NOVALED GMBH

Patent Trials and Appeals Board

Oct 29, 2021

2021002385 (P.T.A.B. Oct. 29, 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.
14/426,698 03/06/2015 Mike Zoellner 17346-0170 3957
29052 7590 10/29/2021
EVERSHEDS SUTHERLAND (US) LLP
999 PEACHTREE STREET, N.E.
SUITE 2300
ATLANTA, GA 30309
EXAMINER
DIAZ, MATTHEW R
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
10/29/2021 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):
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKE ZOELLNER, KAY LEDERER,
ANTON KIRIY, VOLODYMYR SENKOVSKYY, and
BRIGITTE ISABELL VOIT
Appeal 2021-002385
Application 14/426,698
Technology Center 1700
Before JEFFREY T. SMITH, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SMITH, 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, 11, 20, 21, 34, 39, and 40. Claims
15–17, 37, and 38 are withdrawn from consideration. Claims 2–10, 12–14,
18, 19, 22–33, 35, and 36 have been cancelled. An oral hearing was held on

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 Novaled GmbH of
Dresden, Germany. (Appeal Br. 2.)
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September 28, 2021, a transcript of which is of record. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant’s invention relates generally to a charge transporting semi-
conducting material comprising a cross-linked charge transporting polymer
that includes 1,2,3-triazole cross-linking units, a method for its preparation
and a semiconducting device comprising the material. (Spec. 5–7.)
Independent claim 1 is representative of the appealed subject matter and is
reproduced below:
1. A charge transporting semi-conducting material
comprising:
a cross-linked charge-transporting polymer comprising
1,2,3-triazole cross-linking units of the general formulae Ia
and/or Ib,
, ,
wherein
aa) Pol1– Pol4 are independently selected from charge-
transporting polymers,
bb) X1, X2, X3, and X4 are independently selected from
spacer units having up to 30 multivalent atoms or represent direct
bonding of Pol1– Pol4 to the 1,2,3-triazole ring, and
cc) R and R’ are independently selected from the group
consisting of H, halogen, nitrile, C1–C22 saturated or unsaturated
alkyl, C3–C22 cycloalkyl, C6–C18 aryl, C1–C22 arylalkyl, C2–C13
heteroaryl having up to three heteroatoms independently selected
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from oxygen, nitrogen, or sulphur, SiR1R2R3 , wherein R1, R2,
and R3 are independently selected from C1–C4 alkyl or phenyl,
COR4 or COOR5, wherein R4 and R5 are independently selected
from C1–C22 alkyl or C1–C22 arylalkyl, and CR6R7OR8, wherein
R6 and R7 are independently selected from H, C1–C6 alkyl, C6–
C9 aryl, or R6 and R7 together form a C3–C1 ring, and R8 is C1–
C6 alkyl, C1–C22 arylalkyl, SiR9R10R11, wherein R9, R10, and R11
are independently selected from C1–C4 alkyl or phenyl, or
COR12, wherein R12 is H or C1–C21 alkyl; and
wherein
(i) the cross-linked charge-transporting polymer is a
continuous infinite network,
(ii) the charge-transporting polymer is capable of
transporting an injected charge due to a system of overlapping
orbitals along the charge-transporting polymer, and
(iii) the injected charge is an electron injected or
withdrawn either by an electrode arranged in contact with the
charge-transporting polymer and/or through a reaction with a
dopant capable of increasing the conductivity of the charge-
transporting polymer.

