May, Philip Edward. et al.

Patent Trials and Appeals Board

Dec 16, 2019

14947410 - (D) (P.T.A.B. Dec. 16, 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.
14/947,410 11/20/2015 Philip Edward May MERCK-4007-D01 1651
23599 7590 12/16/2019
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
MC GINTY, DOUGLAS J
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
12/16/2019 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 PHILIP EDWARD MAY, MARK JAMES,
PIOTR WIERZCHOWIEC, STEPHEN BAIN,
PAUL CRAIG BROOKES, EDGAR KLUGE, LI WEI TAN,
DAVID SPARROWE, and MAGDA GONCALVES-MISKIEWICZ
Appeal 2019-003548
Application 14/947,410
Technology Center 1700
Before MARK NAGUMO, KAREN M. HASTINGS, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
ROESEL, 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 1, 3–22, 24, and 28–43. 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(a). Appellant identifies the real party in interest as Merck Patent
GmbH. Appeal Br. 1.
Appeal 2019-003548
Application 14/947,410

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CLAIMED SUBJECT MATTER
The claims are directed to a formulation comprising an organic
semiconducting compound. The formulation can be used as conducting ink
for the preparation of organic electronic devices, such as OLED devices.
Spec. 1:6–12. Claim 1 is illustrative of the claimed subject matter and is
reproduced below:
1. Formulation comprising one or more organic
semiconducting compounds (OSC), and one or more organic
solvents, wherein said formulation has a viscosity at 25°C in the
range of 0.5 to 9.5 mPas and wherein the boiling point of the
solvent is at most 400°C.
REFERENCES
The prior art relied upon by the Examiner is James et al.,
WO 2009/109273 A1, published September 11, 2009 (“James”).
REJECTION
The Examiner maintains the following rejection under pre-AIA
35 U.S.C. § 103: claims 1, 3–22, 24, and 28–43 over James.2

2 The Examiner also maintains a provisional non-statutory double patenting
rejection, which Appellant does not challenge on appeal. See Appeal Br. 5
(“it would be premature to take positive action, such as filing a terminal
disclaimer, at this time”). We do not reach the provisional rejection, other
than to note that Application No. 15/266,532 has since issued as Patent
No. 10,256,408 (Apr. 9, 2019).
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OPINION
Independent Claim 1
The Examiner finds that James teaches a formulation comprising one
or more organic semiconducting compounds (OSC) and one or more organic
solvents, as recited in claim 1. Final Act. 4. Regarding the boiling point
limitation of claim 1, the Examiner asserts that James teaches “[p]arameters
of the formulation” (id.), citing James’ disclosure that “the solvent, or in
case of a solvent blend the highest boiling solvent of the solvent blend, has a
boiling point < 400° C at 1 Torr.” James, 11:27–28. Regarding the
viscosity limitation of claim 1, the Examiner acknowledges that James
teaches viscosities of greater than 10 cP (mPas) at 25° C, but relies on
James’ teaching of other embodiments having viscosities less than 10 cP
(mPas).3 Final Act. 4–5 (citing James, 2:22–24, 15:13–22, 32:29–32, 33:1).
Appellant challenges the Examiner’s obviousness rejection, arguing
that, by requiring that its solvents have a viscosity of more than 10 mPas,
James “directs one of ordinary skill in the art away from the formulations as
claimed” having a viscosity of 9.5 mPas or less. Appeal Br. 3. Appellant
additionally argues that “[t]here are no formulations with one or more OSC
compounds disclosed at these cited portions of James (or elsewhere) which
have a viscosity of less than 10 cP.” Id. at 4 (emphasis omitted).
After considering Appellant’s briefs, the Examiner’s Answer, the
cited teachings of the reference, and the record as a whole, we determine that
Appellant does not identify reversible error in the Examiner’s decision to
reject claim 1 over James.

3 Appellant and the Examiner agree that 1 cP (centipoise) is equal to 1 mPas
(milli-Pascal second). Appeal Br. 3; Final Act. 4; Ans. 7.
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We agree with the Examiner (Ans. 7–8) that James discloses
formulations within the viscosity limitation of claim 1 by disclosing
“formulations with a viscosity of < 10 [mPas]” and that such viscosity “is
often required e.g. for spin coating and standard IJP [ink jet printing]
techniques.” James, 2:2–3, 2:22–24. Appellant asserts that these disclosures
are “part of the Background discussion of James, not part of the disclosure
of the James invention.” Reply Br. 1. Appellant’s assertion is not a
persuasive argument against the Examiner’s rejection. For purposes of
determining whether Appellant’s claimed invention would have been
obvious in view of James, the reference’s disclosure of background
information is no less relevant than its disclosure of the invention. In re
Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (“A reference
must be considered for everything that it teaches, not simply the described
invention or a preferred embodiment.”).
Appellant additionally argues that the cited disclosure of James
“relates to printing processes in general and is not to a specific application of
printing with OSC formulations.” Reply Br. 1. We disagree. The above-
quoted disclosures are in the context of James’ discussion of “printing an
OSC material efficiently.” James, 1:32–33.
Still further, Appellant argues that “[i]t would be evident to one of
ordinary skill in the art that the viscosity of the total composition in James
would actually be even higher than the more than 10 cP required for just the
solvent.” Reply Br. 2 (emphasis omitted). Appellant’s argument pertains to
James’ description of his invention, and does not address James’ disclosure
of “formulations with a viscosity of < 10 cP, like for example from tetralin
or xylene solutions” nor James’ teaching that “[a] low viscosity (<10 cP) is
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often required for spin coating and standard IJP techniques.” James, 2:2–3,
2:22–24. We agree with the Examiner that the viscosities discussed in the
quoted excerpts are “the viscosities of the formulations of functional
material, i.e., the organic semiconductor compounds (OSC), and the solvent,
not just the solvent alone.” Ans. 8. We also agree with the Examiner that
the tetralin and xylene solvents that James discloses as part of a low
viscosity (<10 cP) formulation meet the boiling point limitation of claim 1.
Id. at 9; James, 2:2–3, 32:15, 32:31.
We are not persuaded by Appellant’s argument that James teaches
away from OSC formulations having a viscosity less than 9.5 mPas. Appeal
Br. 3; Reply Br. 3. We agree with the Examiner that “[w]hile James may
teach higher viscosities (> 10 cP) for flexographic and gravure printing, the
reference does not ‘teach away’ from use in spin coating and standard IJP
techniques at low viscosities.” Ans. 9; James, 2:22–24. Galderma Labs.,
L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (“A reference does
not teach away, . . . if it merely expresses a general preference for an
alternative invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.”).
Accordingly, we sustain the Examiner’s rejection of claim 1 over
James.
Dependent Claims 3–22, 24, and 28–43
Appellant presents no arguments specifically directed to the
dependent claims separate from its arguments regarding independent
claim 1. Accordingly, we sustain the Examiner’s rejections of the dependent
claims for the reasons discussed above regarding independent claim 1.
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CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–22, 24,
28–43 103 James
1, 3–22, 24,
28–43
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED