KYUSHU UNIVERSITY, NATIONAL UNIVERSITY CORPORATION et al.

Patent Trials and Appeals Board

May 27, 2020

2019004678 (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.
14/634,426 02/27/2015 Hirotsugu KIKUCHI 19629-0179 1043
24633 7590 05/27/2020
HOGAN LOVELLS US LLP
IP GROUP, COLUMBIA SQUARE
555 THIRTEENTH STREET, N.W.
WASHINGTON, DC 20004
EXAMINER
FROST, ANTHONY J
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 2019-004678
Application 14/634,426
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 50–60. 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).
Appeal 2019-004678
Application 14/634,426

2

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 50
illustrates the subject matter on appeal and is reproduced below:
50. A liquid crystal display element having two or more
substrates arranged oppositely to each other and a liquid crystal
material exhibiting 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
wherein a contact angle on the substrate surface of the
liquid crystal material in an isotropic phase is 50 degrees or
less, wherein the substrate surface is subjected to coupling
treatment.
Appeal Br. 9, Claims Appendix.

Appellant (see generally Appeal Br.) requests review of the following
rejections from the Examiner's Final Office Action (Final Act. 2–8):
I. Claims 50–56 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”)2.

II. Claims 57 and 60 rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Haruyama in view of Abe, and further
in view of Kikuchi (Hirotsugu Kikuchi et al., “Fast Electro-Optical
Switching in Polymer-Stabilized Liquid Crystalline Blue Phases for

2 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.
Appeal 2019-004678
Application 14/634,426

3

Display Application,” SID Symposium Digest of Technical Papers,
38 (1) 1737–1740 (2007)) (“Kikuchi”).

III. Claims 58 and 59 rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Haruyama in view of Abe, 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 50–60 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. 2–8.) We add the following.
Claim 503 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 angle with an isotropic phase of the liquid crystal material of 50
degrees or less.
The Examiner finds Haruyama teaches a liquid crystal material
exhibiting a blue phase between two substrates. (Final Act. 2–5; Haruyama

3 Appellant presents substantive arguments addressing claims 50–60
together. (Appeal Br. 4–8.) We limit our discussion to independent claim
50 as representative of the subject matter on appeal.
Appeal 2019-004678
Application 14/634,426

4

¶¶ 23, 35, 36.) The Examiner finds Haruyama teaches alignment layers on
the substrates formed of rubbed polyimide film. (Final Act. 3; 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. 3.) 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. 3; 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. 4.) 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. 3; Spec 34–61 (disclosed diamines, 62–73 (disclosed
tetracarboxylic dianhydrides); see Abe ¶ 7.)
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
Appeal 2019-004678
Application 14/634,426

5

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. 4–5.)
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
that 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
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.)
Appeal 2019-004678
Application 14/634,426

6

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 3. 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 rejections of claims 50–60 under 35 U.S.C. § 103(a).
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.

Appeal 2019-004678
Application 14/634,426

7

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
50–56 103(a) Haruyama, Abe 50–56
57, 60 103(a) Haruyama, Abe,
Kikuchi
57, 60
58, 59 103(a) Haruyama, Abe,
Cao
58, 59
Overall
Outcome
50–60

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

AFFIRMED