Kouki Sagou et al.

Patent Trials and Appeals Board

Oct 11, 2019

13806146 - (D) (P.T.A.B. Oct. 11, 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.
13/806,146 12/21/2012 Kouki Sagou 38672-US-1002-PCT 7980
31561 7590 10/11/2019
JCIPRNET
P.O. Box 600 Taipei Guting
Taipei City, 10099
TAIWAN
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
10/11/2019 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KOUKI SAGOU and YASUHIRO HASEBA
____________

Appeal 2018-008781
Application 13/806,146
Technology Center 1700
____________

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

CASHION, 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 16, 17, and 33–65. Appeal Br. 1. 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 the real party in interest as JNC
Corporation and JNC Petrochemical Corporation. Appeal Br. 1.
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Application 13/806,146

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The invention relates to a compound of a specific formula used as a
liquid crystal compound and a liquid crystal medium for optical elements.
Spec. ¶ 1. Claim 16 is illustrative of the inventive compound and we refer to
the Claims Appendix for the text of the claim. Appeal Br. 11–12 (Claims
App.). Independent claim 33 is also directed to a compound similar to claim
16’s compound.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action:2
I. Claims 16, 17, and 33–65 rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Haseba ’681 (WO 2010/058681 A1, published
May 27, 2010, and relying on US 2011/0242473 A1 to Haseba (hereinafter
Haseba ’473), published October 6, 2011, as the English equivalent) and
Osawa (US 4,997,942, issued March 5, 1991).

II. Claims 16, 17, 33–42, 44, and 45 rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Matsui (US 5,858,270, issued January
12, 1999), as evidenced by Osawa.

III. Claims 16, 17, and 33–65 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Haseba ’157 (US 2009/0059157 A1, published
March 5, 2009) and Osawa.

As a preliminary matter, the Examiner relies on Haseba ’681, Matsui,
and Haseba ’157 as primary references in separate rejections for the same
proposition, that of teaching a compound useful in liquid crystal
compositions having a branched terminal group, where the compound is
structurally similar to the claimed compound but differs from the claimed
compound in that it lacks a branched alkyl group represented by formula

2 The Examiner withdrew the rejections based on the ground of nonstatutory
double patenting. Ans. 24.
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(CHN-1-1). Final Act. 7, 16–17, 19–20. Appellant does not dispute the
Examiner’s specific finding with respect to the noted primary references.
See generally Appeal Br. Further, the Examiner further relies on the same
secondary reference to Osawa to overcome the deficiencies of the primary
references. See generally Final Act. Therefore, we find the primary
references and the rejections based on these references to be cumulative.
Accordingly, we limit our discussion to Rejection I3, based on Haseba ’681
and Osawa, as representative of the Examiner’s position with the
understanding that our discussion of this rejection applies equally to all
rejections.

OPINION
Appellant does not argue any claim separate from the other. See
generally Appeal Br. Accordingly, we select independent claim 16 as
representative of the subject matter claimed. Claims 17 and 33–65 stand or
fall with claim 16.
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we affirm the Examiner’s prior art rejections of claims 16, 17,
and 33–65 for the reasons the Examiner presents. We add the following for
emphasis.
Claim 16 (Rejection I)
The Examiner finds, and Appellant does not dispute, that Haseba ’681
teaches a compound useful in liquid crystal compositions having a branched

