Ex Parte Forrest et al

Patent Trial and Appeal Board

Jan 23, 2017

11207791 (P.T.A.B. Jan. 23, 2017)

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.
11/207,791 08/22/2005 Stephen Forrest 082007-0104 9407
33401 7590 01/25/2017
McDermott Will & Emery LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
EXAMINER
TORNOW, MARK W
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
mweipdocket @ mwe. com
las_ip_docket @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN FORREST and MARK E. THOMPSON1
Appeal 2015-005314
Application 11/207,791
Technology Center 2800
Before CATHERINE Q. TIMM, MARKNAGUMO, and
WESLEY B. DERRICK, Administrative Patent Judges.
Opinion for the Board by TIMM, Administrative Patent Judge.
Opinion dissenting by NAGUMO, Administrative Patent Judge.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL2
1 Appellants identify the real party in interest as Global Photonics Energy
Corporation. Br. 1.
2 In our opinion below, we reference the Final Office Action mailed
February 15, 2013 (Final), the Appeal Brief filed March 18, 2014 (Br.), and
the Examiner’s Answer mailed April 28, 2014 (Ans.).
Appeal 2015-005314
Application 11/207,791
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1—10, 12—15, 17—24, 26—50, and 52—56.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a photosensitive device (see, e.g., claims 1,
27) and a method of making it (see, e.g., claims 15, 35, 41). Claims 1 and
15 are illustrative:
1. A photosensitive device comprising:
an anode and a cathode;
a first organic material and a second organic material
forming a donor-acceptor heterojunction electrically connected
between the anode and the cathode, said first and second
organic materials comprising planar molecules having fused
rings, wherein the first and second organic materials, as
arranged in the photosensitive device, each have a Franck-
Condon Shift of less than 0.5 eV;
wherein the photosensitive device does not include an
applied photo voltage.
Claims Appendix, Br. 21.
15. A method of making a photosensitive device
comprising:
providing a first electrically conductive layer;
arranging a first organic material and a second organic
material over the first electrically conductive layer to form a
donor-acceptor heterojunction, said first and second organic
materials comprising planar molecules having fused rings; and
forming a second electrically conductive layer over the
first and second organic materials,
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Application 11/207,791
wherein each of the first and second organic materials
have a Franck-Condon Shift of less than 0.2 eV, as arranged in
the photosensitive device to form the donor- acceptor
heterojunction, measured after the second electrically
conductive layer is formed.
Claims Appendix, Br. 23.
The rejections maintained by the Examiner are listed in Appellants’
Brief. Br. 8—9. There are two groups of rejections, which we summarize as
follows.
(1) A rejection of claims 1—3, 5—8, 10, 12, 15, 17—24, and 27—50
under 35 U.S.C. § 103(a) as obvious over Epstein3 as evidenced by Halls4
and in view of Nijegorodov.5 Final 2—5. To reject further dependent claims,
the Examiner adds various additional prior art references. Final 7—11.
(2) A rejection of claims 1—10, 12, 15, 17—24, and 27—50 under 35
U.S.C. § 103(a)6 as obvious over Tischler ’9247 as evidenced by Tischler
3 Epstein et al., US 6,623,870 Bl, issued Sep. 23, 2003.
4 Halls et al., WO 2004/006350 A2, published Jan. 15, 2004.
5 Nijegorodov, N. I., & Downey, W. S., The Influence of Planarity and
Rigidity on the Absorption and Fluorescence Parameters and Intersystem
Crossing Rate Constant in Aromatic Molecules, The Journal of Physical
Chemistry, 98(22), 5639-5643 (1994).
6 As noted by Appellants, the Examiner mistakenly referred to 35 U.S.C.
§ 102(e) in the statement of the rejection. Br. 8 ftn.l. Appellants requested
clarification. Id. The Examiner responded that the misidentification of the
statutory basis was a typographical error. Ans. 5. Appellants could have
responded in a reply brief. Thus, the error was not harmful to Appellants.
We further note that this error was also made in an earlier Final Office
Action, dated March 16, 2012, and Appellants responded to the rejection
then stating, inter alia, that “Tischlerl, Tischler2, and Nijegorodov, taken
alone or when combined, do not render obvious” the claims. Response filed
September 17, 2012, pages 6-8 (emphasis added).
7 Tischler et al., WO 2006/137924 A2, published Dec. 28, 2006. Appellants
refer to this reference as Tischlerl.
