Ex Parte Adlem et al

Patent Trial and Appeal BoardSep 13, 2018

14403201 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/403,201 11/24/2014 23599 7590 09/17/2018 MILLEN, WHITE, ZELANO & BRANIGAN, P.C. 2200 CLARENDON BL VD. SUITE 1400 ARLINGTON, VA 22201 KevinAdlem 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 ATTORNEY DOCKET NO. CONFIRMATION NO. MERCK-4253 8772 EXAMINER ROBINSON, CHANCEITY N ART UNIT PAPER NUMBER 1722 NOTIFICATION DATE DELIVERY MODE 09/17/2018 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 KEVIN AD LEM, OWAIN LL YR P ARRI, RACHEL TUFFIN, BENJAMIN SNOW, and MARIAM NAMUTEBI Appeal2017-009523 Application 14/403,201 Technology Center 1700 Before DONNA M. PRAISS, A VEL YN M. ROSS, and BRIAND. RANGE, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. Â§ 134 the Final Rejection of claims 1, 3-5, 7, 8, and 10-18. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. 1 In this decision we refer to the Specification filed November 24, 2014 ("Spec."), the Final Office Action dated August 4, 2016 ("Final Act."), the Appeal Brief filed January 10, 2017 ("Appeal Br."), the Examiner's Answer dated May 5, 2017 ("Ans."), and the Reply Brief filed June 27, 2017 ("Reply Br."). 2 Merck Patent GmbH is the Applicant/ Appellant and also identified as the real party in interest. Appeal Br. 1. Appeal2017-009523 Application 14/403,201 STATEMENT OF THE CASE Appellant's invention is directed to bimesogenic compounds of formula 1 X !!.._MG!.!_R 11 1/ Sp\ Xg__MGg_R 12 I for use in liquid crystal media and flexoelectric liquid crystal devices comprising a liquid crystal medium. Spec. 1 :3-12. Claim 1 is illustrative: 1. Bimesogenic compounds of formula I X !!.._MG!.!_R 11 1/ Sp\ Xg__MGg_R 12 I wherein R11 and R12 are each independently H, F, Cl, CN, NCS or a straight-chain or branched alkyl group with 1 to 25 C atoms which are unsubstituted, mono- or polysubstituted by halogen or CN, and wherein one or more non-adjacent CH2 groups are optionally replaced, in each occurrence independently from one another, by -0-, -S-, -NH-, - N(CH3)- -CO- -COO- -OCO- -O-C0-0- -SCO- -CO- ' ' ' ' ' ' S- -CH=CH- -CH=CF- -CF=CF- or-C=C- in such a ' ' ' manner that oxygen atoms are not linked directly to one another, MG11 and MG12 are each independently a mesogenic group of the partial formula II II 2 Appeal2017-009523 Application 14/403,201 wherein at least one of Z 11 in each MG11 and MG12 group is -COO- or -OCO-, and other groups Z11 present are -COO-, -OCO-, -O-C0-0-, -OCH2, -CH20-, -OCF2-, -CF20-, -CH2CH2-, -(CH2)4-, -CF2CF2-, -CH=CH-, -CF=CF-, -CH=CH-COO-, -OCO-CH=CH- or-C=C-, each optionally substituted with one or more of F, Sand/or Si, or are a single bond, A11 and A12 are each independently in each occurrence 1,4- phenylene, wherein one or more CH groups are optionally replaced by N, trans-1,4-cyclo-hexylene in which one or two non-adjacent CH2 groups are optionally replaced by O and/or S, 1,4-cyclohexenylene, 1,4- bicyclo-(2,2,2)-octylene, piperidine-1,4-diyl, naphthalene-2, 6-di y 1, decahydro-naphthalene-2,6-diyl, 1,2,3,4-tetrahydro-naphthalene-2,6-diyl, cyclobutane-1,3- diyl, spiro[3,3]heptane-2,6-diyl or dispiro[3.1.3.l] decane-2,8-diyl, these groups being unsubstituted, mono-, di-, tri- or tetrasubstituted with F, Cl, CN or alkyl, alkoxy, alkylcarbonyl or alkoxycarbonyl groups with 1 to 7 C atoms, wherein one or more H atoms are optionally substituted by F or Cl, and k is 1, 2, 3 or 4, Sp1 is a spacer group which is a linear or branched alkylene group comprising 1, 3 or 5 to 40 C atoms, wherein one or more nonadjacent and non-terminal CH2 are optionally replaced by-0- -S- -NH- -N(CH3)- -CO- -0-CO- -S- ' ' ' ' ' ' CO- -0-COO- -CO-S- -C0-0- -CH(halogen)- ' ' ' ' ' -CH(CN)-, -CH=CH- or -C=C-, provided that no two 0- atoms are adjacent to one another, no two -CH=CH- groups are adjacent to each other and no two groups selected from -0-CO- -S-CO- -0-COO- -CO-S-, ' ' ' -COO- and -CH=CH- are adjacent to each other, and X11 and X12 are independently from one another a linking group selected from -C0-0-, -0-CO- and a single bond, 3 Appeal2017-009523 Application 14/403,201 provided that in -X11 -Sp 1-X12- no two O atoms are adjacent to one another and no two groups selected from -0-CO-, -S-CO-, -0-COO- -CO-S- -C0-0- and -CH=CH- are adJÂ·acent to each ' ' other. Appeal Br. 18 (Claims Appendix). The following rejections are on appeal: 3 1. Claims 1, 3-5, 7, 8, and 10-18 for obviousness-type double patenting over claims 1-15 of copending U.S. Application No. 14/403,417; 2. Claim 1, 3-5, 7, and 10-18 under 35 U.S.C. Â§ 102(b) as anticipated by Coates; 4 and 3. Claim 8 under 35 U.S.C. Â§ 103 as unpatentable over Coates in view of Golding. 