Ex Parte HSU

Patent Trial and Appeal Board

Jun 13, 2017

14100967 (P.T.A.B. Jun. 13, 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.
14/100,967 12/09/2013 LI-TAO HSU 19408-129 1185
7590 06/15/201760951
WPAT, PC
INTELLECTUAL PROPERTY ATTORNEYS
2301 Dupont Dr. Suite 510
Irvine, CA 92612
EXAMINER
ZHANG, RUIYUN
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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):
inbox @ wpatca.com
pcollins @ wpatca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LI-TAO HSU
Appeal 2016-003846
Application 14/100,967
Technology Center 1700
Before TERRY J. OWENS, GRACE KARAFFA OBERMANN, and
AVELYN M. ROSS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a liquid crystal alignment agent, a liquid crystal
alignment film made using the liquid crystal alignment agent, and liquid
crystal display element comprising the liquid crystal alignment film.
Claim 1 is illustrative:
1. A liquid crystal alignment agent comprising:
a polymer composition (A) obtained by reacting a
diamine compound (a) and a tetracarboxylic acid dianhydride
compound (b);
a solvent (B); and
Appeal 2016-003846
Application 14/100,967
a poly(oxyalkyleneglycol)dialkylether compound (C);
wherein the number average molecular weight of the
poly(oxyalkyleneglycol)dialkylether compound (C) is from 250
to 2000;
wherein the diamine compound (a) having the structure of
Formula (1-2):
wherein R2 represents -0-, -COO-, -OCO-, -NHCO-, -CONH-,
or -CO-; R21 and R22 represents [sic, represent] a divalent group selected
from the group consisting of an alicyclic group, an aromatic group, and a
heterocyclic group; R23 represents a C3 to C18 alkyl group, a C3 to C18
alkoxyl group, a C: to C5 fluoroalkyl group, a C: to C5 fluoroalkoxyl group,
a cyano group, or a halogen atom.
CHEMINDUSTRY.RU, polyethylene glycol (2010).
The Rejection
Claims 1—10 stand rejected under 35 U.S.C. § 103 over Nishikawa in
view of Tsai, Mune and CHEMINDUSTRY.RU.
OPINION
We reverse the rejection. We need address only claim 1, the
limitations of which are required by all of the other claims. Claim 1 requires
a liquid crystal alignment agent comprising a poly(oxyalkyleneglycol)-
dialkylether compound.
NH
R 3----R2!—R 22—R
Formula (1-2)
The References
Nishikawa
Mune
Tsai
US 5,969,055 Oct. 19, 1999
US 2004/0013953 A1 Jan. 22, 2004
US 2012/0172542 A1 July 5, 2012
2
Appeal 2016-003846
Application 14/100,967
Nishikawa discloses a liquid crystal alignment agent comprising a
polyamic acid obtained by reacting at least one tetracarboxylic acid
dianhydride with at least one diamine compound in an organic solvent
(col. 2,11. 22—27). The organic solvent can be used in combination with a
poor solvent for the polyamic acid, the listed poor solvents including
diethylene glycol dimethyl ether and diethylene glycol diethyl ether (col. 14,
1. 56-col. 15,1. 3).
Tsai discloses a liquid crystal alignment agent comprising a polyamic
acid obtained by reacting a tetracarboxylic dianhydride compound with a
diamine compound (129). The diamine compound can fall within the scope
of the Appellant’s claim 1 ’s Formula (1-2) (| 38).
Mune discloses “a photosensitive polyimide resin precursor
composition capable of providing a transparent optical polyimide resin
having a small bireffingent index, which can be suitably used for optical
waveguides, optical waveguide devices, optical integrated circuits, optical
wirings, etc. as broadly used in optical communication, optical information
processing, and other general optical fields” (11). The composition
comprises 1) a polyamic acid obtained by reacting a tetracarboxylic acid
with a diamine, 2) a 1,4-dihydropyridine derivative, and 3) a dissolution
control agent and contrast enhancer which can be polyethylene glycol
dimethyl ether or polypropylene glycol dimethyl ether (|| 13, 25—29).
The Examiner finds that Mune “teaches that the polyethylene glycol
dialkyl ether can be used to control the dissolution of the resin composition
in order to obtain a uniform patterned resin film with very smooth surface
3
Appeal 2016-003846
Application 14/100,967
([0074]-[0085]) (Ans. 6—7)1 and that Mune’s disclosure that the
photosensitive polyimide resin precursor composition can be used in “other
general optical fields” (11) “is sufficient to lead one of ordinary skill in the
art to use the teachings from Mune to modify the polyimide composition of
Nishikawa” (Ans. 9—10). The Examiner concludes that “one of ordinary
skill in the art would have been motivated to use the ether as taught by ‘935
[Mune], to modify the alignment agent of ‘055 [Nishikawa], in order to
render a uniform polyimide resin based alignment film having very smooth
surface” (Ans. 7).
The Examiner does not address the differences between the types of
optical devices disclosed by Mune and liquid crystals and between Mune’s
polyimide resin precursor composition and liquid crystal alignment agents
and establish that regardless of those differences, Mune would have led one
of ordinary skill in the art, through no more than ordinary creativity, to use
Mune’s polyethylene glycol dimethyl ether or polypropylene glycol
dimethyl ether dissolution control agent and contrast enhancer in
Nishikawa’s liquid crystal alignment agent composition. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”).
1 The Examiner appears to be relying upon Mune’s disclosures that “it is
possible to control the shape of the resulting pattern by selecting the
compounding amount of the dissolution controlling agent” (| 80) and “[t]he
surface of the pattern obtained by wet etching of the photosensitive
polyimide resin precursor composition according to the invention is very
smooth, including its side surfaces” (1 83).
4
Appeal 2016-003846
Application 14/100,967
Thus, the Examiner has not set forth a factual basis which is sufficient
to support a prima facie case of obviousness of the Appellant’s claimed
invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A
rejection based on section 103 clearly must rest on a factual basis, and these
facts must be interpreted without hindsight reconstruction of the invention
from the prior art”). Accordingly, we reverse the rejection.
DECISION/ORDER
The rejection of claims 1—10 under 35 U.S.C. § 103 over Nishikawa
in view of Tsai, Mune and CHEMINDUSTRY.RU is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
5