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’ 172s and in view ofNijegorodov. Final 5—7. To reject further dependent
claims, the Examiner adds various additional prior art references. Final 8—
12.
OPINION
The rejections relying upon Epstein, Halls, and Nijegorodov
For the rejection of claims 1—3, 5—8, 10, 12, 15, 17—24, and 27—50
under 35 U.S.C. § 103(a) as obvious over Epstein as evidenced by Halls and
in view ofNijegorodov, Appellants argue claims 1—3, 5—8, 10, 12, and 27—
34 as a group and claims 15, 17—24, and 35—50 as a separate group. Br. 10-
14. We select claims 1 and 15 as representative for resolving the issues on
appeal.
Claim 1
The Examiner finds, and Appellants do not dispute, that Epstein’s
device has an anode and cathode as well as first and second organic
materials forming a donor-acceptor heterojunction electrically connected as
required by claim 1. Compare Final 3 with Br. 10—13. The Examiner
further finds, and Appellants do not dispute, that the first and second organic
materials have fused rings, and each organic material has a Franck-Condon
Shift within the claimed range. Compare Final 3 with Br. 10—13.
The Examiner acknowledges that Epstein teaches using the device as
a light emitting diode (LED), but the Examiner cites Halls as evidence that
Epstein’s structure is capable of being operated as a photosensitive device.
Final 4.
8 Tischler et al., WO 2007/095172 A2, published Aug. 23, 2007. Appellants
refer to this reference as Tischler2.
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The Examiner further determines that the claim recitation “wherein
the photosensitive device does not include an applied photovoltage” does not
structurally distinguish the device of the claim from that of Epstein. Final 3.
The Examiner acknowledges that Epstein does not disclose that the
fused rings of the organic materials are planar. Final 3^4. The Examiner,
however, concludes that using planar fused rings would have been obvious
to the ordinary artisan based upon the teachings of Nijegorodov. Final 4—5.
Appellants fault the Examiner’s interpretation of “wherein the
photosensitive device does not include an applied photovoltage,” the
Examiner’s application of Halls to establish that Epstein’s device has the
structure required of a photosensitive device, and the Examiner’s reliance on
Nijegorodov to support the obviousness of using planar molecules in
Epstein’s organic materials. Br. 10—13.
We agree with the Examiner’s responses (Ans. 2-4) to Appellants’
arguments, and add the following primarily for emphasis.
The first issue that arises turns on claim interpretation. The question
is whether the language “wherein the photosensitive device does not include
an applied photovoltage” structurally limits the device of claim 1 in a way
that structurally distinguishes the claimed device from that of Epstein.
To support their argument that this limitation is a structural limitation,
Appellants rely on an analogy to a house that does not include a front door
(Br. 11), but we agree with the Examiner that this analogy is flawed. Ans. 2.
A door is a structure. There is no convincing evidence that an applied
photovoltage is a structure.
Further, Appellants appear to contend that the claim language
somehow excludes the source of electrical current that would be required to
operate Epstein’s device as a light emitting device. But claim 1 does not
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exclude the presence of an electrical current source, it only excludes an
“applied photo voltage.”
In order to determine the scope of what is excluded, we first consider
the broadest reasonable meaning of “applied photovoltage” as understood by
those of ordinary skill in the art, taking into account whatever enlightenment
may be afforded by the written description of the invention in Appellants’
Specification. In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). We note
that the Specification does not use the word “photovoltage,” much less the
phrase “applied photo voltage.”9 Merriam-webster.com defines
“photovoltage” as “electromotive force developed by
a photosensitive device as a result of the incidence of radiant energy.”
Merriam-webster.com/dictionary/photovoltage. Thus, it appears that
“applied photovoltage” refers to applying radiant energy to the device in a
way that develops an electromotive force. It is applied radiant energy (light)
that results in an electromotive force, not a source of electrical current.
We agree with the Examiner, that the limitation excluding the
application of a photovoltage fails to set forth a patentably significant
structural difference because the difference amounts to a difference in the
intended use of the device. Final 4. Leaving the device in the dark so that
no photovoltage is applied does not amount to a structural difference in the
device. Whether the device is in a dark room or a lighted room, the structure
of the device is the same: it amounts to an anode, a cathode, and the organic
materials arranged as required by the claim.