5 Final Act. 2-15; Appeal Br. 4; Ans. 4--8. ISSUES The dispositive issues on appeal are whether the Examiner erred in determining that ( 1) Coates's disclosed preferred compounds disclose the compounds of claim 1 even though Coates's preferred compounds include embodiments wherein the mesogenic groups do not contain a -COO- or - OCO- group, and (2) Appellant's comparative data does not distinguish the compound disclosed by Coates. 3 The rejection of claims 1, 3-5, 7, 8, and 10-18 under 35 U.S.C. Â§ 103 as unpatentable over Golding has been withdrawn by the Examiner. Ans. 8. 4 Coles et al., GB 2,356,629 A published May 30, 2001 (consistent with the Final Office Action and the Appeal Brief, we refer to this reference by the last named inventor "Coates"). 5 Golding et al., US 2008/0142758 Al, pub. June 19, 2008 ("Golding"). 4 Appeal2017-009523 Application 14/403,201 ANALYSIS We need only address the prior art rejections of claims 3-5, 7, 8, and 10-18 because Appellant does not substantively argue the obviousness-type double patenting rejection. Instead, Appellant contends that because the prior art rejections should be reversed, the obviousness-type double patenting rejection should be withdrawn by the Examiner in accordance with MPEP Â§ 804(I)(B)(l) in view of the instant application being the earlier- filed application. App. Br. 5. Because we affirm the Examiner's prior art rejections, we likewise affirm the Examiner's obviousness-type double- patenting rejection. Anticipation by Coates Appellant challenges the rejection of claim 1 as anticipated by Coates on the basis that Coates's broad generic formulae do not specifically disclose or direct a compound within the scope of claim 1, which requires two mesogenic groups with a -COO- or -OCO- linking group within each mesogenic group. Appeal Br. 5---6. Appellant also argues that the Examiner's rejection is based on an erroneous claim construction where the compounds of formula I do not have two mesogenic groups with a -COO- or -OCO- linking group within each mesogenic group. Id. at 7-8. According to Appellant, each mesogenic group MG 11 and MG12 as claimed has a Z11 linking group, which is -COO- or -OCO-, linking the cyclic A groups of formula II, noting that Kin formula II is at least 1. Id. at 6, 8. Appellant argues that even though Coates discloses mesogenic group(s), including preferred Z groups, that encompass mesogenic groups with a -COO- and -OCO- group, Coates's disclosures are broadly generic because Coates encompasses embodiments wherein the mesogenic groups do not contain a - 5 Appeal2017-009523 Application 14/403,201 COO- or -OCO- group. Id. at 7. Appellant contends that such a broad disclosure does not describe an embodiment therein to support an anticipation rejection. Id. at 6. The Examiner responds that Coates specifically discloses that ---COO- and ---OCO- linking groups are present in mesogenic groups MG 1 and MG2, which have the formula II -A1-(Z1-A2)m- where Z1 is selected in each case independently-COO- or -OCO-, -O-C0-0-, -OCH2-, [-CH20-, -(CH2)4-,J -CF2CF2- -CH =CH- -CF=CF- CH =CH-COO- or a single bond or C=C ' ' ' ' . Ans. 10-11 (citing Coates 6:1-9). The Examiner further finds that Coates discloses bimesogenic compounds where MG 1 and MG2 are selected from groups of formulae with -COO- and ---OCO- linkages and discloses that preferably Z is -COO-, -OCO-, [-CH2CH2-, -C=C-], or single bond. Id. at 11-12 (citing Coates 7:10-8:1, 8:6-9). The Examiner finds Coates discloses a limited number of compounds closely related to each other in structure and properties possessed by the compound class of the prior art and the claimed compounds such that one of ordinary skill in the art is able to "at once envisage" the specific compound within the generic chemical formulation. Id. at 12-13. In the Reply Brief, Appellant reasserts that Coates discloses only broad generic formulae with no disclosures of specific species to support an anticipation rejection. Reply Br. 1. Appellant distinguishes caselaw on the basis that the number of compounds whereby a specific compound could be immediately envisaged therefrom was very limited