Merck Patent GmbH

Patent Trials and Appeals Board

Apr 16, 2021

2020002554 (P.T.A.B. Apr. 16, 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. 14/854,669 09/15/2015 Harald HIRSCHMANN MERCK-4246 9917 23599 7590 04/16/2021 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 04/16/2021 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 HARALD HIRSCHMANN, MONIKA BAUER, MARTINA WINDHORST, MARCUS REUTER, MATTHIAS BREMER, ROCCO FORTTE, VOLKER REIFFENRATH, MARTIN ENGEL, NICO JOHN, and CHRISTOPH MARTEN Appeal 2020-002554 Application 14/854,669 Technology Center 1700 Before JEFFREY T. SMITH, BRIAN D. RANGE, and LILAN REN, Administrative Patent Judges. RANGE, 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 1-8, 10-19, and 21-23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Merck Patent GmbH. Appeal Br. 1. Appeal 2020-002554 Application 14/854,669 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to a liquid-crystalline medium that could be used in an active-matrix electro-optical display. Spec. 1:1-22. The material seeks to improve response time for such displays. Id. at 5:34-6:2. Claim 1 is the only independent claim on appeal and is illustrative: 1. A liquid-crystalline medium based on a mixture of polar compounds, wherein the medium exhibits a nematic phase range and wherein the medium 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 may each be replaced, independently of one another, by -C≡C-, -CF2O-, -OCF2-, -CH=CH-, , , -O-, CO-O-, -O-CO- in such a way that O atoms are not linked directly to one another, and in which, in addition, one or more H atoms may be replaced by halogen, L1 and L2 each, independently of one another, denote F, Cl, F3, or CHF2; and one or more compounds of the formulae O-1 to O-18, 2 In this Decision, we refer to the Final Office Action dated January 29, 2019 (“Final Act.”), the Appeal Brief filed September 30, 2019 (“Appeal Br.”), and the Examiner’s Answer dated December 13, 2019 (“Ans.”). Appeal 2020-002554 Application 14/854,669 3 Appeal 2020-002554 Application 14/854,669 4 in which R1 and R2 each, independently of one another, denote H, an alkyl or alkenyl radical having 1 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. Appeal Br. 29-30 (Claims App.). (The graphics reproduced above depict molecular formulas within claim 1’s text.) REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Appeal 2020-002554 Application 14/854,669 5 Name Reference Date Schmidt et al. (“Schmidt”) US 7,018,685 B2 Mar. 28, 2006 Klasen-Memmer et al. (“Klasen-Memmer”) US 2009/0309066 A1 Dec. 17, 2009 REJECTIONS The Examiner maintains3 the following rejections on appeal: A. Claims 1, 4-8, 10-19, and 21-23 on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of U.S. Patent Application No. 14/693,212. Ans. 4. B. Claims 1-8, 10-19, and 21-23 under 35 U.S.C. § 103 as obvious over Klasen-Memmer in view of Schmidt. Id. at 6. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the 3 In the Answer, the Examiner withdrew three asserted nonstatutory double patenting rejections. Ans. 13. Appeal 2020-002554 Application 14/854,669 6 Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Rejection 1. The Examiner rejects claims 1, 4-8, 10-19, and 21-23 on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of U.S. Patent Application No. 14/693,212. Ans. 4. Appellant does not dispute this rejection. Appeal Br. 15. We, thus, summarily sustain the rejection. Rejection 2. The Examiner rejects claims 1-8, 10-19, and 21-23 under 35 U.S.C. § 103 as obvious over Klasen-Memmer in view of Schmidt. Id. Ans. 6. Appellant argues claims 1, 3, and 21 separately and argues the remaining claims as a group. See Appeal Br. 17-26. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion to claims 1, 3, and 21, and all other claims on appeal stand or fall with claim 1. The Examiner finds that Klasen-Memmer teaches a liquid crystal composition having two components that overlap with the two components required by claim 1. Ans. 6-7. In particular, Klasen-Memmer teaches mixtures of Klasen-Memmer’s formulas I through V in various amounts. Id. at 6; Klasen-Memmer ¶¶ 249-253. Klasen-Memmer teaches for its formula V-11 a molecular structure that is a sub-genus of claim 1’s formula I. Klasen-Memmer ¶ 215. Klasen-Memmer’s formula III-1a teaches the same molecular structure as claim 1’s O-18. Klasen-Memmer ¶ 164. The Examiner finds that Klasen-Memmer does not teach a specific example of claim 1’s compound I formula. Ans. 7. The Examiner, finds, however, that Schmidt teaches an example within formula I of claim 1. Id. at 7-8. Thus, Claim 1 formula I is broader than Klasen-Memmer’s formula V- Appeal 2020-002554 Application 14/854,669 7 11 which in turn is broader than Schmidt’s example 20. The Examiner finds that Schmidt teaches advantages of this compound and determines that it would have been obvious to choose this compound to satisfy Klasen- Memmer’s formula V-11 in order to achieve these advantages. Id. Appellant argues that a person of skill in the art would not have used the Schmidt compound in Klasen-Memmer. Appeal Br. 17-25. Appellant argues, for example, that Schmidt and Klasen-Memmer are different media (id. at 17) and that Klasen-Memmer exhibits highly negative dielectric anisotropy whereas Schmidt has positive dielectric anisotropy (id. at 22). The preponderance of the evidence, however, supports the Examiner’s combination. As explained above, Klasen-Memmer teaches a sub-genus within the scope of claim 1’s formula I. Klasen-Memmer thus suggests the workability of any particular molecule within that sub-genus. Klasen- Memmer ¶ 215 (indicating such molecules are preferable). Because Schmidt’s