Amir Hossain. Parham et al.

Patent Trials and Appeals Board

Dec 27, 2019

15676100 - (D) (P.T.A.B. Dec. 27, 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.
15/676,100 08/14/2017 Amir Hossain Parham 074025-0383-01-
US-566395
9447
123223 7590 12/27/2019
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
BOHATY, ANDREW K
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
DBRIPDocket@dbr.com
IPDocketWM@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex AMIR HOSSAIN PARHAM, ARNE BUESING,
CHRISTOF PFLUMM, TERESA MUJICA-FERNAUD,
PHILIPP STOESSEL, THOMAS EBERLE, and FRANK VOGES

____________

Appeal 2019–002324
Application 15/676,100
Technology Center 1700
____________

Before KAREN M. HASTINGS, BRIAN RANGE, and
JANE E. INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 18, 19 and 21–43 under 35 U.S.C.
§ 103 as unpatentable over at least the combined prior art of Yabunouchi
(US 2006/0159957 A1, pub. July 20, 2006), Lupo (US 5,840,217, iss. Nov.
24, 1998), and Akai (US 2010/0258789 A1, pub. Oct. 14, 2010).2

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Merck Patent GmbH as the real party in
interest (Appeal Br. 2).
2 The additional references applied to dependent claims 33, 35, 37, 39, and
41 are Thelakkat (Thelakkat et al, SYNTHESIS AND PROPERTIES OF
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We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

CLAIMED SUBJECT MATTER
Claim 18 is illustrative of the subject matter on appeal and is directed
to a compound (see, Appeal Br., Claims Appendix 15–17 for the detailed
compound formula). As explained in the Specification, this compound is
used in an electronic device, in particular in an organic electroluminescent
device (Spec. 1:1-28).
Appellant’s arguments mainly focus on independent claim 18 (see
generally Briefs). To the extent Appellant presents separate remarks for
rejections of the dependent claims, these will be addressed below.

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief (filed Sept. 6, 2018, hereinafter
“Appeal Br.”), as well as the Reply Brief (filed Jan. 28, 2019, hereinafter
“Reply Br.”), we determine that Appellant has not demonstrated reversible
error in the Examiner’s rejections of claims 18, 19 and 21–31, and 33–43
(e.g., see generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir.
2011) (explaining the Board’s long-held practice of requiring Appellant(s) to
identify the alleged error in the Examiner’s rejection). We sustain the

NOVEL HOLE TRANSPORT MATERIALS FOR
ELECTROLUMINESCENT DEVICES, Macromol. Symposium, Vol. 125,
157–164 (1997), hereinafter “Thelakkat”) and Thelakkat 1997 (e.g., Ans. 8,
9). A discussion of these references is not needed for disposition of this
appeal
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rejections of these claims generally for the reasons expressed by the
Examiner in the Final Office Action (mailed April 6, 2018, hereinafter
“Final Action”) and the Examiner’s Answer (mailed Nov. 29, 2018,
hereinafter “Ans.”). On the other hand, the Examiner’s rejection as to claim
32 is reversed.
We add the following primarily for emphasis.
It has been established that the predictable use of known prior art
elements performing the same functions they have been known to perform is
normally obvious, and the combination of familiar elements is likely to be
obvious when it does no more than yield predictable results. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”); see
also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in the art would have reasonably been expected to draw
therefrom).
Appellant’s main contention focuses on a lack of a sufficient reason to
use the spirobifluorenyl group as found in Lupo’s and Akai’s
electroluminescent compounds to replace the fluorenyl group in
Yabunouchi’s electroluminescent compound (Appeal Br. 8; see also Reply
Br. 2, 3). Appellant takes issue with the Examiner’s stated reason which is
to increase the compound’s glass transition temperature and/or lower its
tendency to crystallize (as explained by the Final Action 5, 7), in part
because Yabunouchi already “appears to strike a balance” between high
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glass transition temperature and low tendency to crystallize (Appeal Br. 8;
see also Reply Br. 2, 3).3 Appellant also argues that there is no reasonable
expectation of success or motivation to use the group on the 1, 3, or 4
position versus the 2 position taught in Yabunouchi based on the teachings
of the references (Appeal Br. 8; see also Reply Br. 5, 6). Appellant’s
arguments are not persuasive of reversible error for reasons presented by the
Examiner (Ans. 9–11).
As pointed out by the Examiner, both Lupo and Akai exemplify the
use of a spirobifluoernyl group as an alternative to a fluorenyl group in an
electroluminescent compound and teach advantages of such a substitution
(e.g., Ans. 5, 6; see also Final Action 5). We agree with the Examiner that
the electroluminescent compound in claim 18 is prima facie obvious over
Yabunouchi’s compound modified to have spirobifluorenyl groups and that
such groups may be located at any of the recited positions because the
claimed compound and Yabunouchi’s modified to have spirobifluorenyl
groups as a known alternative to fluorenyl groups have substantially similar
chemical structures and are used for the same purpose (electroluminescent
compounds). See In re Payne, 606 F.2d 303, 313-14 (CCPA 1979) (When
the prior at compound (a prior art ring structure having one or three carbon
atoms between two sulfur atoms) and the claimed compound (the claimed
ring structure having two carbon atoms between two sulfur atoms) are
structurally similar and are used for the same purpose (pesticidal), the
required motivation to make the claimed compound is present.)
As stated in KSR, 550 U.S. at 419–20, the Supreme Court stated that:

