Hirotsugu Kikuchi 19629-0133 1090
24633 7590 05/27/2020
HOGAN LOVELLS US LLP
IP GROUP, COLUMBIA SQUARE
555 THIRTEENTH STREET, N.W.
WASHINGTON, DC 20004
EXAMINER
STRAH, ELI D
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
05/27/2020 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):
HLUSDocketing@hoganlovells.com
dcptopatent@hoganlovells.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROTSUGU KIKUCHI, SHIN-ICHI YAMAMOTO,
YASUHIRO HASEBA, and TAKAFUMI KUNINOBU
____________

Appeal 2019-004180
Application 13/392,803
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7–14, 19, 20, and 49–51.2 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. The real parties in interest are JNC Corporation and JNC
Petrochemical Corporation. (Appeal Br. 1).
2 Claim 52 has been objected to as depending upon a rejected claim.
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STATEMENT OF THE CASE
Appellant’s invention is generally directed to a liquid crystal display
element using a liquid crystal material exhibiting a blue phase in which the
element can be used in a wide temperature range, and can achieve a short
response time, a large contrast, and a low drive voltage. (Spec 6.) Claim 7
illustrates the subject matter on appeal and is reproduced below:
7. A liquid crystal display element having two or more
substrates arranged oppositely to each other and a liquid crystal
material, where said liquid crystal material exhibits a blue phase
between the substrates, where a polar component of surface free
energy on a substrate surface in contact with the liquid crystal
material is in the range of 5 to 20 mJm-2, and a contact angle
with an isotropic phase of the liquid crystal material on the
substrate surface is 50 degrees or less, and wherein the substrate
surface is subjected to silane coupling treatment or the substrate
surface has a polyimide resin thin film.
Appeal Br. 10, Claims Appendix.

Appellant (see App. Br., generally) requests review of the following
rejections from the Examiner's Final Office Action (Final Act. 8–16):
I. Claims 7–14 and 49 rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Haruyama (US 2009/0109381
A1, published April 30, 2009) (“Haruyama”) in view of Abe et al.
(JP 07-152037 A, published June 16, 1995) (“Abe”)3, as evidenced
by Kitzerow (H. S. Kitzerow, “The Effect of Electric Fields on Blue
Phases,” Mol. Cryst. Liq. Cryst., 1991, Vol. 202, pp. 51–83)
(“Kitzerow”).

3 The Examiner relies on an English machine translation dated May 19, 2015
when referring to the teachings of Abe. For the purposes of this opinion, we
likewise refer to the English machine translation when discussing the
teachings of Abe.
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II. Claims 19, 50, and 51 rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Haruyama in view of Abe,
as evidenced by Kitzerow, and further in view of Kikuchi
(Hirotsugu Kikuchi et al., “Fast Electro-Optical Switching in
Polymer-Stabilized Liquid Crystalline Blue Phases for Display
Application,” SID Symposium Digest of Technical Papers, 38 (1)
1737–1740 (2007)) (“Kikuchi”).

III. Claim 20 rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Haruyama in view of Abe, as evidenced by
Kitzerow, and further in view of Cao (Wenyi Cao et al., “Lasing in
a three-dimensional photonic crystal of the liquid crystal blue phase
II,” Nature Materials 1, 111–113 (2002)) (“Cao”).

OPINION
Upon consideration of the evidence in this appeal record in light of the
respective positions the Examiner and Appellant advance, we determine that
Appellant has not identified reversible error in the Examiner’s determination
that the applied prior art would have rendered the subject matter recited in
claims 7–14, 19, 20, and 49–51 obvious to one of ordinary skill in the art
within the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner’s § 103(a) rejections for the reasons set forth in the Final Action
and the Answer. We refer to the Examiner's Final Office Action for a
complete statement of the rejection of the claims. (Final Act. 9–16.) We
add the following.
Claim 74 is directed to a liquid crystal display element comprising a
substrate in contact with the liquid crystal material that has a polar
component of surface free energy in the range of 5 to 20 mJ/m2 and a contact

