Melanie Klasen-Memmer et al.

Patent Trials and Appeals Board

Jan 28, 2021

2020001397 (P.T.A.B. Jan. 28, 2021)

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.
14/008,022 09/27/2013 Melanie Klasen-Memmer MERCK-4131 4302
23599 7590 01/28/2021
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
01/28/2021 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 MELANIE KLASEN-MEMMER, ACHIM GOETZ, and
GEORG BERNATZ

Appeal 2020-001397
Application 14/008,022
Technology Center 1700
____________

Before RAE LYNN P. GUEST, JEFFREY R. SNAY, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

MCMANUS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 3–19, 25, 26, and 30–33.2 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—i.e., the Inventors (Application Data Sheet filed September
27, 2013 at 1–2). The Appellant identifies “Merck Patent GmbH” as the real
party in interest (Appeal Brief filed October 1, 2019 (“Appeal Br.”) at 1).
2 See Appeal Br. 5–12; Reply Brief filed December 12, 2019 (“Reply Br.”)
at 1–5; Final Office Action entered February 1, 2019 (“Final Act.”) at 25–
40; Examiner’s Answer entered December 2, 2019 (“Ans.”) at 4–31.
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I. BACKGROUND
The subject matter on appeal relates to a liquid-crystalline medium
comprising various broadly-recited classes of compounds (Specification
filed September 27, 2013 (“Spec.”) at 1, l. 4–2, l. 4; 40, l. 11–41, l. 18).
According to the Appellant, “[m]edia of this type can be used, in particular,
for electro-optical displays having active-matrix addressing based on the
ECB [electrically-controlled birefringence] effect and for IPS (in-plane
switching) displays or FFS (fringe field switching) displays.” Id. at 2, ll. 5–
7, 12–18.
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. Liquid-crystalline medium based on a mixture of polar
compounds, which comprises:

at least one compound of the formula I,

in which

R1 and R1* each, independently of one another, denote
an alkyl or alkoxy radical having 1 to 15 C
atoms, where, in addition, one or more CH2
groups in these radicals are optionally
replaced, independently of one another, by
-C≡C-, -CF2O-, -CH=CH-, , ,
-O-, -CO-O-, -O-CO- in in such a way that O
atoms are not linked directly to one another,
and in which, in addition, one or more H
atoms are optionally replaced by halogen,
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Z1 denotes –CH2O- or –OCH2-
a denotes 0, 1 or 2
b denotes 1 or 2

and
L1 and L2 each, independently of one another, denote F,
Cl, CF3, OCF3 or CHF2;
one or more compounds selected from the group of the
compounds of the formulae IIA, IIB and IIC,

in which
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R2A, R2B and R2C each, independently of one another,
denote H, an alkyl radical having up to
15 C atoms which is unsubstituted,
monosubstituted by CN or CF3 or at
least monosubstituted by halogen,
where, in addition, one or more CH2
groups in these radicals may be
replaced by -O-, -S-, , -C≡C-,
-CF2O-, -OCF2-, -OC-O- or -O-CO-
[in] such a way that O atoms are not
linked directly to one another,
L1-4 each, independently of one another,
denote F, Cl, CF3 or CHF2,
Z2 and Z2’ each, independently of one another,
denote a single bond, -CH2CH2-,
-CH=CH-, -CF2O-, -OCF2-, -COO-,
-OCO-, -C2F4-, -CF=CF-,
-CH=CHCH2O-,
p denotes 1 or 2,
q denotes 0 or 1, and
v denotes 1 to 6;

and, a compound of the formulae IIB-11

in which alkyl is propyl and alkyl* is ethyl.
(Appeal Br. 13–15).

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II. REJECTION ON APPEAL3
Claims 1, 3–19, 25, 26, and 30–33 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Klasen-Memmer et al.4 (“Klasen-
Memmer”) in view of Saito et al.5 (“Saito”) (Ans. 4–31; Final Act. 25–40).
III. DISCUSSION
1. Grouping of Claims
The Appellant relies on the same arguments for all claims on appeal
(Appeal Br. 5–12). Therefore, we decide this appeal on the basis of claim 1,
which we designate as representative. 37 C.F.R. § 41.37(c)(1)(iv). By this
rule, claims 3–19, 25, 26 and 30–33 stand or fall with claim 1.

