Ex Parte Jansen et al

Patent Trial and Appeal BoardOct 4, 2018

13981704 (P.T.A.B. Oct. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/981,704 07/25/2013 23599 7590 10/09/2018 MILLEN, WHITE, ZELANO & BRANIGAN, P.C. 2200 CLARENDON BL VD. SUITE 1400 ARLINGTON, VA 22201 Axel Jansen 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-4110 2643 EXAMINER SOLOLA, TAOFIQ A ART UNIT PAPER NUMBER 1625 NOTIFICATION DATE DELIVERY MODE 10/09/2018 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 AXEL JANSEN, MATTHIAS BREMER, MICHAEL WITTEK, HELMUT HAENSEL, MALGORZATA RILLICH and JULIA SPRANG Appeal2017-007310 Application 13/981,704 Technology Center 1600 Before RICHARD M. LEBOVITZ, JEFFREY N. FRED MAN, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1,2 under 35 U.S.C. Â§ 134 involving claims to liquid- crystalline compounds. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm but designate our affirmances as new grounds of rejection. 1 Appellants identify the Real Party in Interest as MERCK PA TENT GMBH, a wholly owned subsidiary of MERCK KGAA (App. Br. 1). 2 We have considered and herein refer to the Specification of July 25, 2013 ("Spec."); Final Office Action of Aug. 3, 2016 ("Final Action"); Appeal Brief of Dec. 22, 2016 ("App. Br."); Examiner's Answer of Feb. 10, 2017 ("Ans.") and Reply Brief of Apr. 7, 2017 (Reply Br.). Appeal2017-007310 Application 13/981,704 Statement of the Case Background "Liquid-crystalline media have been used for some time in LC displays in order to display information. Compounds containing 4 or 5 rings, including an 0-heterocyclic ring and a -CF20- bridge, have already been proposed for liquid-crystalline display devices" (Spec. 1: 12-15). The inventive compounds "have a relatively high clearing point, extremely high dielectric anisotropy (Lie), high optical anisotropy (Lin) and low rotational viscosity. They have, alone or mixed with further mesogenic components, a nematic phase over a broad temperature range. These properties make them suitable for use in liquid-crystalline media" (Spec. 4:14--20). The Claims Claims 1, 3-9, 11, and 12 are on appeal. Claim 1 is representative and reads as follows: 1. A compound of formula I F ro ' S\F F F R\_}-(_~F o-0-C(-n' ~ : L in which L 1 denotes F, X denotes O or CH2, R 1 denotes an unsubstituted alkyl radical having 1 to 15 C atoms, where, in addition, one or more CH2 groups in this radical may each be replaced, independently of one another, by -O=C- -CH =CH- -CF=CF- -CF=CH- -CH =CF- -(CO)O- - ' ' ' ' ' ' O(CO)-, -(CO)- or -0- in such a way that O atoms are not linked directly to one another, and R2 denotes CF3 or OCF3. 2 l Appeal2017-007310 Application 13/981,704 The Rejections A. The Examiner rejected claims 1, 3---6, 8, 9, 11, and 12 under 35 U.S.C. Â§ I03(a) as being obvious over Haseba '923, 3 Kirsch, 4 and King 5 (Ans. 2---6). B. The Examiner rejected claim 7 under 35 U.S.C. Â§ I03(a) as being obvious over Haseba '685 6 (Ans. 2-6). C. The Examiner rejected claim 9 under 35 U.S.C. Â§ I03(a) as being obvious over Haseba '923, Kirsch, and Haseboa '252 7 (Ans. 2---6). Because the Examiner addresses the rejections in a single analysis, we will also discuss them together. The Examiner finds Haseba '923, Kirsch, and Haseba '685 teach LCD compounds that differ from the claims because a CF 3 replaces the fluorine at position R2 (Ans. 3). The Examiner finds "F and CF3 are well-known isosteres equivalents. See also the specification, page 4, line 11, wherein R2 is defined as For CF3" (id.). The Examiner also finds "King teaches that replacement of isosteres equivalents in a compound is expected to produce compounds having similar chemical properties. See King, Table 2, page 208" (id.). The Examiner finds "it would have been obvious for one of ordinary skill in the art to claim adjacent homo logs or isosteres equivalents of the compounds by [Haseba '923] or Kirsch et al., at the time the invention was 3 Haseba et al., EP 2 433 923 Al, published Mar. 28, 2012. 4 Kirsch et al., DE 103 53 658 Al, published June 9, 2004. 5 King, Bioisosteres, Conformational Restriction and Pro-drugs - Case History: An Example of a Conformational Restriction Approach, in Medical Chemistry: Principle and Practice 206-209 (1994) 6 Haseba et al., EP O 819 685 Al, published Jan. 21, 1998. 7 Haseboa et al., EP 2 028 252 Al, published Feb. 25, 2009. 