Ex Parte SAITO et alDownload PDFPatent Trials and Appeals BoardJun 20, 201914566711 - (D) (P.T.A.B. Jun. 20, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/566,711 12/11/2014 31561 JCIPRNET 7590 P.O. Box 600 Taipei Guting Taipei City, 10099 TAIWAN 06/24/2019 FIRST NAMED INVENTOR MASA YUKI SAITO 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. 54802-US- l 002 9195 EXAMINER MALLOY, ANNA E ART UNIT PAPER NUMBER 1722 NOTIFICATION DATE DELIVERY MODE 06/24/2019 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): USA@JCIPGROUP.COM Belinda@JCIPGROUP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASA YUKI SAITO and YOSHIMASA FUR US A TO 1 Appeal2018-003319 Application 14/566,711 Technology Center 1700 Before BEYERL YA. FRANKLIN, N. WHITNEY WILSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. § 134(a) of the Examiner's final decision rejecting claims 22-26. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). STATEMENT OF THE CASE Claim 22 is illustrative of Appellants' subject matter on appeal and is set forth below: 22. A liquid crystal composition, having a negative dielectric anisotropy, and consisting of liquid crystal compounds selected from a compound represented by formula ( 1) as a first 1 Appellants identify the real parties in interest as Masayuki Saito and Yoshimasa Furusato, the inventors named in the subject application, and JNC Corporation, the assignee of record. App. Br. 1. Appeal 2018-003319 Application 14/566,711 component, a compound represented by formula (2) as a second component, compounds represented by formula (3) as a third component, compounds represented by formula ( 4) as a fourth component, and compounds represented by formula ( 5) as a fifth component, wherein a proportion of the first component is in a range of 10 wt% to 25 wt% based on a weight of the liquid crystal composition: and in formula (3), R1 and R2 are independently alkyl having 1 to 12 carbons, alkoxy having 1 to 12 carbons or alkenyl having 2 to 12 carbons; in formula (4), R3 and R4 are independently alkyl having 1 to 12 carbons, alkoxy having 1 to 12 carbons or alkenyl having 2 to 12 carbons; ring A is 1,4-cyclohexylene or 1,4-phenylene; in formula (5), R5 and R6 are independently alkyl having 1 to 12 carbons, alkoxy having 1 to 12 carbons or alkenyl having 2 to 12 carbons; ring B and ring C are independently 1,4-cyclohexylene, 1,4-cyclohexenylene, 1,4-phenylene, or 1,4-phenylene in which at least one hydrogen has been replaced by fluorine or chlorine; Z1 and Z2 are independently a single bond, ethylene, carbonyloxy or methyleneoxy; p is 1, 2 or 3; q is O or 1; and the sum of p and q is 3 or less. 2 Appeal 2018-003319 Application 14/566,711 THE REJECTION 1. Claims 22-26 are rejected under 35 U.S.C. § 103 as being unpatentable over Furusato et al. (WO 2013/125379 Al; publ. Aug. 29, 2013, hereafter "Furusato") (note: Furusato et al. (US 2014/0097383 Al; publ. Apr. 10, 2014) is used as the English translation). ANALYSIS For purposes of this appeal, we address separately argued claims, and the remaining claims stand or fall with the argued claims, consistent with 37 C.F.R. § 4I.37(c)(l)(iv) (2017). Based upon Appellants' argument, we thus consider claim 1 in this appeal. Upon consideration of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports the Examiner's findings and conclusion that the subject matter of Appellants' claims is unpatentable over the applied art. Accordingly, we sustain the Examiner's rejection on appeal for essentially the reasons set forth in the Final Office Action and in the Answer, which we adopt as our own, and affirm. We add the following for emphasis. We refer to Appellants' arguments made in the Appeal Brief and adopt the Examiner's stated response thereto as made in the Answer as our own. 3 Appeal 2018-003319 Application 14/566,711 In the Reply Brief, Appellants argue that with regard to the Examiner's stated response made on pages 8-11 of the Answer2, that although the foregoing advantages may serve as a motivation to combine compounds represented by formulae (1 }-(3), one skilled in the art cannot unambiguously select specific compounds from formulae (l}-(3) that is identical to the claimed combination. Appellants submit that, in other words, the said advantages merely provide a motivation for an artisan to combine arbitrary compounds from formulae (l}-(3) without enlightening the artisan to select specific compounds from formulae ( 1 }-(3) for combination. Reply Br. 2. Appellants argue that none of the examples in Furusato explicitly disclose the specific combination as recited in Appellants' claim 22 and claim 24. Reply Br. 2. 2 Therein, the Examiner recognizes that Furusato does not teach a specific example of a composition consisting of the claimed compounds, and states that Appellants' claimed combination may be easily derived from formulae (1)-(3) of Furusato. Specifically, the Examiner states that "Furusato teaches one of the aims of the invention is to provide a liquid crystal composition satisfying at least one of characteristics such as a high maximum temperature of a nematic phase, a low minimum temperature of the nematic phase, a small viscosity a suitable optical anisotropy, a large negative dielectric anisotropy, a large specific resistance, a high stability to ultraviolet light, a high stability to heat, a large elastic constant and a small ratio of viscosity to an elastic constant [001 OJ. The Examiner also states that Furusato teaches compounds of formula (1) decrease the viscosity or increase the elastic constant, compound (2) increases the absolute value of dielectric anisotropy or decreases the minimum temperature, compound (3) decreases the viscosity or increase the maximum temperature [0046]." Based on the foregoing, the Examiner concludes that "one of ordinary skill in the art would have a reason to choose Appellant's claimed compounds based on the entire teachings of Furusato with a reasonable expectation of success." Ans. 8-11. 