Manabe, Atsutaka et al.

Patent Trials and Appeals Board

Feb 26, 2020

14342034 - (D) (P.T.A.B. Feb. 26, 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.
14/342,034 02/28/2014 Atsutaka Manabe MERCK-4177 4054
23599 7590 02/26/2020
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ATSUTAKA MANABE and DAGMAR KLASS
Appeal 2019-002842
Application 14/342,034
Technology Center 1700
Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and
N. WHITNEY WILSON, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision twice rejecting claims 1, 4, 5, 7–12, 19–29, 31–35, 37, and 39–43.3
We AFFIRM.

1 This Decision includes citations to the following documents: Specification
filed Feb. 28, 2014 (“Spec.”); Non-Final Office Action dated Jan. 9, 2018
(“Non-Final Act.”); Advisory Action mailed July 27, 2018 (“Advisory”);
Appeal Brief filed Oct. 16, 2018 (“Appeal Br.”); Examiner’s Answer dated
Dec. 21, 2018 (“Ans.”); and Reply Brief filed Feb. 21, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as Merck
Patent GmbH. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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CLAIMED SUBJECT MATTER
The invention relates to high frequency components, e.g., microwave
components, comprising liquid-crystalline media. Spec. 1:4–6. The
components may be used in high-frequency devices, such as devices for
shifting the phase of microwaves, in particular for microwave phased-array
antennas. Id. at 1:6–7. According to the Specification, at the time of the
invention, known liquid-crystalline media for use in microwave components
had serious disadvantages, most of which resulted in slow switching
performance. Id. at 3:22–24. The inventors are said to have discovered liquid
crystalline media having improved properties, e.g., fast switching
performance with low rotational viscosity and acceptable tunability. Id. at
3:23–24, 3:36–4:2; see also id. at 4:28–33. Claim 1, the sole independent
claim on appeal, is illustrative of the claimed subject matter. An image of
claim 1 is reproduced below. Appeal Br. 25–28 (Claims Appendix).4

4 We note that the “wherein” clause following formula II includes a
typographical error: “R11 and R12” should read “R21 and R22.”
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Above is an image of claim 1, which recites a “tunable microwave phase
shifter comprising a liquid-crystalline medium” that includes compounds of
formulas IB, IC-1, II, and III.
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
Name Reference Date
Gray et al. US 5,156,763 Oct. 20, 1992
Takeshita et al. US 6,315,922 B1 Nov. 13, 2001
Suermann US 6,753,045 B2 June 22, 2004
Lussem et al. US 2005/0067605 A1 Mar. 31, 2005
Tanaka US 2010/0127211 A1 May 27, 2010
Lietzau et al. US 8,197,709 B2 June 12, 2012

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REJECTIONS5
1. Claims 1, 4, 5, 7–12, 19–29, 31–35, and 39–43 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Lussem in view of Suermann,
Takeshita, and Gray.
2. Claim 37 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lussem in view of Suermann, Takeshita, Gray, and Tanaka.
OPINION
The Examiner found that Lussem discloses “switchable (tunable)
components for high-frequency technology, in particular microwave
technology, which use liquid-crystalline dielectrics [abstract] such as phase
shifters, varactors, radio wave antenna arrays and others [0057].” Non-Final
Act. 7. The Examiner found that Lussem discloses mixtures of “liquid
crystal compounds [that] are essentially selected from . . . known
compounds or are obtained analogously to known compounds.” Id. (citing
Lussem ¶ 67). The Examiner found that Lussem includes PTP (p. 7), CC-n-
V1 and CC-n-V (p. 9), and UTPP (p. 15) in the list of compounds identified
as suitable for use in the mixture. Non-Final Act. 8. The Examiner found
that PTP, CC-n-V1 or CC-n-V, and UTPP are equivalent to the Appellant’s
claim 1 formulas IB, IC-1, and II. Id. at 9–11. Lussem discloses that the
mixture contains a compound having “particularly preferably zero or one[]
bridging group[,] . . . preferably . . . —CF2O—.” Lussem ¶ 70. The
Examiner found that Lussem identifies PUQU (p. 8), which includes

