Ex Parte SAITO et al

Patent Trials and Appeals Board

Jun 20, 2019

14566711 - (D) (P.T.A.B. Jun. 20, 2019)

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.
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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.
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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.
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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
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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
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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
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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
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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
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