4 Appellant presents substantive arguments addressing claims 7–14, 19, 20,
and 49–51 together. (Appeal Br. 5–8.) We limit our discussion to
independent claim 7 as representative of the subject matter on appeal.
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angle with an isotropic phase of the liquid crystal material of 50 degrees or
less.
The Examiner finds Haruyama teaches a liquid crystal material that
exhibits a blue phase between two substrates. (Final Act. 9–10; Haruyama
¶¶ 23, 35, 36.) The Examiner finds Haruyama teaches alignment layers on
the substrates that are formed of rubbed polyimide film. (Final Act. 10;
Haruyama ¶ 28.) The Examiner finds Haruyama is silent with regard to the
recited limitations of “where a polar component of surface free energy on a
substrate surface in contact with the liquid crystal material is in the range of
5 to 20 mJm[-2],” and “wherein a contact angle in the substrate surface of the
liquid crystal material in an isotropic phase is 50 degrees or less.” (Final
Act. 10.) The Examiner finds Abe teaches a polyimide alignment layer for
liquid crystal display devices that has a polar component of surface energy
value of below 12 mJ/m2. (Final Act. 11; Abe ¶ 7.) The Examiner
specifically states:
Abe teaches a rubbed polyimide resin layer formed
from identical diamine and tetracarboxylic dianhydride
precursor components as those disclosed by the present
specification, therefore, the rubbed polyimide of Abe is
considered to be necessarily capable of possessing the
claimed polar component surface energy and contact angle
properties when in contact with the aforementioned liquid
crystal material discussed above.

(Final Act. 11.)
Thus, the Examiner finds that both Abe and Appellant disclose
forming alignment layers of polyimide resin made from tetracarboxylic
dianhydrides and diamines that are substantially identical. (Final Act. 11;
Spec 34–61 (disclosed diamines, 62–73 (disclosed tetracarboxylic
dianhydrides); see Abe ¶ 7.)
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The Examiner concludes that:
[s]ince Haruyama teaches a liquid crystal display device
that has rubbed polyimide film alignment layers and Abe
discloses rubbed polyimide alignment layers for liquid crystal
displays, it would have been obvious to one of ordinary skill in
the art at the time of the invention to have utilized Abe's rubbed
polyimide alignment layers in the liquid crystal display device
of Haruyama to yield a device that has reduced non-uniformity,
provides stability, and provides good orientation and pretilt
angle as taught by Abe.

(Final Act. 12.)
Appellant argues that the teachings of Haruyama and Abe, taken
individually or in combination, do not teach or suggest the claimed liquid
display structure having a substrate in contact with the liquid crystal material
has a polar component of surface free energy in the range of 5 to 20 mJ/m2
and a contact angle with an isotropic phase of the liquid crystal material of
50 degrees or less. (Appeal Br. 5.)
Appellant’s argument does not identify reversible error in the
Examiner’s determination of obviousness. It is well settled that a chemical
composition and its properties are inseparable. In re Spada, 911 F.2d 705,
709 (Fed Cir. 1990) (“Products of identical chemical composition cannot
have mutually exclusive properties.”). Cf. In re Papesch, 315 F.2d 381, 391
(CCPA 1963) (“From the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing.”).
Appellant does not dispute that Abe’s rubbed polyimide resin layer is
formed from diamine and tetracarboxylic dianhydride precursor components
that are the same as the components disclosed for the same layer in the
instant Specification. (See generally Appeal Br.) Further, Appellant does
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not dispute the Examiner’s determination that it would have been obvious to
utilize the rubbed polyimide resin layer described by Abe in the liquid
crystal display device of Haruyama. (Id.) Instead, Appellant contends that
neither of the cited references discloses the claimed surface free energy and
contact angle properties for the alignment layers. (Appeal Br. 5.)
As the Examiner finds, there is a reasonable basis for one skilled in
the art to reasonably expect that the prior art composition of the alignment
layer is the same or substantially the same to the composition of the claimed
alignment layer and that the prior art composition possesses the same
properties as the claimed composition. Final Act 11. Thus, when a claimed
product reasonably appears to be substantially the same as a product
disclosed by the prior art, the burden is on the applicant to prove that the
prior art product does not necessarily or inherently possess characteristics
attributed to the claimed product. Spada, 911 F.2d at 708; In re Best, 562
F.2d 1252, 1255 (CCPA 1977). Appellant has not adequately explained why
one skilled in the art would have found Abe’s polymide alignment layers to
be unsuitable for use in Haruyama’s liquid crystal display element given that
Abe discloses its use results in a liquid crystal display element with
improved performance. Abe ¶ 24. Further, Appellant has not directed us to
any objective evidence showing that Abe’s alignment layers do not possess
the characteristics or properties of the claimed alignment layers.
For the reasons we state above and the Examiner presents, we sustain
the prior art rejection of claims 7–14, 19, 20, and 49–51 under
35 U.S.C. § 103(a).

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
7–14, 49 103(a) Haruyama, Abe,
Kitzerow
7–14, 49
19, 50, 51 103(a) Haruyama, Abe,
Kitzerow, Kikuchi
19, 50, 51
20 103(a) Haruyama, Abe,
Kitzerow, Cao
20
Overall
Outcome
7–14, 19,
20, 49–51

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

AFFIRMED