9 We, like our dissenting colleague, do not review the question of whether
there is written descriptive support for the negative limitation in the
Specification as originally filed. This is because the question is not before
us: No rejection on that basis has been made. We make no assumptions
about whether the Examiner considered the question.
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Moreover, an electromotive force is not structural distinction. “A
transitory signal made of electrical or electromagnetic variances is not made
of “parts” or “devices” in any mechanical sense.” In re Nuijten, 500 F.3d,
1346, 1355 (Fed. Cir. 2007). A force that causes the movement of excitons
and electrons is not even a signal much less a structure.
Further, whatever the import of an applied photovoltage, we are
directed to no persuasive evidence or argument that the skilled artisan
having been led to a device with an applied photovoltage would not have
concomitantly been led also to a device according to the claim lacking an
applied photovoltage when the device is not in operation.
The Examiner has also provided sufficient evidence to support the
finding that the word “photosensitive” in claim 1 does not patentably
distinguish the claimed device from the device of Epstein. The word
“photosensitive” is defined as “sensitive to the action of radiant energy.”
Merriam-webster.com/dictionary/photosensitive. Appellants’ Specification
states that “[pjhotosensitive optoelectronic devices convert electromagnetic
radiation into an electrical signal or electricity.” Spec. | 5. The Examiner
relies on Halls to show that Epstein’s device is capable of operating in the
required manner of a photosensitive device given the arrangement of the
organic materials between an anode and cathode. Final 3^4; Ans. 2-4.
Halls supports the finding. See Halls, p. 2 (explaining that it was known in
the art that the same organic light emitting materials could also be used to
detect light and displays were known that operated to emit light when
forward biased and operated to detect light when reverse biased). The
Examiner’s reasonable finding shifted the burden to Appellants to show that
Epstein’s structure does not inherently possess the capability of functioning
as a photosensitive device. See In re Schreiber, 128 F.3d 1473, 1478 (Fed.
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Cir. 1997). Appellants provide no convincing evidence that the word
“photosensitive” implies a structure that is not recited in the body of claim 1
or that something more than the two organic materials between an anode and
cathode as taught by Epstein is required.
As stated by the Examiner, Halls in not being used in the rejection to
support a finding of a suggestion to modify the structure of Epstein. Halls is
applied as evidence that Epstein’s device is inherently capable of operating
as a photosensitive device. Thus, Appellants’ arguments directed to a
motivation to combine and teaching away are not persuasive as they are
directed to an obviousness rationale not relied on by the Examiner.
Appellants’ argument (Br. 12—13) that one of ordinary skill in the art
at the time of the invention would not have had a reasonable expectation of
success when applying Nijegorodov’s teachings to Epstein’s organic
material also fails for the reasons provided by the Examiner. Ans. 4.
Nijegorodov provides evidence that planarity and rigidity play important
roles in the fluorescence parameters of the materials and discloses
predictable effects on at least some properties, such as Stokes Shift.
Nijegorodov, p. 5639, col. 112 (Introduction); p. 5643, col. 1,11
(Conclusion).
Appellants’ argument rests on a statement in Nijegorodov that “[t]he
values of the quantum yields and decay times do not behave in a predictable
manner.” Br. 13 (citing Nijegorodov, p. 5643, col. 1,11,11. 8—10
(Conclusion)). But this statement should not be viewed out of context. The
statement applies to the 23 aromatic molecules of differing degrees of
planarity and rigidity that Nijegorodov tested and how those degrees of
planarity and rigidity influence their fluorescence properties. Nijegorodov,
p. 5639, col. 2,11. Nijegorodov merely failed to find a predictable pattern
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of change in quantum yield amongst the 23 molecules as planarity and
rigidity increased. On the other hand, the portion of Nijegorodov cited by
the Examiner states that:
Very often, transition from a nonplanar molecule to a similar but more
planar and rigid molecule is accompanied by an increase in quantum
yield of fluorescence. These conditions have been shown previously
by numerous investigators and have been summarized in a number of
monographs.1 5
Nijegorodov, p. 5639, col. 1 11,11. 9—14 (Introduction). Thus, it was known
that for some molecules, quantum yield increases when the molecular is
made more planar. Nijegorodov then discusses biphenyl as an example of a
molecule that when forced into a planar position by bridging with the
introduction of a methylene group (fluorine) causes the absorption and
fluorescence spectra to sharpen and the quantum yield values to increase
from 0.18 to 0.80. Nijegorodov, p. 5639, col. 111,11. 14—21 (Introduction).