4 Appeal 2018-003319 Application 14/566,711 Appellants further argue that because Furusato fails to utilize compounds that are identical to the claimed ingredients in the example thereof, it is deemed Furusato fails to realize the unexpected results (shown in the 3 7 CPR 1.13 2 declaration submitted on January 16, 2017) that may be brought by the specific combination as recited in Appellants' claims 22 and 24. Reply Br. 2-3. Appellants submit that without considering the teachings of the present application, there is no particular motivation to select specific compounds from formulae (1 }-(3) of Furusato to arrive at Appellants' claims 22 and 24. Reply Br. 3. Appellants deem the Examiner's assertion in which the specific combination may be motivated by a generalization of advantages was a hindsight reconstruction of the claimed invention after knowing the inventors' own teachings and results, and modifying Furusato in way that would not have been obvious at the time of the invention. Id. We are unpersuaded by the aforementioned arguments and agree with the Examiner's stated position in the record. It is well settled that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("all disclosures" of the prior art "must be considered", affirming obviousness of composition selected from among more than 1,200 compositions disclosed in patent); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417--418 (2007) (The predictable use of prior art elements or steps according to their established function is ordinarily obvious; further, the "inferences and creative steps that a person of ordinary skill in the art would employ" can be taken into account). "A person of ordinary skill is also a 5 Appeal 2018-003319 Application 14/566,711 person of ordinary creativity, not an automaton." Id. at 421. With regard to the declaration evidence, we are in agreement with the Examiner's position as presented on pages 19-22, and for the reasons stated therein, are unpersuaded by the declaration evidence. On pages 11-17 of the Examiner's Answer, the Examiner states that "formula ( 1) is narrowed to be selected from 3 sub formulas [ 001 7], formula (2) is narrowed to be selected from 19 sub formulas [0024], and formula (3) is narrowed to be selected from 12 sub formulas [0032]. The number of options for compounds (1 ), (2), and (3) are limited such that one of ordinary skill in the art would envisage the claimed invention based on routine experimentation." The Examiner further concludes that "the obvious to try rationale is proper because the possible options are known and finite." For the reasons stated by Appellants on pages 3--4 of the Reply Brief, Appellants submit that the obvious to try rationale is not appropriate in the instant case. Appellants also argue that because there are too many possible options, an artisan is likely to find a combination different from the claimed combination that may already fulfill the goal or advantage as proposed by Furusato. Reply Br. 4. Under this circumstance, Appellants argue that an artisan is unlikely to continue the experiment to arrive at the claimed combination. We are unpersuaded by this line of argument for the reasons provide by the Examiner in the record. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a reference "discloses a multitude of effective combinations does not render any particular formulation less obvious."); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) ( obviousness rejection of claims affirmed in light of prior art teaching that "hydrated zeolites will work" in detergent 6 Appeal 2018-003319 Application 14/566,711 formulations, even though "the inventors selected the zeolites of the claims from among 'thousands' of compounds"); In re Susi, 440 F .2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was "huge, but it undeniably include[ d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives"). On page 14 of the Answer, the Examiner states that "in the instant case, Appellant's claim 22 and 24 recite the transitional phrase 'consisting of' which would be considered a change of proportions of Furusato by substantially the same means." Appellants submit that the phrase "consisting of' is nothing related to the so called "change of proportions." Appellants state that the utilization of the phrase "consisting of' in claims 22 and 24 limits the liquid crystal composition in these claims to only include the recited compounds. It is correct that the phrase "consisting of' limits a claim to the recited compounds. The Examiner explains on pages 14--15 of the Answer how Furusato suggests such compounds. On pages 17-19 of the Answer, the Examiner states that "the fact that Furusato teaches examples comprising additional compounds does not teach away from Appellant's claimed invention." The Examiner further states that "the examples are mere guidelines for one of ordinary skill in the art to ascertain the sought invention of Furusato but should be considered for their teachings regarding specific compounds." Appellants argue that, as mentioned above, claims 22 and 24 use the phrase "consisting of' to exclude compounds not recited therein. Appellants argue that the actual working examples of Furusato utilize compounds other than the ingredients recited in claims 22 and 24, and therefore Furusato fails to provide motivation to 7 Appeal 2018-003319 Application 14/566,711 utilize solely the compounds recited in claims 22 and 24. Reply Br. 5---6. Appellants argue that even if the examples in Furusato are merely general guidelines, an artisan is still likely to follow the path as set by the examples. Appellants argue that an artisan is unlikely to exclude certain compounds since the examples in Furusato fails to do so. Reply Br. 6. Appellants submit that Furusato teachings away from claims 22 and 24, and that a person having ordinary skill in the art would have no motivation to utilize solely the compounds recited in claims 22 and 24. We are unpersuaded by this line of argument for the reasons provided by the Examiner in the record, and reiterate that it is well settled that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). On pages 19-21 of the Answer, the Examiner states that "one of ordinary skill in the art would arrive at Appellants' claimed invention with a reasonable expectation of success regarding bulk viscosity upon routine experimentation based on the entire disclosure of Furusato." Appellants argue that none of Furusato' s working examples explicitly disclose the specific combination recited in claim 22 and claim 24, and the data presented in 3 7 CPR 1.13 2 declaration shows a significant improvement of viscosity as compared to the examples ofFurusato. Reply Br. 6-7. Appellants submit that the advantages shown in the 37 CPR 1.132 declaration is not expected by Furusato. We are unpersuaded by this line of argument. We note that the burden rests with Appellants to establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to 8 Appeal 2018-003319 Application 14/566,711 the disclosure of the closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appellants have not adequately met this burden. For example, as discussed by the Examiner in the record, Appellants have not adequately shown the results are unexpected. Ans. 21. DECISION The rejection is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation