Smith, Graham et al.

Patent Trials and Appeals Board

Sep 25, 2019

14377579 - (D) (P.T.A.B. Sep. 25, 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.
14/377,579 08/08/2014 Graham Smith MERCK-4216 4840
23599 7590 09/25/2019
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
09/25/2019 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 GRAHAM SMITH, OWAIN LLYR PARRI, VICKI COOK,
GEORG BERNATZ, DAVID WILKES, JONATHAN HENRY WILSON,
MARK JAMES, and PHILIP EDWARD MAY

Appeal 2019-000751
Application 14/377,579
Technology Center 1700
____________

Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 13–15, and 18. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer 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 2019-000751
Application 14/377,579

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Appellant’s invention is directed to a reactive mesogen (RM)
formulation comprising a conductive additive (Spec. 1:5–8; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A formulation comprising >50% by weight of one or
more polymerisable mesogenic compounds, and one or more
conductive additives, wherein the formulation comprises:
30 to 99.9% by weight of polymerisable mesogenic
compounds having two or more polymerisable functional
groups,
0 to 90% by weight polymerisable mesogenic compounds
having only one polymerisable functional group,
0.01 to 5% by weight of one or more conductive
additives,
0 to 5% by weight of one or more surfactants, and
0 to 5% by weight of one or more polymerisation
initiators.
Appellant argues the claims as a group (Appeal Br. 3–7). We select
claim 1 as representative of the group.

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding Goetz are located
on pages 2 to 3 of the Final Action. The Examiner finds that Goetz teaches a
mesogenic compound “PY” where the various substituents for R1, R2, ZY,
ZX, B, L3, and L4 may be chosen so that the PY compound includes formula
Id in Appellant’s claim 15 (Final Act. 3). The Examiner finds that if the two
end groups R1 and R2 of the PY compound are chosen to include a
–CH=CH- group, then the compound is polymerizable (Final Act. 3). Citing
Goetz’ paragraph 253, the Examiner finds that the unsaturated carbon double
bond gives the PY compound two polymerizable groups (Final Act. 3). The
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Examiner finds that the amount of the mesogenic compound PY in the
formulation is 1 to 60% (Final Act. 3).
Appellant argues that Goetz does not teach including a mesogenic
compound having two polymerizable functionalities in an amount of greater
than 50% as recited in claim 1 but, instead, teaches using less than or equal
to 5% of polymerizable reactive mesogens (Appeal Br. 4). Appellant
contends that Goetz teaches that polymer stabilized (PS) or polymer-
sustained alignment (PSA) displays typically use less than 1% of a
polymerizable compound in a liquid crystal (LC) medium (Appeal Br. 4).
Appellant argues that Goetz teaches away from including greater than 50%
of one or more polymerizable mesogenic compounds in the formulation
because Goetz teaches a maximum of a small amount of at most 5% of
polymerizable compounds (Appeal Br. 5). In addition, Appellant argues that
Goetz does not disclose that the unsaturated double bond in the R1 and R2
groups are located on the terminal ends and, thus, Goetz’s compound would
not be considered a polymerizable compound (Appeal Br. 4–5). Appellant
contends that Goetz differentiates between polymerizable compounds and
the LC mixture that includes the PY compound (Appeal Br. 5).
Claim 1 requires a formulation comprising greater than 50% by
weight of one or more polymerizable mesogenic compounds wherein 30 to
99.9% of the polymerizable mesogenic compounds have two or more
polymerizable functional groups.
Goetz discloses making a liquid crystalline (LC) medium composed
of a polymerizable reactive mesogen (RM) component (Component A) and a
liquid crystalline (LC) mixture or host mixture (Component B) (Goetz ¶¶
23–25). The LC mixture component of the LC medium may include the
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Application 14/377,579

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compound PY (Goetz ¶ 66). Goetz does not disclose that the LC mixture
component of the LC medium is a polymerizable mesogen. Although the
Examiner finds that the unsaturated carbon double bond on each end of the
PY compound would be polymerizable, there is disclosure to support
Appellant’s contention that Goetz differentiates between polymerizable
compounds and the LC mixture that includes the PY compound. The
Examiner cites to paragraph 253 of Goetz for the teaching that the
unsaturated carbon double bond is suitable for polymerization (Final Act. 3).
Goetz’s paragraph 253 disclosure is made in the context of the
polymerizable reactive mesogenic compounds of the general formula Ra—
B1—(Zb—B2)m—Rb (¶¶ 173–174, 176, 253). The Examiner has not shown
that the unsaturated carbon double bond in Goetz’s PY compound would
yield a polymerizable mesogen. Thus, it appears that Goetz teaches that the
reactive mesogens are part of the polymerizable component A, not the LC
mixture component that may include the PY compound (¶¶ 172, 173).
Goetz further teaches that the amount of polymerizable compounds
for use in polymer-sustained alignment (PSA) devices should be less than
5% (¶ 167). Goetz’s goal is to achieve a formulation for use in polymer-
stabilized (PS) or PSA devices (¶¶ 1, 3, 167). In other words, the
Examiner’s citation to paragraph 143 of Goetz as teaching to use up to 60%
of the PY compound in the LC mixture (i.e., component B) of the LC media,
fails to teach the claim requirement of greater than 50% of a polymerizable,
mesogen. Rather, Goetz teaches to limit the polymerizable portion (i.e.,
component A) of the LC media to less than 5% by weight. In light of these
teachings, we find that the Examiner has not established that Goetz would
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Application 14/377,579

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have suggested a formulation that uses a polymerizable mesogen in an
amount of greater than 50% by weight of the composition as claimed.
On this record, the preponderance of the evidence favors Appellant’s
arguments for of nonobviousness. We reverse the Examiner’s § 103
rejection over Goetz.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–4, 13–15, 18 § 103 Goetz 1–4, 13–15,
18
Overall Outcome 1–4, 13–15,
18

REVERSED