Nijegovodov as a whole indicates that there was recognition in the art that
there were known planar molecules with predictable and known quantum
yields.
What is “unpredictable,” according to Nijegovodov is merely the
effect of increasing planarity and rigidity on quantum yield: it does not
follow a predictable pattern for the 23 molecules tested. Nijegovodov, p.
5641, Table 1 (y values). But this is beside the point as it fails to set forth
any unpredictability in the use of the tested molecules. Nijegovodov reports
quantum yields for each of the 23 tested molecules. They have known
quantum yields. They also have fluorescence properties albeit in different
degrees. Nijegovodov does not report that any of the planar molecules fail
to have the adequate fluorescence. “For obviousness under § 103, all that is
required is a reasonable expectation of success.” In re O ’Farrell, 853 F.2d
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894, 903-04 (Fed. Cir. 1988) (citations omitted). There is a reasonable
expectation that all of the molecules will have adequate fluorescence to
function as desired even if some function better than others. Obviousness
does not require the selection be the most desirable. In re Fulton, 391 F.3d
1195, 1200 (Fed. Cir. 2004); see also Merck & Co v. Biocraft Laboratories,
874 F.2d 804, 807 (Fed. Cir. 1989) (“in 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.”’). Nijegovodov also discloses that other properties, such as
Stoke Shift, were improved amongst the 23 molecules tested.
A preponderance of the evidence supports the Examiner’s findings
and conclusions regarding the obviousness of the device of claim 1.
Claim 15
Claim 15 is directed to a method of making a photosensitive device
with steps of forming a first electrically conductive layer, arranging first and
second organic materials over the first electrically conductive layer to form a
donor-acceptor heterojunction, and forming a second electrically conductive
layer. Similarly to claim 1, the first and second organic materials comprise
planar molecules having fused rings and a Franck-Condon Shift in a
particular range.
Appellants contend that Epstein does not disclose methods for making
light sensing devices, but merely discloses light emitting devices and Halls
fails to make up for this deficiency for the reasons Appellants stated in
arguing against the rejection of claim 1. For the reasons stated by the
Examiner, and the reasons we stated above, we do not find Appellants’
arguments persuasive. Although Epstein calls the device a light emitting
device, the Examiner has provided evidence that the device of Epstein is
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inherently capable of operating as a photosensitive device. Appellants have
not overcome the Examiner’s reasonable finding with evidence showing that
the device would not have this capability or otherwise shown the device is,
in fact, patentably different.
Further Rejections
Appellants rely on the reasons they presented against the rejection
over Epstein as evidenced by Halls, and in view of Nijegorodov without
advancing any separate arguments against the further rejections of dependent
claims. Br. 17—19. For the reasons we stated above, we do not find these
arguments persuasive of reversible error in the Examiner’s rejections.
The rejections over Tischler ’924, Tischler ’172, and Nijegorodov
The Examiner rejects claims 1—10, 12, 15, 17—24, and 27—50 as
obvious over Tischler ’924 as evidenced by Tischler ’172 and in view of
Nijegorodov. Final 5.
As an initial matter, Appellants contend the rejection is in error
because the Examiner stated the statutory basis as under 35 U.S.C. § 102(e)
instead of under 35 U.S.C. § 103(a). Although Appellants are correct that
the Examiner misidentified the statutory basis, as Appellants recognized in
their Brief this was an obvious error. Br. 8, fn.l. The rejection included an
obviousness analysis. Final 7. The Examiner verified that 35 U.S.C.
§103(a) was intended. Ans. 5. Because Appellants had an opportunity to
respond by way of reply brief, and had recognized the rejection as based on
obviousness earlier in prosecution and had responded to it as such, the error
was not harmful to Appellants. Thus, the error was not a reversible error.
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Appellants argue claims 1—10, 12, and 27—34 as a group and claims
15, 17—24, and 35—50 as a separate group. Br. 15—17. We select claims 1
and 15 as representative.
Claim 1
Appellants again urge that “wherein the photosensitive device does
not include an applied photovoltage” is a structural limitation that serves to
define the device. Br. 15. For the reasons we stated above, we disagree.
Appellants contend that the device of Tischler ’924 “does not disclose
all of the structural limitations” because the device of Tischler is electrically
driven and the electrodes (anode and cathode) can contact a power supply to
provide a voltage across the structure. Br. 15—16. But claim 1 does not
exclude contact with a power supply. The claim recites that the
“photosensitive device does not include an applied photo voltage.” This
refers to applying light, not electricity to create an electromotive force.
