Ex Parte Schadt et al

Patent Trial and Appeal BoardAug 21, 2014

11392714 (P.T.A.B. Aug. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MARTIN SCHADT, HUBERT SEIBERLE, and OLIVIER MULLER ________________ Appeal 2012-011958 Application 11/392,714 Technology Center 1700 ________________ Before TERRY J. OWENS, MARK NAGUMO, and GEORGE C. BEST, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from Examiner’s rejection of claims 24-28 and 30-36. We have jurisdiction under 35 U.S.C. § 6(b). The Invention Appellants claim 1) a material for preparing an orientation layer for a liquid crystal medium, 2) an orientation layer containing the material, 3) a device containing the orientation layer, and 4) a method for making the orientation layer. Claim 24 is illustrative: Appeal 2012-011958 Application 11/392,714 2 24. A material for the preparation of a photo-orientable orientation layer for a liquid crystal medium, the material being a mixture and comprising a first substance that is orientable and cross-linkable by the action of linearly polarized light and in which an angle of tilt with a defined direction can be generated in a single irradiation step by the action of linearly polarized light irradiated obliquely and at least one additional substance, wherein the at least one additional substance is a polyimide or a polyamic acid. The References Mueller US 4,803,147 Feb. 7, 1989 Takenaka US 5,786,041 July 28, 1998 Han US 6,027,772 Feb. 22, 2000 Takahashi US 2007/0126966 A1 June 7, 2007 Kim GB 2 310 934 A Sep. 10, 1997 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 24, 26-28, and 33-36 over Han in view of Kim, claim 25 over Han in view of Kim and Takenaka, claims 30-32 over Han in view of Kim and Mueller and claims 24-28 and 30-35 over Mueller in view of Kim. OPINION We affirm the rejections over Han in view of additional references and reverse the rejection over Mueller in view of Kim. Appeal 2012-011958 Application 11/392,714 3 Rejections over Han in view of additional references Appellants argue the rejections over Han in view of additional references as a group (App. Br. 11-15, 17-18).1 We therefore limit our discussion to one claim, i.e., claim 24. Claims 25-28 and 30-36 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Han discloses a liquid crystal display optical alignment composition comprising poly(vinylcinnamate) and a polyimide (col. 1, ll. 7-11; col. 2, ll. 6-9, 16-19, 55-59). Appellants argue that “[t]he process of Han uses a single irradiation step with non-polarized UV-light, which is not obliquely incident to the substrate” (App. Br. 10). That argument is irrelevant because Appellants claim a material, not a process for using irradiation to align it. Appellants argue that Han’s poly(vinylcinnamate) has a pretilt angle of no more than 0º (col. 1, ll. 54-59).2 The ability of Appellants’ first substance to have an angle of tilt with a defined direction generated in a single irradiation step by the action of linearly polarized light irradiated obliquely is a property of the first substance. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing”). Appellants do not argue that Han’s poly(vinylcinnamate) lacks that property. Appellants state that 1 Although Appellants address claims 25, 30-32, 35, and 36 under separate headings, Appellants do not provide a substantive argument as to the separate patentability of those claims (App. Br. 17-18). 2 Han also discloses, in Comparative Example 5, a poly(vinylcinnamate) pretilt angle of “nearly 0º” (col. 4, ll. 6-7, 16-17). Appeal 2012-011958 Application 11/392,714 4 “Appellants, who have been active in the field of photoalignment materials for many years, are not aware of any disclosure which indicates that the photopolymerizable compounds used in the composition of Mueller are photoalignable” (App. Br. 16). Appellants make no such statement regarding Han. Thus, we are not persuaded of reversible error in the rejections over Han in view of additional references. Rejection over Mueller in view of Kim Mueller discloses a photosensitive composition comprising “a mixture of a solvent soluble aromatic polyimide and an aromatic dianhydride and an aromatic primary diamine, a photoinitiator and a photopolymerizable compound containing at least two terminal ethylenically unsaturated groups” (col. 2, ll. 11-16). The composition can be used as a liquid crystal display orientation layer wherein orientation is effected by brushing or rubbing the layer in one direction (col. 13, ll. 42-45, 60-63). Kim discloses a liquid crystal cell which includes one substrate coated with a rubbed alignment layer and another substrate coated with a photo- aligned alignment layer (p. 1). The rubbed alignment layer can be a polyimide and the photo-aligned alignment layer can be a polysiloxane- based material such as a polysiloxane cinnamate (pp. 7, 10-12). Appellants argue that Mueller’s composition is not photoalignable (App. Br. 16). Examiner argues that Mueller discloses “a first substance that is orientable and cross-linkable by the action of linearly polarized light (see column 6, line 25, Example 1, see Examples 25-29, where the compound above is polyacrylate), and at least one additional substance, wherein the at Appeal 2012-011958 Application 11/392,714 5 least one additional substance is a polyimide and its mixtures (see Abstract)” (Ans. 7-8). Examiner has not established that Mueller’s composition is photoalignable. The light referred to by Examiner is used for preparing the polymer, not for photoaligning it (col. 6, ll. 18-25; col. 7, ll. 26-33). Examiner relies upon Kim only for a disclosure of using oblique irradiation for photoalignment (Ans. 9). Examiner, therefore, has not set forth a factual basis which is sufficient to support a conclusion of prima facie obviousness of Appellants’ claimed invention over Mueller in view of Kim. 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”). DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 24, 26-28, and 33-36 over Han in view of Kim, claim 25 over Han in view of Kim and Takenaka and claims 30-32 over Han in view of Kim and Mueller are affirmed. The rejection under 35 U.S.C. § 103 of claims 24-28 and 30-35 over Mueller in view of Kim is reversed. It is ordered that Examiner’s decision 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). AFFIRMED lp