The following rejections are presented for our review:
I. Claims 39 and 40 are rejected under 35 U.S.C. § 112(a) or 35
U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. (Final Act. 4–5.)
II. Claims 1, 11, 20, 21, 34, 39, and 40 are rejected on the ground
of nonstatutory double patenting as unpatentable over claims 1–13 and 16–
31 of Lederer et al. (“Lederer”) US 10,468,601 B2. (Final Act. 3–4.)
III. Claims 1, 11, 20, 21, 34, 39, and 40 as anticipated under 35
U.S.C. §102 or, in the alternative, unpatentable under 35 U.S.C. §103 over
Li et al. (“Li”), US 7,208,243 B2. (Final Act. 6–7.)
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OPINION
Written Description Rejection
Claims 39 and 40
Claims 39 and 40 stand rejected by the Examiner under 35 U.S.C. §
112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with
the written description requirement.
We sustain.
The Examiner determines the recitation “Pol1– Pol4 are independently
selected from non-acidic charge-transporting polymers,” in independent
claim 39 and the recitation “Pol1– Pol4 are independently selected from
charge-transporting polymers that do not include a sulfonated
polyphenylene” in claim 40 are each not adequately described or supported
by the Specification, as originally filed. (Final Act. 5.) The Examiner
determines the exclusion of acidic charge-transporting polymers (claim 39)
and sulfonated polyphenylenes (claim 40) comprised within the charge-
transporting polymers are each not adequately described or supported in the
original Specification. (Final Act. 5.) The Examiner determines the original
Specification as filed fails to recite or suggest the invention includes or
excludes acidic charge transporting polymers and/or sulfonated
polyphenylene charge transporting polymers sufficiently to positively
exclude such limitations from the claims. (Final Act. 5.)
Appellant argues the Specification provides implicit support for
excluding acidic charge transporting polymers and/or sulfonated
polyphenylene charge transporting polymers. (Appeal Br. 11 (citing Spec.
pages 11–13).) Appellant argues the Specification provides examples of
building units that may be present in the first and second precursor charge-
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transporting polymer and none of the disclosed substituents is an acid or a
sulfonated phenyl. (Appeal Br. 11.)
The purpose of the written description requirement in 35 U.S.C.
§ 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, is to “clearly allow
persons of ordinary skill in the art to recognize that [the inventor] invented
what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1562−63 (Fed. Cir. 1991) (citation omitted)). “[T]he test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Id. (citations
omitted). This test “requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the art.”
Id. [Ariad] “Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id.
With regard to negatively claimed features and the written description
requirement, the critical question is whether such negatively claimed
features introduce new concepts. Ex parte Grasselli, 231 USPQ 393, 394
(BPAI 1983) aff’d 738 F.2d 453 (Fed. Cir. 1984) (determining that the
negatively claimed language “said catalyst being free of uranium and the
combination of vanadium and phosphorous” in a product claim introduced
new concepts because “the express exclusion of certain elements implies the
permissible inclusion of all other elements not so expressly excluded” (citing
In re Anderson, 471 F.2d 1237, 1241 (CCPA 1973))); cf. Ex parte Parks, 30
USPQ2d 1234 (BPAI 1993) (determining that the claimed phrase “in the
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absence of a catalyst” in a process claim did not violate the written
description requirement because it was implicitly clear from the
specification that the reactions were carried out without a catalyst such that
no new concept was introduced by the negatively claimed language); see
also In re Johnson, 558 F.2d 1008 (CCPA 1977) (holding that deleting two
disclosed species from a generic claim via a negative limitation in response
to a lost interference count did not violate the written description
requirement).
We have fully considered Appellant’s evidence and arguments and the
Examiner’s findings regarding this matter. We find that the preponderance
of the evidence supports the Examiner’s finding that the claim lacks written
descriptive support for the disputed claim recitations excluding acidic charge
transporting polymers and/or sulfonated polyphenylene charge transporting
polymers. While the Specification reasonably conveys support for charge
transporting polymers comprising attached azide groups and acetylenic
groups generally, the addition to the claim that specifies exclusion of acidic
charge transporting polymers and/or sulfonated polyphenylene charge
transporting polymers introduces a new concept to the written description.
Appellant has not directed us to portions of the Specification that
imply clearly that the charge transporting polymers comprising attached
azide groups and acetylenic groups exclude acidic charge transporting
polymers and/or sulfonated polyphenylene charge transporting polymers.
Accordingly, the claim recitations excluding acidic charge transporting
polymers and/or sulfonated polyphenylene charge transporting polymers
lack written descriptive support in the originally filed Specification.
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For the foregoing reasons and those the Examiner presents, we sustain
the rejection of claims 39 and 40 under 35 U.S.C. § 112(a) or 35 U.S.C. 112
(pre-AIA), first paragraph.

Obviousness double patenting
Claims 21, 22, and 24–41 are rejected on the ground of non-statutory
double patenting as unpatentable over claims 1–10 and 14 of U.S. Patent No.
10,468,601.
We sustain.
The Examiner determined all of the limitations of the appealed claims
1, 11, 20, 21, 34, 39, and 40 are not patentability distinct from claims 1–13
and 16–31 of US 10,468,601 B2. (Final Act. 3–4.) The Examiner explains
in the Answer that claims of the ’601 patent recite the charge-transporting
polymer comprises a conjugated system of delocalized electrons and recite
exemplary conjugated groups that read on the claimed system of overlapping
orbitals along/comprised within the charge-transporting polymer. (Ans. 3–
4.)
Appellant argues
[T]he claims of the ’601 patent appears to have been allowed
because (i) they solely encompass a specific class of charge
transporting polymers that is very different from all examples of
the present application, because polyethylene does not include
any overlapping n-orbitals in the backbone, and (ii) the claimed
subject matter of the ’601 patent can exhibit new and surprising
technical effects which could not have been predicted in view of
the embodiments disclosed in the present application.
(Appeal Br. 13–14.)
Appellant’s arguments are not persuasive of reversible error.
Appellant’s assertions with respect to the apparent reasons for the allowance
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of the ’601 patent claims do not explain adequately why the claims of the
present application are patentably distinct from those claims.

Prior Art Rejections
The Examiner rejected claims 1, 11, 20, 21, 34, 39, and 40 as
anticipated under 35 U.S.C. § 102 or, in the alternative, obvious under 35
U.S.C. §103 over Li.
We reverse.
The dispositive issue for this rejection is: Did the Examiner err in
determining that Li teaches a charge transporting semi-conducting material
(proton exchange and ion-conducting material) comprising a cross-linked
charge-transporting polymer comprising 1, 2, 3-triazole cross-linking units
as required by the subject matter of independent claims 1, 39, and 40?
After review of the respective positions provided by Appellants and
the Examiner, we answer the question in the affirmative. We limit our
discussion to independent claim 1.
The Examiner finds Li teaches a charge transporting semi-conducting
material (proton exchange and ion-conducting material) comprising a cross-
linked charge-transporting polymer comprising 1, 2, 3-triazole cross-linking
units as required by the claimed invention. The Examiner further determines:
In the event Li fails to explicitly teach the cross-linked
charge-transporting polymer is a continuous infinite network, it
would have also been obvious to a person of ordinary skill in the
art to arrive within the claimed limitation of the continuous
infinite network because Li further teaches providing a plurality,
i.e. two or more, of functional groups in polymer backbones
including an equal number of azide and alkyne groups and also
a surplus of one or the other (col. 3 lines 55-62, col. 5 lines 40-
43 and col. 6 lines 21-23) which are further taught to undergo a
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click reaction that go largely to completion (col. 3 line 65 to col.
4 line 2) which reads on the claimed continuous infinite network.
(Final Act. 6–7.)
Appellant has argued persuasively that the claimed charge
transporting semi-conducting material is not anticipated or obvious over Li.
(Appeal Br. 4–10.) Appellant has presented three Declarations from experts
in the field, 2 who are not inventors of the present application, which provide
a technical explanation of why the ion conducting materials of Li are not the
same as the claimed charge transporting semiconducting materials. The
Examiner has failed to provide any technical reasoning explaining error in
the Declarants’s statements. Under these circumstances, we are constrained
to reverse the appealed rejections under §§ 102(b) and 103. See In re
Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007) (Failure to meaningfully
address submitted evidence is error.); In re Rinehart, 531 F.2d 1048, 1053–
54 (CCPA 1976) (Failure to consider the rebuttable evidence in the affidavit
relied upon by Appellant is error.)

2 Declaration Under 37 C.F.R. § 1.132 of Omrane Fadhel, Ph.D., signed
August 22, 2017, and filed August 23, 2017 (First Declaration); Declaration
Under 37 C.F.R. § 1.132 of Annette Steudel, Ph.D., signed February 22,
2018, and filed February 28, 2018 (Second Declaration); and Declaration
Under 37 C.F.R. § 1.132 of Tomas Kalisz, signed September 2, 2019, and
filed September 6, 2019 (Third Declaration).
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 11, 20,
21, 34, 39,
40
non-statutory double
patenting, Lederer,
1, 11, 20,
21, 34, 39,
40

39, 40 112 Written Description 39, 40
1, 11, 20,
21, 34, 39,
40
102 Li 1, 11, 20,
21, 34, 39,
40
1, 11, 20,
21, 34, 39,
40
103 Li 1, 11, 20,
21, 34, 39,
40
Overall
Outcome
1, 11, 20,
21, 34, 39,
40

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