Moreover, even if the claim recited that the device does not include an
“applied voltage”, switching on and off an applied voltage would not change
the underlying structure of the device.
Appellants also contend that the Examiner cannot rely on Tischler
’172 “to cure the deficiencies of Tischler ’924 because this contradicts the
law of anticipation.” Br. 16. The Examiner relied upon Tischler ’172 in a
similar manner to Halls to support a finding that the device of Tischler ’924
has the necessary structure for operating as a photosensitive device. Final 5—
7. The Examiner’s use of Tischler ’172 was permissible. First, the rejection
is an obviousness rejection. Second, even under an anticipation analysis, the
use of Tischler ’172 is permissible. See In re Baxter Travenol Labs., 952
F.2d 388, 390 (Fed. Cir. 1991) (“extrinsic evidence may be considered when
it is used to explain, but not expand, the meaning of a reference”).
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Appellants’ argument against the Examiner’s use of Nijegorodov to
support the obviousness conclusion fails because the rejection is based on
obviousness, not anticipation. Although the Examiner cited to 35 U.S.C.
§ 102(e) in the rejection heading, the Examiner included an obviousness
analysis that Appellants had the opportunity to respond to in a reply brief.
Claim 15
For the reason stated above, Appellants’ arguments fail. The rejection
is based on obviousness, not anticipation.
Further Rejections
Appellants rely on the reasons they presented against the rejection
over Tischler ’924 as evidenced by Tischler ’172, and in view of
Nijegorodov without advancing any separate arguments against the further
rejections of dependent claims. Br. 17—19. For the reasons we stated above,
we do not find these arguments persuasive of reversible error in the
Examiner’s rejections.
CONCLUSION
We sustain the Examiner’s rejections.
DECISION
The Examiner’s decision is affirmed.
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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).
AFFIRMED
14
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN FORREST and MARK E. THOMPSON
Appeal 2015-005314
Application 11/207,791
Technology Center 2800
Opinion dissenting by NAGUMO, Administrative Patent Judge.
On appeal, the Appellant bears the burden of showing error in the
rejections maintained by the Primary Examiner. Because I conclude that
Appellant has carried that burden with respect to Nijegorodov, I dissent,
respectfully, from the decision that the rejections should be affirmed.
A critical issue, as my colleagues state (Op. 5), is claim construction.
My colleagues ask, does the phrase, “wherein the photosensitive device does
not include an applied photovoltage,” structurally limit the claims to the
device? (Id.) This inquiry is not inapposite, but I would ask, instead, “have
Appellants shown that the applied prior art is excluded by this limitation?
Thus, I arrive at the same conclusion with respect to Epstein, Halls, and the
Tischler references, but via a somewhat different route.
The inquiry begins with an assessment of the scope and content of the
claimed subject matter. Photosensitive devices covered by claim 1 comprise
a donor-acceptor heterojunction formed by two organic materials connected
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Application 11/207,791
electrically between an anode and a cathode. Claim 1 requires further that
each of the first and second materials, as arranged in the device, have a
Franck-Condon shift of less than 0.5 eV. Finally, claim 1 excludes expressly
any such photosensitive device that “includes an applied photo voltage.”
This final limitation is functional. As the predecessor to our
reviewing court explained over 45 years ago, [functional’ terminology
may render a claim quite broad. By its own literal terms a claim employing
such language covers any and all embodiments which perform the recited
function.” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Thus, claim 1,
by its plain language, only excludes devices meeting the express limitations
that include a photo voltage applied to any part of the device by any means.10
The Examiner finds, and Appellants do not contest, that the expressly
recited structures in claim 1 are found in Epstein. (Final Act. 3.) The
Examiner concludes that the structures in Epstein have the same properties,
and cites Halls as evidence that a light-emitting device can be a photo­
sensitive device. Thus, in the Examiner’s words, the structure described by
Epstein, “can be used as either a light emitting device or a photosensitive
device, merely by operating it backwards. This is not a structural difference,
but rather intended use.'''’ {Id. at 4,11. 14—16.)
