ADEKA CORPORATIONDownload PDFPatent Trials and Appeals BoardApr 2, 20212020006248 (P.T.A.B. Apr. 2, 2021) Copy Citation 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. 15/629,773 06/22/2017 Daisuke SAWAMOTO 8186-0008 9406 466 7590 04/02/2021 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD 11TH FLOOR ARLINGTON, VA 22203 EXAMINER ROSWELL, JESSICA MARIE ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 04/02/2021 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): pair_nixon@firsttofile.com ptomail@nixonvan.com yandtpair@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAISUKE SAWAMOTO, KOICHI KIMIJIMA, KIYOSHI MURATA, YASUNORI KOZAKI, and TAKEO OISHI Appeal 2020-006248 Application 15/629,773 Technology Center 1700 Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 1 This Decision includes citations to the following documents: the Specification filed June 22, 2017 (“Spec.”); the Final Office Action mailed July 12, 2019 (“Final Act.”); the Appeal Brief filed February 12, 2020 (“Appeal Br.”); the Examiner’s Answer mailed July 2, 2020 (“Ans.”); and the Reply Brief filed September 2, 2020 (“Reply Br.”). Appeal 2020-006248 Application 15/629,773 2 Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1, 2, 4–13, 15, 17, and 19.2 We have jurisdiction under 35 U.S.C. § 6(b). A hearing was held on March 24, 2021.3 We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to an oxime ester compound. Spec. ¶¶ 1, 7. Independent claim 1,4 reproduced below, is illustrative of the claimed subject matter: 1. An oxime ester compound represented by general formula (I): wherein R1 represents an aryl group having 6 to 30 carbons in which a hydrogen atom of said aryl group is substituted with 2 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 Adeka Corporation. Appeal Br. 1. 3 The record will include a transcript of the hearing when it becomes available. 4 The claims listed in the Claims Appendix of the Appeal Brief, include the amendments submitted in the Amendment After Final Rejection (filed with the Appeal Brief on February 12, 2020). Because the Examiner entered a new ground of rejection of the amended claims in the Examiner’s Answer (Ans. 3), we presume the amendments have been entered by the Examiner. Appeal 2020-006248 Application 15/629,773 3 OR21, R2 and R3 each independently represent R11, OR11, COR11, SR11, CONR12R13, or CN; R11, R12, and R13 each independently represent a hydrogen atom, an alkyl group having 1 to 20 carbon atoms, an aryl group having 6 to 30 carbon atoms wherein phenyl, biphenyl, naphthyl or anthryl groups are optionally substituted with at least one alkyl group having 1 to 20 carbon atoms, an arylalkyl group having 7 to 30 carbon atoms, or a heterocyclic group having 2 to 20 carbon atoms, in which the alkyl group, aryl group, arylalkyl group, and heterocyclic group may have their hydrogen atom substituted with OR21, COR21, SR21NR22R23, CONR22R23, - NR22-OR23, -NCOR22-OCOR23, -C(=N-OR21)-R22, -C(=N- OCOR21)-R22, CN, a halogen atom, -CR21=CR22R23, -CO- CR21=CR22R23, a carboxyl group, or an epoxy group; R21 is a branched alkyl group having 3 to 20 carbon atoms, wherein methylene units of R21 are interrupted by a single ether group, and R22 and R23 each independently represent a hydrogen atom, an alkyl group having 1 to 20 carbon atoms, an aryl group having 6 to 30 carbon atoms wherein phenyl, biphenyl, naphthyl or anthryl groups are optionally substituted with at least one alkyl group having 1 to 20 carbon atoms, an arylalkyl group having 7 to 30 carbon atoms, or a heterocyclic group having 2 to 20 carbon atoms; the methylene units of an alkylene moiety of the substituents represented by R11, R12, R13, R21, R22, and R23 may be interrupted by an unsaturated linkage, an ether linkage, a thioether linkage, an ester linkage, a thioester linkage, an amide linkage, or a urethane linkage at 1 to 5 sites thereof; the alkyl moiety of the substituents represented by R11, R12, R13, R21, R22, and R23 may be branched or cyclic; an alkyl terminal of the substituents represented by R11, R12, R13, R21, R22, and R23 may have an unsaturated bond; R12 and R13, and R22 and R23 may be connected to each other to form a ring; R3 may be taken together with a neighboring benzene ring; R4 and R5 each independently represent R11, OR11, SR11, COR11, CONR12R13, NR12COR11, OCOR11, COOR11, SCOR11, OCSR11, COSR11, CSOR11, CN, a halogen atom, or a hydroxyl group; and a and b each independently represent 0 to 3. Appeal Br. 9–10 (Claims App.). Appeal 2020-006248 Application 15/629,773 4 REJECTIONS5 The following rejections are before us on appeal (Ans. 