teaching of a particular molecule within the sub-genus with desirable properties for the same or similar application (liquid crystal media), the evidence supports the Examiner’s stated rationale for combining the references’ teachings. Any differences in the liquid crystal media of Klasen-Memmer and Schmidt do not outweigh Klasen-Memmer’s teaching of the appropriateness of the molecule Schmidt teaches. Moreover, Appellant does not present persuasive evidence that the differences between Klasen-Memmer and Schmidt are so great that a person of skill in the art would not have used Schmidt’s molecule despite Klasen-Memmer’s teaching that such a molecule is appropriate. We also note that with respect to Appellant’s argument that Klasen-Memmer’s “clear requirement” that its media has Appeal 2020-002554 Application 14/854,669 8 “highly negative dielectric anisotropy” (Appeal Br. 19), Klasen-Memmer teaches that negativity is “preferabl[e]” (not a requirement). Klasen- Memmer ¶ 48. Appellant cites Orexo AB v. Actavis Elizabeth LLC, 903 F.3d 1265 (Fed. Cir. 2018) to argue that the Examiner’s combining of the references’ teaching is improper. Appeal Br. 18. But, as explained above, Klasen- Memmer teaches a sub-genus within the scope of claim 1’s formula I, and Schmidt provides a specific example within the sub-genus for the same or a similar purpose. Orexo does not address a similar fact pattern. Appellant also argues that Schmidt’s mixtures include smectic phases and that claim 1 forbids such a mixture. Appeal Br. 20; Reply Br. 1-2. Appellant’s argument is not persuasive for three reasons. First, claim 1 is not as narrow as Appellant argues. Claim 1 recites that “the medium exhibits a nematic phase range.” Appeal Br. 28 (Claims App.). Claim 1 does not recite a purely nematic phase range. The Specification states, “The expression ‘have a nematic phase’ here means on the one hand that no smectic phase and no crystallization are observed at low temperatures.” Spec. 64:21-24. The Specification does not, however, define claim 1’s language- “exhibit[ing] a nematic phase range”- as requiring no smectic phase. Moreover, the Specification’s reference to “have a nematic phase” refers back to the Specification’s discussion of the invention having a nematic phase under certain conditions. Spec. 64:17-24. Claim 1, in contrast, does not place any temperature restrictions on where the medium exhibits a nematic phase range. Second, as explained above, the Examiner uses Schmidt to choose a particular compound within the scope of Klasen-Memmer’s teachings. Appeal 2020-002554 Application 14/854,669 9 Klasen-Memmer teaches that its mixtures are nematic under at least some conditions. Klasen-Memmer ¶¶ 40, 272. Moreover, Schmidt teaches that its compositions may be nematic. Schmidt 3:33-37 (“It is therefore an object of the present invention to provide novel components for use in smectic or nematic liquid-crystal mixtures.”). Third, the Examiner determines that it would have been obvious to reach a composition that overlaps with claim 1’s composition; in such a scenario, the composition would necessarily have the same properties (i.e., nematic at the same temperatures). Ans. 8, 35-36. Appellant further argues that there would not have been a reason to choose components within the scope of claim 1 from among the many choices the references teach. See, e.g., Appeal Br. 19, 24-25. All of the references’ teachings must be considered however. See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered”). While it is true that Klasen-Memmer presents many options for its liquid crystal medium, the options within claim 1’s scope are highlighted. Klasen-Memmer singles out formula V-11 (within the scope of claim 1 formula I) as being a “further preferred embodiment” worthy of an independent discussion (as opposed to being lumped with other options). Klasen-Memmer ¶¶ 215-217. Klasen- Memmer formula III-1a is also identified as preferable and is identified first among formula III options. Id. at ¶ 164. Thus, the Klasen-Memmer options within the scope of claim 1 are prominent rather than being buried without guidance. Because Appellant’s arguments do not identify Examiner error, we sustain the Examiner’s rejection of claim 1. Appeal 2020-002554 Application 14/854,669 10 Claim 3 recites that the medium additionally comprises at least one compound from various listed compounds. Appeal Br. 32 (Claims App.). Appellant argues that “the references fail to direct selection of one of the more specific compounds listed in claim 3.” Appeal Br. 26. The Examiner, however, finds that Schmidt does teach use of compounds within the scope of claim 3 and that these compounds are structurally similar to Klasen- Memmer’s formula V-11. Ans. 34. Appellant does not persuasively refute these findings. We, thus, sustain the rejection of claim 3. Claim 21 recites that the “medium has a nematic phase range of at least 60º K at 20º C.” Appeal Br. 52 (Claims App.). The Examiner finds that Klasen-Memmer teaches such a nematic phase range. Ans. 35-36 (citing Klasen-Memmer ¶ 272). Appellant does not persuasively dispute this point. Moreover, as explained above, the cited references suggest a composition that is the same as claim 1 and would, therefore, be expected to have the same properties. Id. We, thus, sustain the rejection of claim 21. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4-8, 10- 19, 21-23 Nonstatutory Double Patenting 1, 4-8, 10-19, 21-23 1-8, 10-19, 21-23 103 Klasen-Memmer, Schmidt 1-8, 10- 19, 21-23 Overall Outcome 1-8, 10- 19, 21-23 Appeal 2020-002554 Application 14/854,669 11 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