5 The Examiner has withdrawn the rejections of claim 32 under 35 U.S.C.
§ 112, first paragraph, claims 36 and 38 under 35 U.S.C. § 112, fourth
paragraph, and claim 38 under 35 U.S.C. § 103(a) over Lussem in view of
Suermann, Takeshita, Gray and Lietzau. Advisory Act., Continuation Sheet
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bridging group —CF2O—, as suitable for use in the mixture. Non-Final Act.
11–12. The Examiner found that PUQU is equivalent to the Appellant’s
claim 1 formula III compound. Id. at 12.
The Examiner acknowledged that Lussem “does not teach a specific
example comprising [the] App[ell]ant’s claimed compounds.” Id. at 9. As
further discussed below, however, the Examiner found that Suermann and
Takeshita teach why one of ordinary skill in the art would have selected
from Lussem’s list of suitable liquid crystal compounds the same
compounds used in the Appellant’s claim 1 liquid-crystalline medium (i.e.,
compounds of claim 1 formulas IB, IC-1, II, and III). See Ans. 24.
The Examiner found that Suermann discloses a liquid crystal mixture
comprising at least three compounds having formulas I, II, and III. Non-
Final Act. 9 (citing Suermann 4:3–45). The Examiner found that Suermann’s
formula II is equivalent to Lussem’s UTPP compound. Id. at 11 (citing
Suermann 4:25). The Examiner determined that the ordinary artisan would
have included Lussem’s UTPP compound—equivalent to the Appellant’s
claim 1 formula II—in Lussem’s liquid crystal mixture based on Suermann’s
teaching that this compound has low values for the rotational viscosity. Id. at
11 (citing Suermann 12:63–67).
Suermann discloses that in addition to the formula I, II, and III
compounds, the mixture preferably comprises one or more liquid-crystalline
tolan compounds (Suermann 16:13–15) and one or more alkenyl compounds
(id. at 5:18–20). The Examiner found that Suermann identifies as preferred a
tolan compound (formula Ta) that is equivalent to Lussem’s PTP compound.
Non-Final Act. 9; see Suermann 16:18–25. The Examiner determined that
the ordinary artisan would have included Lussem’s PTP compound—
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equivalent to the Appellant’s claim 1 formula IB—in Lussem’s liquid crystal
mixture based on Suermann’s teaching that “[o]wing to the high
birefringence of the tolan compounds, lower layer thicknesses can be used,
which significantly shortens the response times” (Suermann 16:15–18).
Non-Final Act. 10. The Examiner found that Suermann identifies as
particularly preferred an alkenyl compound (formula IVe) having the same
formula as Lussem’s CC-n-V or CC-n-V1 compound. Id. at 10; see
Suermann 6:17–18 (“Particular preference is given to compounds of the
formulae IVe and IVf . . . .”). The Examiner determined that the ordinary
artisan would have included Lussem’s CC-n-V or CC-n-V1 compound—
equivalent to the Appellant’s claim 1 formula IC-1—in Lussem’s liquid
crystal mixture based on Suermann’s teaching that alkenyl compounds result
in low rotational viscosity. Non-Final Act. 11 (citing Suermann 6:21–23).
The Examiner found that Takeshita discloses a liquid crystal
composition comprising a compound (1-1) that is structurally similar to
Lussem’s PUQU compound. Non-Final Act. 12 (citing Takeshita 3:35). The
Examiner determined that the ordinary artisan would have used Takeshita’s
compound (1-1) in Lussem’s liquid crystal mixture because Takeshita
discloses that the compound “provide[s] a very large dielectric constant
anisotropy, a relatively small viscosity, a large optical anisotropy, and a high
resistivity value.” Id. at 12–13.
The Examiner concludes that
one of ordinary skill in the art would easily arrive at
