Ex Parte Inoue et al

Patent Trial and Appeal Board

Feb 28, 2018

14678467 (P.T.A.B. Feb. 28, 2018)

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.
0553-0575.01 1276
EXAMINER
YANG, JAY
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
14/678,467 04/03/2015 Hideko Inoue
24628 7590 02/28/2018
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
02/28/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEKO INOUE, SATOSHI SEO,
and NOBUHARU OHSAWA1
Appeal 2017-005416
Application 14/678,4672
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH,
and MICHAEL G. McMANUS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
pending claims 2—19 in this application.3 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Hideko Inoue, Satoshi Seo, and Nobuharu Ohsawa are the named inventors
of the present application.
2 According to Appellants, the real party in interest is Semiconductor Energy
Laboratory Co., Ltd. (See App. Br. 1.)
3 The subject matter of pending claims 20 and 21 has been allowed by the
Examiner. (Advisory Action (mailed May 19, 2016, hereinafter “Adv.
Act.”) at 1.)
Appeal 2017-005416
Application 14/678,467
Appellants’ appealed invention relates to an “organometallic complex
that is capable of converting a triplet excited state into luminescence. In
addition, the present invention relates to a light emitting element, a light
emitting device and an electronic device which use the organometallic
complex.” (Spec. 11.) Representative claim 18 is reproduced from the
Claims Appendix to the principal Brief:
18. A compound comprising:
a structure represented by the following formula:
A.
wherein:
Ar1 represents an unsubstituted phenyl group or a phenyl group
having an alkyl group having 1 to 4 carbon atoms;
R1 is hydrogen;
R3 to R11 independently represent any one of hydrogen and an
alkyl group having 1 to 4 carbon atoms; and
M is iridium.
Appellants (see generally App. Br.) request review of the following
rejections:
I. Claims 2—5 and 7—19 are rejected under 35 U.S.C. § 103(a)
obvious over Inoue (US 2005/0221123 Al, publ. Oct. 6,
2005) .
II. Claim 6 is rejected under 35 U.S.C. § 103(a) obvious over
Inoue in view of Li (US 2006/0131562 Al, publ. June 22,
2006) .
2
Appeal 2017-005416
Application 14/678,467
OPINION4
After consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine Appellants have identified reversible error in the appealed
rejections.
The Examiner found Inoue describes an organic EL device
comprising a light-emitting layer comprising a phosphorescent metal
complex as represented by formula 18 reproduced below:
Inoue formula 18
The Examiner recognized Inoue did not explicitly disclose that R2 was
“Ar1” as required by the claimed invention. The Examiner determined it
would have been obvious to produce a structure according to the formula
recited by the claimed invention wherein Ar' = phenyl group. (Final Act. 6—
8.)
Appellants presented the Declaration of Hideko Inoue filed April 21,
2016, which provided data exhibiting the performance Ir(tppr)2(acac), a
compound representative of the claimed invention, compared to the control
4 We limit our discussion to independent claims 1 and 18.
3
Appeal 2017-005416
Application 14/678,467
comparative compound Ir(dppr)2(acac), representative of Inoue example 1
(both reproduced below).
Ir(dppr)2(acac) Ir(tppr)2(acac)
[Inoue] [claimed compound]
The Examiner determined the showing presented in the Declaration
provided evidence of unexpected results for the compounds of claims 20 and
21 and, therefore, indicated that the subject matter of claims 20 and 21 was
allowable. (See Adv. Act.) However, the Examiner determined the
evidence presented in the Declaration was insufficient to establish the genus
of compounds according to the formula of independent claims 18 and 19
patentable, due to the possible substituents for Ar' and the possible
substituents for R3 to R11 which independently represent any one of
hydrogen and an alkyl group having 1 to 4 carbon atoms. The Examiner
contends the compounds encompassed by claims 18 and 19 would have been
expected to exhibit dramatically different chemical and physical properties
than that of Ir(tppr)2(acac) because in an extreme case it could comprises ten
additional 4-carbon t-butyl groups. (Ans. 7.)
On this record, we do not find the Examiner’s reasoning persuasive.
According to Appellants, the evidence presented establishes:
[T]he structural difference between these complexes was only
found in the additional phenyl group on the pyrazine ring of
Ir(tppr)2(acac). This result was unexpected as one skilled in the
4
Appeal 2017-005416
Application 14/678,467
art would not have predicted such a large difference and
improvement in reliability of a device with the claimed
compound versus a device with the compound of Inoue ‘123, in
light of the similarities in structure between the two
compounds.
(App. Br. 9.)
The Examiner indicated that the evidence presented was sufficient to
establish the patentability of the compound of the claimed invention wherein
the structure according to the formula recited by the claimed invention
wherein Ar' is a substituted or unsubstituted phenyl group. The evidence
relied upon by Appellants describe Ir(tppr)2(acac) including a phenyl group
at Ar1, that is included within the scope of claims 18 and 19, which results in
the unexpected results. The Examiner has not directed us to technical
evidence to support the hypothesis that compounds encompassed by claims
18 and 19 (which must include a phenyl group) would exhibit dramatically
different chemical and physical properties. In making an obviousness
determination, the Examiner should consider the number of variables which
must be selected or modified, and the nature and significance of the
differences between the prior art and the claimed invention. See, e.g., In re
Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) (reversing obviousness rejection
of novel dicamba salt with acyclic structure over broad prior art genus
encompassing claimed salt, where disclosed examples of genus were
dissimilar in structure, lacking an ether linkage or being cyclic). In the
present case, Appellants have produced evidence comparing the closest
embodiment of Inoue (Ir(dppr)2(acac) that does not include a phenyl group
at Ar1) to the claimed invention (Ir(tppr)2(acac) including a phenyl group at
Ar1). The Examiner has not identified in Inoue other species that are closer
to the claimed invention. The Examiner also has not provided a technical
5
Appeal 2017-005416
Application 14/678,467
explanation why the compounds of claims 18 and 19 which all require
Ir(tppr)2(acac) including a phenyl group at Ar' would have been expected to
have divergent properties.
The Examiner has not directed us to an adequate basis for combining
the teachings of Inoue and Li as proposed. Accordingly, we reverse the
rejection of claim 6.5
Accordingly, for the foregoing reasons we reverse the Examiner’s
decision to reject claims 2—19.
DECISION
The appealed rejections of claims 2—19 are reversed.
REVERSED
5 The additional reference relied upon by the Examiner in the obviousness
rejection was cited to address limitations of dependent claim 6 that are not
related to our discussion of the independent claims.
6