2. The Examiner’s Position
The Examiner finds that Klasen-Memmer describes, or would have
suggested to one of ordinary skill in the art, a liquid crystal composition
comprising one or more compounds IIA–IIC that overlap in scope with
compounds having formulas IIA–IIC, as recited in claim 1 (Ans. 4–5). The

3 A rejection under 35 U.S.C. § 112, ¶ 4, (Final Act. 2), was withdrawn on
in the Advisory Action entered July 1, 2019. All other rejections (Final Act.
3–25), except as listed below, were withdrawn in the Advisory Action
entered November 25, 2019 (see also Ans. 14–15).
4 DE 10 2008 064 171 A1, published January 7, 2010. Our citations are to
the corresponding United States application, US 2011/0248216 A1,
published October 13, 2011, which the Examiner relies on as an English
language translation (Ans. 25).
5 WO 2011/024666 A1, published March 3, 2011. Our citations are to the
corresponding United States application, US 2012/0145957 A1, published
June 14, 2012, which the Examiner relies on as an English language
translation (Ans. 25).
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Examiner finds that, in particular, Klasen-Memmer provides examples of
compounds having formulas IIA-2 and IIB-11, which correspond to
compounds having formulas IIA and IIB-11, both as recited in claim 1 (id. at
5–6).
The Examiner acknowledges that Klasen-Memmer “does not teach a
specific example of the composition comprising [the] Appellant’s elected
species COY-3-O2 representative of [claim 1’s] formula I” (id. at 6; see also
Spec. 135, ll. 1–5). To resolve this difference, the Examiner relies on Saito,
which the Examiner finds teaches the use of a compound (1) identified as
“3-H1OB(2F,3F)-O2,” which corresponds to the Appellant’s compound
COY-3-O2, for increasing the absolute value of dielectric anisotropy in a
liquid crystal composition (Ans. 6–7; see also Saito ¶¶ 14, 25, 42, 71, 78).
Based on these findings, the Examiner concludes that “it would have
been obvious to one of ordinary skill in the art . . . to modify the composition
of Klasen-Memmer . . . to include the 3-H1OB(2F,3F)-O2 compound of
Saito in order to increase the absolute value of the dielectric anisotropy”
(Ans. 7). Furthermore, the Examiner states that “[i]t is known to one of
ordinary skill in the art to combine known equivalents suitable for the same
purpose” and concludes that “it is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition to be used for the very
same purpose” because “[t]he idea of combining them flows logically from
their having been individually taught in the prior art” (id. (relying on In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980))).

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3. The Appellant’s Contentions
The Appellant does not dispute the Examiner’s findings that Klasen-
Memmer and Saito, collectively, teach compounds that overlap in scope
with the Appellant’s compounds having formulas I, IIA, and IIB-11, as
recited in claim 1 (Appeal Br. 7 (“Both Klasen-Memmer and Saito have
broad disclosures regarding numerous components, some of which would
encompass the individual components as claimed . . . [Klasen-Memmer’s]
formulae do generically encompass compounds of [claim 1’s] formulae I,
IIA and IIB-11”; id. at 11 (agreeing with the Examiner’s finding that “Saito
discloses mixtures examples which contain a compound indicated by their
nomenclature as 3-H1OB(2F,3F)-O2 which is the same as [the Appellant’s]
COY-3-O2 compound which falls within [claim 1’s] formula I”). The
Appellant contends, however, that Klasen-Memmer’s and Saito’s disclosures
encompass millions of compounds and, therefore, would not have rendered
the Appellant’s claimed subject matter obvious (id. at 7, 9–10). In addition,
the Appellant argues that “while Saito discloses mixture Examples (pages
12-15) which contain an LC compound within [claim 1’s] formula I, it does
not disclose any such mixture Example which additionally contains a
compound of either of [claim 1’s] formula IIA, IIB or IIC or of formula IIB-
11” (Appeal Br. 8).
Appellant additionally contends that the Examiner’s articulated reason
for combining Saito with Klasen-Memmer (i.e., to increase the absolute
value of dielectric anisotropy), is not supported by the facts because “Saito’s
teachings regarding the properties provided by its compounds are specific to
the nature of the compositions taught by Saito” (id.). The Appellant further
argues that the “solutions to providing a useful LC composition are not
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predictable and one never knows how differing compounds will interact” (id.
at 9 (citing Klasen-Memmer ¶¶ 20–28)).