3 We shall assume without deciding that Appellant is correct that
Yabunouchi alone does not suggest bispirofluorene groups (Reply. Br. 4).
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In determining whether the subject matter of a . . . claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
[unpatentable] under § 103. One of the ways in which a
patent’s subject matter can be proved obvious is by noting that
there existed at the time of [the] invention a known problem for
which there was an obvious solution encompassed by the
patent’s claims.

“The Supreme Court’s decision in KSR . . . directs us to construe the scope
of analogous art broadly, stating that ‘familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.’”
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting
KSR, 550 U.S. at 420).
It is well established that prior art references must be considered in its
entirety, i.e., as a whole, when determining obviousness. One of ordinary
skill in the art would have inferred and readily appreciated that a known
alternative group of spirobifluorenyl versus fluorenyl in the
electroluminescent compound of Yabunouchi would have been obvious as
explained by the Examiner.
Likewise, Appellant’s arguments regarding the lack of motivation to
combine the cited art are also unpersuasive for the reasons given above.
That is, the arguments fail to account for “the inferences and creative steps
that a person of ordinary skill in the art would employ.” See KSR, 550 U.S.
at 418; see also cf., In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992)
(“[T]he law does not require that the references be combined for the reasons
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contemplated by the inventors.”); and In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006).
We believe that the Examiner has correctly applied the standard of 35
U.S.C. § 103 in finding the structural relationship between the claimed
compound and Yabunouchi’s compound as modified in accordance with
established obviousness guidelines, to be so close that the former would be
prima facie obvious over the latter. See also In re Wood, 582 F.2d 638, 641,
(CCPA 1978) (Because of the close structural similarity between the
claimed compounds at issue here and the compounds of Addor I, II, and III,
Ghosh, and Nikles, and because those prior art compounds possess pesticidal
activity, we conclude that the required motivation is present here.); see also
In re Gyurik, 596 F.2d 1012, 1018 (CCPA 1979) (When the similarity in
chemical structures and functions between the prior art and claimed
compounds is sufficiently close, a prima facie case of obviousness is
established.); see also Application of Albrecht, 514 F.2d 1385, 1388 (CCPA
1975); and In re Murch, 464 F.2d 1051, 1054 (CCPA 1972).
Finally, the Examiner reasonably determined that one of ordinary skill
in the art may place the group on any available position, including the 1
position (claim 42 and the 4 position (claim 43). Appellant has not shown
otherwise with sufficient technical reasoning or credible evidence. Rather,
Appellant states for the first time in the Reply Brief that the Specification
examples do show an improvement in properties from the 3 position over the
2 position (Reply Br. 15). However, none of the claims appear to be limited
to the groups being located on the 3 position.
It has been established that obviousness does not require absolute
predictability of success; all that is required is a reasonable expectation of
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success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009). Furthermore,
inasmuch as the bispirofluorene groups were known in the art as suitable for
an electroluminescent compound, it is incumbent upon Appellant to
establish that the present inventors had to resort to more than routine
experimentation to determine if it would have been effective in a compound
of the type taught in Yabunouchi. However, no such evidence is of record.
Thus, Appellant has not shown reversible error in the Examiner’s
obviousness determination of claims 18, 42, and 43. See KSR, 550 U.S. at
417 (the predictable use of known prior art elements or steps performing the
same functions they have been known to perform is normally obvious; the
combination of familiar elements/steps is likely to be obvious when it does
no more than yield predictable results); see also In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references.”); and In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”).
Accordingly, we sustain the Examiner’s rejection of independent
claim 18, and separately argued dependent claims 42 and 43, as well as all
claims dependent that are not separately argued thereon (that is, claims 21–
31, and 33–41.
On the other hand, the Examiner does not respond to Appellant’s
specific argument regarding the process for preparing the compound of
claim 18 set out in claim 32 (Appeal Br. 11, 12; see also generally Ans.). In
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light of these circumstances, we are constrained to reverse the Examiner’s
rejection of claim 32.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
18, 19, 21–
32, 34, 36,
38, 40, 42, 43
103 Yabunouchi, Lupo,
Akai
18, 19, 21–31,
34, 36, 38, 40,
42, 43
32
33, 35, 37,
39, 41
103 Yabunouchi, Lupo,
Akai, Thelakkat,
Thelakkat 1997
33, 35, 37, 39,
41

Overall
Outcome

18, 19, 21–31,
33–43
32

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)(1)(iv).

AFFIRMED IN PART