Ex Parte Goebel et al

Patent Trial and Appeal Board

Aug 16, 2017

13992411 (P.T.A.B. Aug. 16, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/992,411 06/07/2013 Mark Goebel MERCK-4088 8268
23599 7590 08/18/2017
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
08/18/2017 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK GOEBEL, ELVIRA MONTENEGRO, and
ATSUTAKA MANABE
Appeal 2016-005095
Application 13/992,411
Technology Center 1700
Before DONNA M. PRAISS, JULIA HEANEY, and
BRIAN D. RANGE, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—20 of Application 13/992,411. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 This Decision includes citations to the following documents: Specification
filed June 7, 2013 (“Spec.”); Final Office Action mailed July 15, 2015
(“Final Act.”); Appeal Brief filed Oct. 14, 2015 (“Appeal Br.”); Examiner’s
Answer mailed Apr. 6, 2016 (“Ans.”); and Reply Brief filed Apr. 20, 2016
(“Reply Br.”).
2 Appellants identify the real party in interest as Merck Patent GmbH. App.
Br. 1.
Appeal 2016-005095
Application 13/992,411
BACKGROUND
The subject matter on appeal relates to a liquid crystalline medium
having a nematic phase and negative dielectric anisotropy. App. Br. 2.
Claim 1 is illustrative of the claimed subject matter:
1. A liquid-crystalline medium having a nematic phase and negative
dielectric anisotropy which comprises
a) one or more compounds of formula I or one or more compounds of
formula I-la
in which
R11 to R14 each, independently of one another, denote alkyl having
1 to 4 C atoms,
X1 denotes O*,
Y1 and Y01 each, independently of one another, denote straight-chain
or branched alkyl having 1 to 10 C atoms, also
cycloalkyl, cycloalkylalkyl or alkylcycloalkyl, where one
or more —CH2- groups in each of these groups may each
be replaced by -O- in such a way that no two O atoms in
the molecule are connected directly to one another, and
2
Appeal 2016-005095
Application 13/992,411
Z1 denotes -0-, -(CO)-O-, -O-(CO)-, -0-(C0)-0-, -NH-,
-NY01- or -NH-(CO)-,
and, in the case where Z* denotes -0-(C0)-0-,
Y1 may also denote
and
b) one or more compounds of formula II
in which
R21 denotes an unsubstituted alkyl radical having 1 to 7 C
atoms or an unsubstituted alkenyl radical having 2 to 7 C
atoms, and
R22 denotes an unsubstituted alkenyl radical having 2 to 7 C
atoms,
and
c) one or more compounds selected from formulae III-1 to TTT-4
R'
F F
ilf-i
R
F F
... p UT-2
3
Appeal 2016-005095
Application 13/992,411
R3i
F F
m-3
F F
in which
R31 denotes an unsubstituted alkyl radical having 1 to 7 C
atoms,
R32 denotes an unsubstituted alkyl radical having 1 to 7 C
atoms or an unsubstituted alkoxy radical having 1 to 6 C
atoms, and
m, n and o each, independently of one another, denote 0 to 1.
App. Br. 13—15, Claims App’x. According to the Specification, the
compounds of formula I function as heat stabilizers for liquid crystalline
mixtures. Spec. 9,11. 23—32.
THE REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1—3 and 5—19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Klasen-Memmer et al. (WO 2010/072370 Al)3
in view of Seltzer et al.4 Final Act. 4—7.
3 The Examiner, without objection by Appellants, relies upon US
2011/0246216 Al, published Oct. 13, 2011 (“Klasen-Memmer”), as the
English language equivalent of WO 2010/072370 Al.
4 Seltzer et al. (US 6,447,644 Bl, issued Sept. 10, 2002) (“Seltzer”).
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Appeal 2016-005095
Application 13/992,411
2. Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Manabe et al. (WO 2009/129911 Al)* * * 5 in view of Seltzer.
Final Act. 7—10.
DISCUSSION
Rejection 1
Klasen-Memmer describes a liquid crystalline medium having
negative dielectric anisotropy. Klasen-Memmer 11. The Examiner finds,
and Appellants do not dispute, that Klasen-Memmer teaches compounds
equivalent to formulas II, III-2, III-3, and III-4 of claim 1. Ans. 2—3
(providing citations to Klasen-Memmer). The Examiner further finds that
Klasen-Memmer’s Table C teaches stabilizers which are structurally similar
to formula I of claim 1 except that they do not include monovalent oxygen.
Ans. 4. The Examiner determines that a composition comprising a mixture
of the compounds of Klasen-Memmer’s Example 10 and a stabilizer
structurally similar to the compounds of Klasen-Memmer’s Table C would
have been obvious to a person of ordinary skill in the art. Ans. 3^4
(providing citations to Klasen-Memmer).
Seltzer teaches the addition of hydroxylamines or nitroxide free
radicals to high-yield pulp paper to provide enhanced resistance to yellowing
due to the presence of lignin. Seltzer Abstract, 1:23—47, 3:4—9. The
Examiner finds that Seltzer teaches hindered amine compounds equivalent to
5 The Examiner, without objection by Appellants, relies upon US
2011/0101270 Al, published May 5, 2011 (“Manabe”), as the English
language equivalent of WO 2009/129911 Al.
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Appeal 2016-005095
Application 13/992,411
formula I of claim 1, and determines that it would have been obvious to
modify Klasen-Memmer to include Seltzer’s hindered amine compounds
because Seltzer teaches hydroxylamines or nitroxide free radicals that are
equivalent to Klasen-Memmer’s stabilizers (Klasen-Memmer, Table C), to
achieve light and thermal stability. Ans. 4—5, 13.
Appellants argue that the Examiner has not established a prima facie
case of obviousness because the rationale for using Seltzer’s hindered amine
compounds in Klasen-Memmer’s liquid crystalline medium lacks support.
App. Br. 7—8. Specifically, Appellants argue that the Examiner’s findings
that Seltzer’s hindered amine compounds are functionally equivalent to the
stabilizers of Klasen-Memmer or Appellants’ claims, and would behave as
stabilizers in a liquid crystalline medium, lack support because Seltzer only
discloses that hindered amines can be used to inhibit yellowing in paper pulp
which contains lignin. Id.
On the record before us, the Examiner has not shown that a person of
ordinary skill in the art would have had an apparent reason to use Seltzer’s
hindered amine compounds as stabilizers in liquid crystalline media. The
Examiner does not point to anything in Seltzer suggesting that hindered
amines are equivalent in all situations, nor provide a rationale as to why a
person of ordinary skill would believe that Seltzer’s compounds would
function as a stabilizer in liquid crystalline media. Further, the Examiner’s
response that Seltzer is an analogous reference because it is pertinent to “the
problem of poor stability” (Ans. 10) does not adequately address Appellants’
argument that the rationale for the rejection lacks support. As Appellants
note (Reply Br. 2), “light and thermal stability” in the context of pulp papers
as taught by Seltzer would have been understood as a reference to yellowing,
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Appeal 2016-005095
Application 13/992,411
and not to a broader problem of stability which would encompass liquid
crystalline media. Thus, in stating a reason to combine Klasen-Memmer and
Seltzer, the rejection fails to explain sufficiently why a person of ordinary
skill in the art would have had a reason to combine the teachings of the
references. Because the insufficient rationale for combining Klasen-
Memmer and Seltzer underlies the rejection of all claims at issue in
Rejection 1, our conclusion that the Examiner has not established a prima
facie case of obviousness applies equally to claims 1—3 and 5—19.
Rejection 2
Rejection 2 is based on a combination of Seltzer with Manabe for the
same reasons the Examiner applied to Seltzer in Rejection 1. Because we
conclude that insufficient rationale was reversible error in Rejection 1, we
also reverse Rejection 2 for the same reason.
SUMMARY
We reverse the rejections of claims 1—20.
REVERSED
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