3 We note that Rejection I addresses all claims presented for review on
appeal.
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terminal group, where the compound is structurally similar to the claimed
compound but differs from the claimed compound in that it lacks a branched
alkyl group represented by formula (CHN-1-1). Final Act. 7. The Examiner
finds that Osawa teaches that a liquid crystal composition comprising a
compound having a branched alkyl group would effectively lower the
melting point of the liquid crystals compared with those containing a straight
chain alkyl group. Final Act. 8; Osawa col. 9, ll. 46–51. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
to arrive at the claimed invention from the combined teachings of the cited
art because (1) Haseba ’681 teaches straight and branched alkyl are
equivalent and branched alkyls provide good compatibility with other liquid
crystal compounds and (2) Osawa teaches branched alkyls lower the melting
point of the liquid crystals. Final Act. 8; Haseba ’681 ¶¶ 35, 130; Osawa
col. 9, ll. 46–51.
Appellant argues that there is evidence pointing to Osawa’s statement
that “a branched terminal alkyl lowers the [melting point]” as not a general
case. Appeal Br. 8 (emphases omitted). That is, Appellant contends that
there is evidence demonstrating that a branched terminal alkyl will not
always lower the melting point and, thus, the Examiner has no basis for
combining the teachings of the cited art. Id. In view of this, Appellant also
asserts that the evidence demonstrates that the 2-position branching of the
terminal alkyl/alkenyl is unexpectedly particularly effective in lowering
melting point as compared to branching at the other positions. Id. at 8–9.
We note that the evidence Appellant discusses in support of the stated
assertions are statements from the secondary reference to Osawa (see
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generally Appeal Br.) and a Table 7’4 submitted in a response dated October
3, 2016 (hereinafter “Response”) (Appeal Br. 7). According to Appellant,
the data of Table 7’ shows that the 2-position branched compound (7-1) of
the claimed invention has a melting point lower by more than 10°C as
compared to i) the straight-terminal compound ref. G-1) after eliminating the
even-odd effect and ii) the straight-terminal compound ref. G-2) having the
same total carbon number of terminal alkyl as the 2-position branched
compound (7-1) of the claimed invention. Response 19. Appellant further
contends that the data of Table 7’ show that compounds ref. G-3) to ref. G-
5), having terminal alkyl groups branch at different positions, all adversely
have higher melting points as compared to the straight terminal compound
ref. G-1) or ref. G-2). Id. Therefore, Appellant asserts that the claimed
compound having a terminal group branched at 2-position carbon
unexpectedly lowers the melting point. Id.
Appellant’s arguments and data are not persuasive of reversible error
in the Examiner’s determination of obviousness.
The burden of establishing unexpected results rests on the Appellant.
Appellant may meet this burden by establishing that the difference between
the claimed invention and the closest prior art was an unexpected difference.
See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected
results must be established by factual evidence; attorney statements are
insufficient to establish unexpected results. See In re Geisler, 116 F.3d
1465, 1470–71 (Fed. Cir. 1997). Further, a showing of unexpected results
supported by factual evidence must be reasonably commensurate in scope

4 Table 7’ is not presented as part of any declaration evidence.
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with the degree of protection sought by the claims on appeal. In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983).
We first note that Appellant’s statement in the Appeal Brief that the
Examiner has “ignored the clarification that the showing that Osawa’s
statement is not a general case is not an unexpected effect of this invention
but is actually a basis of unexpectability of the real unexpected effect of this
invention” (emphasis added) (Appeal Br. 8) appears inconsistent because it
is not clear if Appellant is asserting unexpected results. Further, Appellant’s
comparison is limited to a single inventive compound (7-1). Appellant has
not explained why this compound is representative of the broad scope of
compounds claimed. In addition, there is no recognition in the Specification
that alkyl group branchings at the 2-position unexpectedly lower the melting
point of compounds. In fact, the Specification describes that “[a]s compared
to the straight-chain compounds, a compound having an alkyl group
branching at 2-, 3-, 4- or 1-position, such as the groups (CHN 1-1) to (CHN
1-9), has a quite low melting point.” Spec. ¶ 84. Without further
explanation of what Appellant is doing that is different from Osawa, the
statement in the Specification appears to be just as general as Osawa’s
statement.
Thus, on this record, Appellant has not adequately explained why the
evidence relied upon would have been unexpected by one of ordinary skill in
the art or is reasonably commensurate in the scope with the claims.
Appellant’s arguments that Osawa does not teach a specific example
at the 2-position or that the lowering of a melting point depends on the
branching position are also unavailing for the reasons the Examiner
provides. Ans. 26–27. Further, as noted above, the Specification does not
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recognize any advantage of placing an alkyl branching group in the 2-
position either. Spec. ¶ 84.
Appellant additionally argues that one of ordinary skill in the art
would not have been motivated to make the 2-branched alkyl R1 of Osawa’s
compound directly bond to a ring because Osawa limited the R1 group to be
bonded via the –O–. Appeal Br. 9.
This argument is also unavailing because, as the Examiner notes,
Osawa suggests that bonding an alkyl branched group R2 directly to the ring
also lowers the melting point. Ans. 30. Thus, Appellant has not
distinguished the claimed invention from the teachings of the cited art.
Accordingly, we affirm the Examiner’s prior art rejections of claims
16, 17, and 33–65 under 35 U.S.C. § 103(a) for the reasons the Examiner
presents and we provide above.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
16, 17, and
33–65
103(a) Haseba ’681,
Osawa 
16, 17,
and 33–65

16, 17, 33–
42, 44, and
45
103(a) Matsui, Osawa  16, 17,
33–42,
44, and 45

16, 17, and
33–65
103(a) Haseba ’157,
Osawa 
16, 17,
and 33–65

Overall
Outcome
16, 17,
and 33–65

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Application 13/806,146

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TIME PERIOD
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).

AFFIRMED