to no more than about 20 compounds, which, Appellant asserts, is not the situation with Coates because Coates does not provide any direction to a specific embodiment of a compound as claimed having two mesogenic groups with a -COO- or 6 Appeal2017-009523 Application 14/403,201 ---OCO- linking group within each mesogenic group. Id. at 1-2. Appellant concedes that "the formulae provided in appellants' specification at pages 12-15 are identical to the formulae disclosed in Coates," but assert that is not relevant as the claimed compounds are limited to those having two mesogenic groups with a -COO- or---OCO- linking group within each mesogenic group. Id. at 2-3. Appellant's arguments are not persuasive because Appellant does not adequately rebut the Examiner's finding that Coates discloses bimesogenic compounds with the explicit direction that the mesogenic linkages are preferably -COO-, -OCO-, or single bond linkages (Ans. 11-12). The Examiner's finding is supported by the record. Coates 7: 10-8: 1, 8: 6-9. Appellant's argument (Reply Br. 2-3) that the claim requires two mesogenic groups with a -COO- or ---OCO- linking group within each and thus is more limited than the overlapping disclosures in the Coates and Appellant's Specification at pages 12-15 regarding preferred mesogenic groups in the formulae is not persuasive because Coates further limits the preferred Z linking groups to -COO-, -OCO-, -CH2CH2-, -C=C-, or single bond that is applicable to both mesogenic groups. Coates 8:6-9. Specific examples of the claimed subject matter are not necessary to establish anticipation. Rather, a reference must identify something falling within the claimed subject matter with sufficient specificity to constitute a description thereof within the purview ofÂ§ 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978). The preponderance of the evidence cited in this appeal supports the Examiner's finding that Coates provides the direction to limit the number of compounds such that one of ordinary skill in the art is able to "at once envisage" the specific compound where both mesogenic 7 Appeal2017-009523 Application 14/403,201 groups have a -COO- or ---OCO- linking group as claimed. See In re Petering, 301 F.2d 676, 681 (CCPA 1962) (claimed chemical compound described by prior art reference because one skilled in the art would "at once envisage" each member of a limited class of chemical structures.). For the above reasons, we affirm the rejection of claim 1 as anticipated by Coates. Obviousness over Coates and Golding The Examiner rejects claim 8 as obvious over the combination of Coates in view of Golding for the reasons stated on pages 5---6 of the Final Office Action. Claim 8 indirectly depends from claim 1 and is directed to a liquid-crystalline medium comprising one or more bimesogenic compounds according to claim 1 "which additionally comprises one or more compounds selected from the compounds of the formulae III R31 -MG31 -X31 -Sp3-X32- MG32-R32 III" and further defines the recited groups of formulae III within the claim. Appellant argues that Golding is cumulative to Coates in that it provides a broad generically encompassing disclosure with no direction to choose the specific features required to arrive at the compounds of formula I. Appeal Br. 9. Appellant contends that such a generic disclosure of the claimed compound is insufficient to establish a prima facie case of obviousness. Id. (citing In re Jones, 958 F.2d 347 (Fed. Cir. 1992); In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994)). Appellant asserts that "even if Coates is combined with Golding to add compounds of Goldings' formulae II- I or II-2 into the Coates composition, the claimed invention would not 8 Appeal2017-009523 Application 14/403,201 result because neither of Coates or Golding - nor their combination - fairly suggests the compounds of Appellant's formula I." Id. at 10. Appellant additionally argues that comparative data found on pages 77-79 in the Specification proves nonobviousness of the claimed compound because "two side-by-side comparative examples show[] the advantage of mixtures containing a claimed compound which has at least one ---C0-0- or ---0-CO- linking group in each of the two mesogenic groups compared to otherwise identical mixtures which, instead, contain a compound within the generic disclosure of Coates not having such ester linking groups." Id. at 