3 Appeal2017-007310 Application 13/981,704 made because, such limited and obvious options are well-known in the art" (Ans. 4). The issues with respect to this rejection are: (i) Does the evidence of record support the Examiner's conclusion that the prior art renders the claims obvious? (ii) If so, have Appellants presented evidence of secondary considerations that, when weighed with the evidence of obviousness, is sufficient to support a conclusion of non-obviousness? Findings of Fact 1. Haseba '923 teaches "liquid crystal compound, which is stable to heat and light, and has a large refractive index anisotropy, a large dielectric anisotropy, and a low melting point" (Haseba '923 ,r 9). 2. Haseba '923 teaches structures for compounds including 9-20 and 9-21, reproduced below: (9-21) (Haseba '923 ,r 127). 3. Haseba '923 teaches a specific preparation of compound 9-21 reproduced below: (9-21) 4 Appeal2017-007310 Application 13/981,704 (Haseba '923 ,r 304). 4. Haseba '923 teaches that "in the formulas, R6 and X4 are defined as above; and (F) denotes hydrogen or fluorine" (Haseba '923 ,r 127). 5. Haseba '923 teaches that "in the formulas, R6 is a C1-10 alkyl, a C2-10 alkenyl, or a C2-10 alkynyl, wherein arbitrary hydrogen in the alkyl, the alkenyl and the alkynyl may be substituted with fluorine, and arbitrary -CH2- in the alkyl, the alkenyl and the alkynyl may be substituted with -0-" (Haseba '923 ,r 28). 6. Haseba '923 teaches that "in the formulas ... X4 is fluorine ... -OCF3, -OCHF2, -CF3" (Haseba '923 i128). 7. King teaches "[b ]ioisosteres, however, are substituents or groups that do not necessarily have the same size or volume, but have a similarity in chemical or physical properties which produce broadly similar biological properties" (King 207). Table 2 of King shows halogen and CF 3 as non-classical bioisosteres (see King 208, Table 2). Principles of Law This court, in reconsidering this case in bane, reaffirms that structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness, and that the burden (and opportunity) then falls on an applicant to rebut that prima facie case. In re Dillon, 919 F.2d 688,693 (Fed. Cir. 1990) (en bane). [T]he cases establish that if an examiner considers that he has found prior art close enough to the claimed invention to give one skilled in the relevant chemical art the motivation to make close relatives (homo logs, analogs, isomers, etc.) of the prior art 5 Appeal2017-007310 Application 13/981,704 compound( s ), then there arises what has been called a presumption of obviousness or a prima facie case of obviousness .... The burden then shifts to the applicant, who then can present arguments and/ or data to show that what appears to be obvious, is not in fact that, when the invention is looked at as a whole. Id. at 696. Analysis Haseba '923 teaches a specific structure for compound 9-21 that differs from the compound of claim 1 solely in the presence of a fluorine at the R2 position of claim 1 instead of a CF3 or OCF3 (FF 3). Haseba '923 also teaches a more general structure for compound 9-21 (FF 2), where the the R2 position of rejected claim 1 corresponds to the X4 position of Haseba '923 (FF 4). Haseba '923 teaches that the X4 position is fluorine ... -OCF3, -OCHF2, -CF3" (FF 6). R2 of claim 1 can be -CF3 or CF3. Therefore, we do not, and need not, rely upon the biostere theory of the Examiner or the Specification for suggesting either a CF 3 or OCF 3 at the R2 position of claim 1 because Haseba '923 itself expressly contemplates selecting either CF 3 or OCF 3 for the identical position in generic compound 9-21 (FF 2, 4, 6). We therefore do not address Appellants' arguments explaining why the biostere logic does not apply and the Specification cannot be used as prior art (see App. Br. 5-7), again because we rely upon the express teaching by Haseba '923 that the equivalent of the R2 position of claim 1 may be selected from CF3 or OCF3 (FF 6). However, because we rely upon portions ofHaseba '923 that were not identified by the Examiner, we designate our affirmances of the rejections as new grounds to allow Appellants an opportunity to address our reasoning. 