Appellant’s claimed composition from the disclosures of
Lussem, Suermann, Takeshita, and Gray based on the
knowledge of one of ordinary skill in the liquid crystal art to
combine known equivalents through routine experimentation in
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order to achieve increased addressability among other desirable
properties for high-frequency technology.
Ans. 24.
The Appellant contends that the Examiner erred reversibly in finding
that the ordinary artisan would have formulated Lussem’s liquid crystal
mixture based on the teachings of Suermann and Takeshita, because both
Suermann and Takeshita are “completely devoid of any mention of
microwave components, let alone phase shifters.” Appeal Br. 10, 13. The
Appellant argues that Suermann is directed to nematic liquid-crystal
mixtures used in twisted nematic and supertwisted nematic liquid-crystal
displays, and is concerned with “providing TN and STN displays which
‘have short response times, in particular at low temperatures, and/or good
steepnesses and improved temperature dependence of the operating voltage
and/or good angle dependenc[i]es of the contrast.’” Id. at 10 (quoting
Suermann 2:14–21). The Appellant argues that Takeshita “is directed to
providing nematic liquid crystal compositions that can be used in an active
matrix mode in a liquid crystal display.” Id. 13.
The Appellant’s argument is not persuasive of error in the Examiner’s
obviousness determination.
An obviousness rejection predicated on selection of one or more
components from numerous possible choices may be appropriate if the prior
art provides direction as to which of many possible choices is likely to be
successful. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d
1342, 1364 (Fed. Cir. 2007). The fact that a reference “discloses a multitude
of effective combinations does not render any particular formulation less
obvious.” Merck & Co., Inc. v. Biocraft Labs, 874 F.2d 804, 807 (Fed. Cir.
1989) (citing In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
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The Appellant does not dispute the Examiner’s finding that Lussem
discloses microwave components comprising a mixture of liquid-crystal
compounds, and identifies as useful in the mixture, compounds that are
equivalent to the Appellant’s claim 1 compounds. See generally Appeal Br.
8–10. As acknowledged by the Appellant, Lussem discloses “that the liquid-
crystal compounds are selected from ‘known compounds or are obtainable
analogously to known compounds.’” Appeal Br. 9 (quoting Lussem ¶ 67).
Although Suermann and Takeshita are not concerned with microwave
components or phase shifters, they describe known liquid-crystal
compounds. The Appellant has not explained convincingly why the ordinary
artisan would not have looked to these references in determining which of
Lussem’s known, liquid-crystal compounds to combine to achieve a mixture
having desired properties. See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)
(explaining that if a reference is in a different field from that of the
inventor’s endeavor, it is still analogous art if it deals with a matter which
logically would have commended itself to an inventor’s attention in
considering a problem).
The Appellant argues that Suermann provides no suggestion that
properties desirable in TN and STN displays, such as low values of
rotational viscosity, would benefit a tunable microwave phase shifter. Reply
Br. 3–4. The Appellant cites Lietzau (US 8,197,709 B2, issued June 12,
2012)6 as evidence that the ordinary artisan would have understood that
compounds having a high rotational viscosity are preferable in liquid