10-11. According to Appellant, comparisons between mixtures M-1 to C-1 and M-2 to C-2 show mixtures with the claimed compounds "have a second nematic phase which has a lower onset temperature and is allowed to exist at a lower temperature." Id. at 11. Appellant argues that this property "could not have been expected from the cited references" because the references fail to indicate any advantage to compounds having at least one ---C0-0- or ---0-CO- linking group in each of the two mesogenic groups. Id. at 11-12. The Examiner responds that Coates teaches each and every limitation of claim 1 and that Golding is not relied upon for teaching two ester linking groups or second nematic phase, but, rather, the addition of another bimesogenic compound to a liquid crystal mixture as required by claim 8. Ans. 16, 19, 20. The Examiner notes that Appellant does not dispute that the bimesogenic compound represented by Golding's preferred compounds II-I and II-2 encompass formulae II of claim 8. Id. at 17. Regarding the comparative examples in the Specification, the Examiner responds that if a prior art compound possesses a particular benefit, even though the benefit is not recognized in the prior art, Appellant's recognition of the benefit is not 9 Appeal2017-009523 Application 14/403,201 in itself sufficient to distinguish the claimed compound from the prior art. Id. at 21. In the Reply Brief, in addition to reasserting that the compounds of claim 1 are not anticipated by Coates, Appellant contends that the unexpected advantages shown by the comparative data show a significant advantage of mixtures containing a claimed compound which has at least one -C0-0- or-0-CO- linking group in each of the two mesogenic groups compared to compounds disclosed in Coates that do not have such ester linking groups. Reply Br. 3--4. Appellant's arguments are not persuasive of error because Coates discloses the claimed compounds of claim 1 including the ester linking groups. Appellant does not dispute the Examiner's finding (Final Act. 5---6) that Golding discloses the bimesogenic compound of formulae III required by claim 8. Nor does Appellant dispute the Examiner's finding (id.) that Golding teaches that such modification of a liquid crystalline medium would aid in improving flexoelectric devices. Because we are not persuaded that Coates fails to disclose the claimed compounds of claim 1, specifically with respect to the recited ester linking groups of---C0-0- and-0-CO-, we find Appellant's comparative data insufficient to establish unexpected results over the combination of Coates and Golding because it is not a comparison with the closest prior art. Appellant's comparative mixtures C-1 and C-2 are said to contain compounds within the generic disclosure of Coates which do not have ester linkages. Appeal Br. 11. However, Coates discloses ester linkages as discussed above in connection with claim 1. The burden of establishing that unexpected results support a conclusion of nonobviousness rests with 10 Appeal2017-009523 Application 14/403,201 Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). "[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (emphasis in original). Accordingly, Appellant's comparative data is entitled to little or no weight. Additionally, Appellant's comparative data evidence is insufficient to overcome obviousness of claim 8 because it is limited to two comparative examples which Appellant has not shown to be commensurate in scope with the scope of the claims. See In re Peterson, 315 F.3d 1325, 1329--31 (Fed. Cir. 2003). "Establishing that one ( or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of [the CCP A] that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."' See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). For the foregoing reasons, and after reviewing the positions and evidence presented by both the Examiner and Appellant including Appellant's evidence of unexpected results, we sustain the rejection of claim 8 under 35 U.S.C. Â§ 103(a) over the combination of Coates and Golding. Conclusion In sum, we affirm the Examiner's rejection of claims 1, 3-5, 7, and 10-18 under 35 U.S.C. Â§ 102 and the Examiner's rejection of claim 8 under 35 U.S.C. Â§ 103. 11 Appeal2017-009523 Application 14/403,201 DECISION The Examiner's decision rejecting claims 1, 3-5, 7, 8, and 10-18 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136. ORDER AFFIRMED 12