6 Appeal2017-007310 Application 13/981,704 Having found that Haseba '923 provides a prima facie case of obviousness, we next tum to Appellants' arguments regarding secondary considerations, which we consider with the teachings of Haseba '923. Appellants contend that "as shown in Example 7, DUQGU-3-T has an advantageously higher value of LieÂ· compared to DUQGU-3-F (LieÂ·= 40 vs. LieÂ· = 35). This difference can likewise result in a favorable electrooptical performance of mixtures" (App. Br. 8). Appellants also contend: (id.). For DUQGU-3-0T it is in addition found that this compound has a superior phase behavior (C 61 N 93 I) compared to DUQGU-3-F (C 61 N 79 I), i.e., it exhibits a significantly broader nematic phase range (32Â°C vs. l 8Â°C). This can have a beneficial effect on the phase behavior and the useful temperature range of mixtures. A persuasive showing of unexpected results requires supporting evidence demonstrating (i) the result is, in fact, unexpected; (ii) that the result is commensurate in scope with the claim; (iii) that the result has been compared to the closest prior art; and (iv) that any improved properties represent a difference in kind, rather than simply degree, and not simply unsupported statements of fact that are not reviewable and that cannot be analyzed for comparison with the prior art. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995); Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004); In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). "It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate." Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003). 7 Appeal2017-007310 Application 13/981,704 Based on these parameters, we find the evidence does not support a finding of an unexpected result. Appellants provide no evidence that these results are unexpected, whether by way of Declaration or citation to a statement in the Specification that the results were unexpected or otherwise surprising. "It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements ... [do] not suffice." In re Soni, 54 F.3d at 750. Indeed, there is case law stating, "[ u ]nsupported statements in the specification, however, cannot support a finding of unexpected results." Tyco Healthcare Group LP v. Mutual Pharmaceutical Co., Inc., 642 F.3d 1370, 1377 (Fed. Cir. 2011). In the instant case, Appellants do not even identify statements in the Specification, unsupported or otherwise, but rather rely solely on attorney argument. However, "attorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We also find the asserted unexpected results evidence unpersuasive because even though the comparison may be with the closest prior art (see App. Br. 7), the comparison is not commensurate in scope with claim 1, which is not limited to CF 3 at the R2 position but may also comprise OCF 3 at the R2 position. In addition, claim 1 lists an extensive genus of compounds for the R 1 position, and at best, only a single member of that genus was subject to comparison. Unexpected results must be "commensurate in scope with the degree of protection sought by the claimed subject matter." In re Harris, 409 F.3d at 1344. Appellants present no evidence or reasoning to suggest that changes at the R 1 position would not impact the parameters 8 Appeal2017-007310 Application 13/981,704 tested and therefore do not establish that the results obtained would be expected to occur for the entire genus of compounds at the R 1 position. Lastly, Appellants provide no evidence that a change in Lie from 35 to 40, or a change in LieÂ· Lin from 4.5 to 5.3, represents a difference in kind sufficient to represent an unexpected result. Harris found that a "32-43% increase in stress-rupture life, however, does not represent a 'difference in kind' that is required to show unexpected results." In re Harris, 409 F.3d at 1344. Here, where the change in Lie of 5 represents an approximately 14% change in properties, and the change in LieÂ· Lin represents an approximately 18% change in properties, Appellants have not demonstrated that the results shown are unexpected. We note that Appellants provide separate headings for claims 7 and 9, but provide no specific arguments focused on the limitations of these claims. We therefore affirm these claims for the reasons given above. Conclusion of Law (i) The evidence of record supports the Examiner's conclusion that the prior art renders the claims obvious. (ii) Appellants have not presented evidence of secondary considerations that, when weighed with the evidence of obviousness, is sufficient to support a conclusion of non-obviousness. SUMMARY In summary, we affirm the obviousness rejections. Because we rely upon portions of Haseba '923 not cited by the Examiner, we designate our affirmance as a new ground pursuant to 37 9 Appeal2017-007310 Application 13/981,704 C.F.R. Â§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. AFFIRMED; 37 C.F.R. Â§ 4I.50(b) 10