4. Opinion
We have fully considered the Appellant’s arguments and find them
insufficient to identify reversible error in the Examiner’s rejection. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
The breadth of Klasen-Memmer’s disclosure is substantially
coextensive with the breadth of claim 1, which encompasses numerous
possible combinations of specific compounds, but undisputedly teaches one
or more compounds that include those falling within the scope of claim 1
(see, e.g., Klasen-Memmer ¶¶ 50, 62 (formulas IIA-2 and IIB-11)), as the
Appellant concedes (Appeal Br. 7, 11). In addition, Saito explicitly teaches
that a compound (1) that corresponds to the Appellant’s formula I, as recited
in claim 1, increases the absolute value of dielectric anisotropy (Saito ¶¶ 14,
25, 42, 71, 78).
Given the collective teachings found in these references, we are in
agreement with the Examiner’s obviousness analysis and conclusion. As the
Examiner explains, a person having ordinary skill in the art would have been
prompted to add Saito’s compound having the formula 3-H1OB(2F,3F)-O2,
which is the same as the Appellant’s elected formula I compound, COY-3-
O2, to Klasen-Memmer’s composition with a reasonable expectation of
increasing absolute dielectric anisotropy. Although Saito’s compounds
having formulas (2) and (3) are not the same as those specified in Klasen-
Memmer or claim 1 (Saito ¶ 14), Saito teaches that any other additional
liquid crystal compound may be present (id. ¶ 22; see also Klasen-Memmer
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¶ 174). Thus, a person having ordinary skill in the art would have had a
reasonable expectation of success in combining Klasen-Memmer with Saito.
In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (“[F]or many
inventions that seem quite obvious, there is no absolute predictability of
success until the invention is reduced to practice. . . . For obviousness under
§ 103, all that is required is a reasonable expectation of success.”).
Additionally, we discern no reversible error in the Examiner’s
determination that a person having ordinary skill in the art would have
formulated a liquid crystal composition comprising a mixture of compounds
having formulas IIA-2 and IIB-11, as Klasen-Memmer instructs (Klasen-
Memmer ¶¶ 50, 62). Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 808–09 (Fed. Cir. 1989) (“[T]he ‘joint use [of magnesium oxide and
calcium carbide] is not patentable’ where the prior art teaches ‘that both
magnesium oxide and calcium carbide, individually, promote the formation
of a nodular structure in cast iron, and it would be natural to suppose that, in
combination, they would produce the same effect and would supplement
each other.’”) (internal citation omitted); Kerkhoven, 626 F.2d at 850 (“It is
prima facie obvious to combine two compositions each of which is taught by
the prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose.”).
The Appellant’s reliance on Orexo AB v. Actavis Elizabeth LLC, 903
F.3d 1265 (Fed. Cir. 2018) for the proposition that “in both Orexo and the
instant case[,] each of the components to be chosen from each reference
were disclosed in each reference among a genus—a very large genus here—
of possible components to choose from” is misplaced (Appeal Br. 9).
Unlike the current situation, the court in Orexo found that the benefits
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provided by the invention claimed therein as compared to the prior art were
not predicted or suggested in any prior art. Orexo, 903 F.3d at 1271–72. In
this case, no showing is offered as to any advantage or benefit that would
have been considered unexpected or unpredictable over Klasen-Memmer
and Saito. Cf. Saito ¶ 25.
Similarly, the Appellant’s reliance on cases such as In re Baird, 16
F.3d 380, 383 (Fed. Cir. 1994) and In re Jones, 958 F.2d 347, 350 (Fed. Cir.
1992) is misplaced (Appeal Br. 10). In Baird, 16 F.3d at 383, the court held
that a “disclosure of millions of compounds does not render obvious a claim
to three compounds, particularly when that disclosure indicates a preference
leading away from the claimed compounds” (emphasis added). Likewise, in
Jones, 958 F.2d at 350, the court held that the prior art reference disclosed a
“potentially infinite genus of ‘substituted ammonium salts’” (emphasis
added) without listing the claimed salt and that the PTO failed to provide a
reason for combining other references in the manner claimed. Here, by
contrast, neither Klasen-Memmer nor Saito teaches away6 from the claimed
composition and neither teaches a “potentially infinite genus” but, instead,
each lists a finite number of explicitly identified, preferred classes of
compounds of relatively narrow scope—any of which may be selected and
used to achieve the prior art’s stated goals, either alone or in combination.
Therefore, the propositions stated in Baird and Jones do not apply to the
facts of this case in a manner that identifies reversible error.

6 In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (explaining that “no
teaching away [exists] where nothing in the prior art device suggested that
the claimed invention was unlikely to work”).
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IV. CONCLUSION
For these reasons, and those well-stated by the Examiner, we uphold
the Examiner’s rejection.

V. DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–26, 30–33 103(a) Klasen-Memmer,
Saito
1, 3–19, 25,
26, 30–33

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

AFFIRMED