The major difficulty with Appellants’ arguments regarding this aspect
of the case is that Appellants do not relate their arguments to the requirement
101 do not disturb, but I do not decide, the Examiner’s apparent finding that
this negative limitation is adequately described by the Specification as
originally filed. As my colleagues point out, however, the term
“photovoltage” does not appear in the Specification. (Op. 6,11. 7—9). In this
regard, it may be noted that the Specification teaches that “[a] photodetector
has at least one rectifying junction and is usually but not always operated
with a bias.” (Spec. 2 [0006].)
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that the claimed “photosensitive device does not include an applied
photo voltage.” Patentability cannot be established by arguing limitations
that are not recited in the claims. See, e.g., In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“Many of appellant’s arguments fail from the outset because
. . . they are not based on limitations appearing in the claims.”)
More particularly, Appellants’ “front-door” argument-by-analogy
regarding the construction of the claims is inapposite to the purely functional
character of the no-applied-photovoltage limitation. Furthermore,
Appellants do not raise persuasive arguments based on this limitation. They
urge, for example, that “Epstein discloses a light emitting device that
requires a source of electrical current. In clear contrast, the light sensing
device, i.e., the photosensitive device, recited in claims 1 and 27 does not
include an applied voltage.” (Br. 11,11. 19-21.) The claims, however,
exclude only devices that apply a photo voltage. Appellants’ additional
arguments that Halls teaches away from operating a light emitting device
“‘backwards,’ whatever that may mean” {id. at 12,11. 17—19) are not
persuasive because Appellants do not relate the arguments to any limitation
in claim 1. Moreover, Appellants’ arguments that Halls “teaches away”
from operating a device as a light-emitting device and as a light-sensing
advice because Halls teaches that the device cannot be operated efficiently in
those two modes (Br. 12) does not address the Examiner’s determination
that the device described by Epstein functions inherently as a light sensor.
Patentability cannot be established by arguing limitations that are not recited
in the claims.
The arguments based regarding the teachings of Nijegorodov stand
somewhat differently. The Examiner cites parts of the first two paragraphs
of the first column of this reference as evidence that “planar rigid molecules
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with fused rings are advantageous over non-planar and non-rigid
counterparts.” (Final Act. 4, last para.) Appellants, in contrast, cite the
conclusion of Nijegorodov, which states that “values of the quantum yields
and decay times do not behave in a predictable manner.” (Br. 13,11. 4—6,
quoting Nijegorodov, 5643, left col., 11. 8—10.) Neither the Examiner nor
Appellants provide much analysis of the basis of these statements. Review
of this reference indicates, however, that, in Nijegorodov’s view, “not all the
effects of these factors [planarity and rigidity] have been properly
investigated.” (Nijegorodov 5639, right col., 11. 1—2.) Nijegorodov
“presents ... a thorough analysis of the fluorescence properties of 23
specially chosen substances, different in degrees of planarity and rigidity but
family-related in 71-structure.” {Id. at 11. 5—8.)
It is improper to rely on only the parts of a reference that support a
position, while ignoring those parts of the reference that detract from that
support. In the present case, Nijegorodov indicates that the general
proposition that planarity and rigidity increase quantum yields of
fluorescence in molecules is not controlling, and that there are other factors
that must be considered. Considering the generality of the Examiner’s
reliance on Epstein for fluorescent molecules (none of which comprise
planar molecules having fused rings), the weight of the evidence of record is
that Nijegorodov would not have provided the person having ordinary skill
in the art with a reasonable expectation of successfully substituting some
planar fused ring version of a compound to achieve a higher quantum yield.
I would therefore reverse the rejections based on the combined
teachings of Epstein, Halls, and Nijegorodov.
The rejections in view of the Tischler references (collectively,
“Tischler”) stand somewhat similarly. Appellants state expressly that
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“Tischler 1 does not disclose the recited structural limitation in claims 1
and 27 that the claimed photosensitive device does not include an applied
photovoltage” (Br. 16,11. 4—6), and argue further that ‘whatever Tischler2
may teach remains irrelevant to this anticipation analysis” {id. at 11. 18—19).
The failure of a reference to teach a negative is not fatal to a rejection.
The critical point, however, is that Appellants’ argument does not show why
Tischler teach or suggest a photosensitive device that is excluded by the
claims, i.e., a photosensitive device that includes an applied photovoltage.
In any event, because Appellants have shown the Examiner’s findings
regarding Nijegorodov to be harmfully erroneous, I would reverse the
rejections based on Tischler and Nijegorodov as well.
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