ADEKA CORPORATION

Patent Trials and Appeals Board

Apr 2, 2021

2020006248 (P.T.A.B. Apr. 2, 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.
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
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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.
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Application 15/629,773

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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

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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

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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.
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Application 15/629,773

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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

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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

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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

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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