3–8): Rejection 1: Claims 1, 2, 4–13, 15, 17, and 19, are rejected under pre- AIA § 103(a) as unpatentable over Matsumoto;6 and Rejection 2: Claims 1, 2, 4–7, and 9–13 are rejected for non-statutory double patenting as unpatentable over claims 1 and 4–8 of Sawamoto.7 DISCUSSION Rejection 1 — Obviousness over Matsumoto The Examiner finds that Matsumoto teaches, in a preferred embodiment, an oxime ester compound having the following formula: 5 The claim amendments submitted in the Amendment After Final filed with the Appeal Brief on February 12, 2020, addressed the Examiner’s § 112 rejections presented in the Supplemental Office Action dated December 17, 2019. Because it appears the Examiner entered those amendments, and the rejections are not repeated in the Examiner’s Answer (Ans. 3–14), we presume the rejection of claims 1, 2, 4–13, 15, 17, and 19 under 35 U.S.C. § 112(a), and the rejection of claims 2, 15, 17, and 19 under 35 U.S.C. § 112(d). 6 Matsumoto et al., WO 2007/071497 A1, published June 28, 2007 (hereinafter “Matsumoto”). 7 Sawamoto et al., US 8,202,679 B2, issued June 19, 2012 (hereinafter “Sawamoto”). Appeal 2020-006248 Application 15/629,773 5 The oxime ester compound depicted above, which is outside the scope of claim 1’s formula (I), is the compound disclosed in Matsumoto’s Example 29, with labels identifying the substituents, which correspond to the R2 and R3 substituents of Matsumoto’s general formula (I). Ans. 4 (citing Matsumoto 93 (Table 4)). The Examiner finds that Matsumoto also teaches oxime ester compounds of formula (II): . Matsumoto’s formula (II) depicts a genus of oxime ester compounds. Final Act. 3; Matsumoto 2, ll. 1–2. The Examiner finds that Matsumoto teaches that the R2 substituent of formula (II) can be a phenyl group substituted with OR11 (Matsumoto 2, ll. 19–20), R11 can be a C2–C20 alkyl which is interrupted by one or more O (id. at 6, l. 3), and the C2–C20 alkyl is branched (e.g., -CH2-CH(CH3)-O-CH2-CH2CH3 or -CH2CH(CH3)-O- Appeal 2020-006248 Application 15/629,773 6 CH2CH3) (id. at 8, ll. 18–23). Ans. 4–5. The Examiner finds that Matsumoto teaches that the R3 substituent of formula (II) can be NO2 (Matsumoto 3, l. 5). Ans. 5. The Examiner finds that based on Matsumoto’s teachings regarding formula (II), one of ordinary skill in the art would have modified the compound of Matsumoto’s Example 29 to include a phenyl group substituted with OR11, where R11 is -CH2-CH(CH3)-O-CH2-CH2CH3 or - CH2CH(CH3)-OCH2CH3 (an aryl group substituted by an O-branched alkyl, wherein methylene units of the branched alkyl are interrupted by a single ether group) as the R2 substituent, and an NO2 group as the R3 substituent. Ans. 5. Appellant does not dispute that when Matsumoto’s Example 29 is modified to include a phenyl group substituted with OR11, R11 is -CH2- CH(CH3)-O-CH2-CH2CH3 or -CH2CH(CH3)-OCH2CH3 (aryl group substituted by O-branched alkyl, wherein methylene units of the branched alkyl are interrupted by a single ether group) as the R2 substituent and an NO2 group as the R3 substituent, the modified compound falls within the scope of claim 1’s formula (I). Reply Br. 2–6. Rather, Appellant argues that “Matsumoto nowhere suggests modifying any of its disclosed embodiments in any particular way, much less in the selective manner newly-proposed by the Examiner’s Answer.” Id. at 2. Appellant cites to In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994), and In re Jones, 958 F.2d 347 (Fed. Cir. 1992), and argues that it is well established by controlling precedent of the Federal Circuit that “[t]he fact that a claimed compound may be encompassed by a disclosed generic formula does not by itself render that compound obvious.” Appeal Br. 5. Appeal 2020-006248 Application 15/629,773 7 Appellant’s arguments are not persuasive. A prior art reference’s disclosure is not limited to its working examples or its preferred compositions. “[I]n a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.”’ Merck & Co., Inc. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (citing In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). By making two modifications to the compound in Matsumoto’s Example 29, i.e, modifying the R2 and R3 substituents, one of ordinary skill in the art would arrive at a compound that falls within the scope of claim 1’s formula (I). The fact that Matsumoto’s formula (I) encompasses a multitude of compounds does not render any particular compound less obvious. Merck & Co., Inc. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (citing In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (Obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds.”)); see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (plurality) (“[P]icking and choosing may be entirely proper in the making of a [§] 103, obviousness rejection.”). Appellant’s arguments regarding Baird and Jones are also not persuasive. In Baird and Jones the issue centered on whether the prior disclosure of a generic formula that required the selection of certain substituents in order to arrive at the claimed specific compound would have rendered obvious the specific claimed compound. In other words, the prior art disclosure was generic and the claim was directed to a particular species. Appeal 2020-006248 Application 15/629,773 8 In contrast, claim 1 of this appeal is directed to a generic formula, general formula (I), of oxime ester compounds. Appellant argues that the Declaration under 37 C.F.R § 1.132 of Naomi Sato filed March 28, 2019 (“Sato Declaration”) provides evidence of unexpected results for the claimed compounds. Appeal Br. 6. We have considered the evidence presented in the Sato Declaration but do not find it persuasive. The Sato Declaration details sensitivity tests performed using two oxime ester compounds within the scope of claim 1, Compound Nos. 54 and 55, with compounds outside the scope of claim 1, Compound Nos. 49 and 50. Sato Decl. 2. According to the Sato Declaration, the results demonstrate that the oxime ester compounds of the present claims, for example, Compound Nos. 54 and 55, have “superior sensitivity” and “excellent solubility to solvents,” as compared with Compound Nos. 49 and 50. Id. at 3–4. The results provided in Sato’s Declaration are based on two compounds within the scope of claim 1’s formula (I). Appellant, however, has not directed us to sufficient evidence that other compounds within the scope of formula (I) would have “superior” results. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (explaining that “commensurate in scope” means that the evidence provides a reasonable basis for concluding that the untested embodiments encompassed by the claims would behave in the same manner as the tested embodiment(s)). Nor has Appellant directed us to evidence, in the Specification or in Sato’s Declaration, establishing that the results would have been “unexpected.” See Sato. Decl. generally. In sum, on this record, a preponderance of the evidence supports the Examiner’s conclusion that the subject matter of claim 1 would have been obvious over Matsumoto. Accordingly, we sustain the rejection of claim 1 Appeal 2020-006248 Application 15/629,773 9 under 35 U.S.C. § 103 over Matsumoto. Because Appellant does not present any separate patentability arguments as to dependent claims 2, 4–13, 15, 17, and 19, we likewise sustain the § 103 rejection of those claims over Matsumoto as well. Rejection 2 – Non-statutory Double Patenting over Sawamoto The Examiner finds that an oxime ester compound represented by general formula (I) in Sawamoto “reads on the claimed oxime ester.” Ans. 8. Appellant does not dispute that oxime ester compounds of Sawamoto’s formula (I) falls within the scope of claim 1’s formula (I).8 Reply Br. 6–7. Rather, Appellant argues that only through careful picking and choosing from numerous possibilities would one of ordinary skill in the art arrive at any compound within the scope of the present claims and the Examiner fails to provide any rationale as to why a skilled artisan would have found it obvious to make the required multiple selections absent the teachings of the present application. Reply Br. 6. Appellant’s argument is not persuasive. The fact that formula (I) in Sawamoto’s claim 1 covers a multitude of oxime ester compounds does not render any compound less obvious. See Merck, 874 F.2d at 806–09. Accordingly, we sustain the obviousness-type double patenting rejection of claims 1, 2, 4–7 and 9–13 over Sawamoto. 8 Appellant’s counsel belatedly argued at the hearing that formula (I) in Sawamoto’s claim 1 does not include compounds with a carbazole moiety, but has not shown good cause for presenting that argument for the first time during the hearing. 37 C.F.R. § 41.47(e)(1)–(2). We refer this issue back to the Examiner to consider the appropriateness of the double patenting rejection in light of Appellant’s new argument. Appeal 2020-006248 Application 15/629,773 10 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–13, 15, 17, 19 103(a) Matsumoto 1, 2, 4–13, 15, 17, 19 1, 2, 4–7, 9– 13 Non-statutory Double Patenting 1, 2, 4–7, 9– 13 Overall Outcome 1, 2, 4–13, 15, 17, 19 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 Copy with citationCopy as parenthetical citation