6 Lietzau is the English language equivalent of CN 102050708 A, relied on
by the Examiner in a prior rejection that has been withdrawn. See footnote 5
supra.
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crystalline phase shifters. Appeal Br. 12–13; Reply Br. 4. The relied-upon
disclosure in Lietzau reads: “the compounds according to the invention have
. . . an advantageously high rotational viscosity about the longitudinal axis of
the molecule . . . . These properties make them particularly suitable for use
in components for high-frequency technology, in particular in liquid-
crystalline phase shifters.” Lietzau 2:50–59. The Examiner relies on Lussem
paragraph 75 in support of a finding that the ordinary artisan would have
selected compounds having low rotational viscosity. Ans. 20. Lussem
paragraph 75 discloses that “[c]ompounds containing a vinyl end group and
compounds containing a methyl end group have low rotational viscosity.”
Although, as argued by the Appellant, Lussem does not explicitly
describe low rotational viscosity as “beneficial or advantageous” (Reply Br.
7), Lussem also does not indicate that such property is undesirable. To the
contrary, Lussem paragraph 75 follows a description of preferred
compounds for use in Lussem’s liquid crystal mixture. See Lussem ¶¶ 68–
74. Moreover, as found by the Examiner, Lussem discloses that compounds
CC-n-V and CC-n-V1, both of which contain vinyl end groups, may be
included in Lussem’s liquid-crystal mixture used in microwave components.
Ans. 20 (citing Lussem, p. 9). Given this disclosure, we are not persuaded by
the Appellant’s argument that the ordinary artisan would have understood
Lietzau’s preference for compounds having high rotational viscosity as
discouraging the use of compounds having low rotational viscosity in all
tunable microwave phase shifters.
The Appellant argues that like Suermann, Takeshita fails to disclose
that the properties of its compounds would benefit a tunable microwave
phase shifter. Reply Br. 8. The Appellant also argues that the Examiner erred
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in finding that the ordinary artisan would have included Takeshita’s formula
(1-1) compound in Lussem’s mixture because it has a large dielectric
anisotropy and a large optical anisotropy. See Appeal Br. 15–16. The
Appellant argues that, to the contrary, Takeshita discloses several exemplary
mixtures containing Takeshita’s formula (1-1) compound, each of which
exhibited a significantly lower optical anisotropy and dielectric anisotropy
than exhibited by Lussem’s exemplary mixtures M1-M3. Id.
The Appellant’s argument is not persuasive.
The Examiner’s rejection is not based on Lussem’s mixtures M1-M3.
Rather, the rejection is based on a mixture suggested by the combined
teachings of Lussem and Suermann. The Appellant has not shown reversible
error in the Examiner’s finding that the ordinary artisan would have included
Takeshita’s formula (1-1) compound in a mixture suggested by the
combined teachings of Lussem and Suermann based on Takeshita’s
disclosure that “[t]he component A in the liquid crystal composition . . . has
the effects to maintain the viscosity relatively small, increase the optical
anisotropy,” etc., and that these effects are attributable to the formula (1-1)
compound which “has a[] very large dielectric constant anisotropy . . . and . .
. a relatively small viscosity, a large optical anisotropy and a high resistivity
value” (Takeshita 14:61–15:11).
The Examiner relies on Gray for limitations found only in dependent
claims 5 and 7. See Non-Final Act. 15; Appeal Br. 17. The Appellant argues
that because Gray “is devoid of any mention of . . . microwave components
or phase shifters,” the ordinary artisan would not have had “any reasonable
expectation that the inclusion of compounds of Gray et al.’s formula 1.5 in
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mixtures M1-M3 of Lussem et al. would not adversely impact the material
quality of the Lussem et al. mixtures.” Appeal Br. 18.
These arguments are not persuasive for the reasons discussed above in
connection with Suermann and Takeshita, i.e., the rejection is not based on
Lussem’s mixtures M1-M3, and the Appellant has not explained
convincingly why the ordinary artisan would not have looked to Gray in
determining which of Lussem’s known, liquid-crystal compounds to
combine to achieve a desired result. See Non-Final Act. 15; Ans. 23.
As to the separate rejection of claim 37, the Examiner has fully
addressed the Appellant’s arguments, and we agree with the Examiner that
they are not persuasive of reversible error for the reasons stated in the
Answer. See Appeal Br. 20–21; Ans. 24–26.
Any additional arguments made by the Appellant but not discussed
explicitly in this decision are unpersuasive of reversible error in the
Examiner’s conclusion of obviousness for the reasons stated in the Answer.
See Ans. 19–24.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 5, 7–
12, 19–29,
31–35, 39–
43
103(a) Lussem, Suermann,
Takeshita, Gray

1, 4, 5, 7–
12, 19–29,
31–35,
39–43

37 103(a) Lussem, Suermann,
Takeshita, Gray,
Tanaka

37
Overall
Outcome
1, 4, 5, 7–
12, 19–29,
31–35, 37,
39–43

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