Ex Parte Shi et al

Patent Trials and Appeals Board

Mar 27, 2019

14822918 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/822,918 08/11/2015
21364 7590 03/27/2019
US ARMY RESEARCH LABORATORY
ATTN: RDRL-LOC-1
2800 POWDER MILL RD
ADELPHI, MD 20783-1138
FIRST NAMED INVENTOR
Jianmin Shi
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.
ARL 14-57 1607
EXAMINER
STOCKTON, LAURAL YNNE
ART UNIT PAPER NUMBER
1626
MAIL DATE DELIVERY MODE
03/27/2019 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 JIANMIN SHI, JOHN MATTHEW CHUDOMEL,
and ERIC WILLIAM FORSYTHE 1
Appeal2018-001537
Application 14/822,918
Technology Center 1600
Before RICHARD M. LEBOVITZ, JOHN N. NEW, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to an aromatic benzotriimizole.
The Examiner rejected the claims under 35 U.S.C. §§ 112, 102, and 103.
Pursuant to 35 U.S.C. § 134, Appellant appeals the Examiner's
determination that the claims are unpatentable. We have jurisdiction for the
appeal under 35 U.S.C. § 6(b ).
The Examiner's decision is AFFIRMED.
1 Appellants identify Penn State Research Foundation as the real party in
interest in the Appeal Brief, filed Aug. 31, 2017 ("Br."). Br. 1.
Appeal2018-001537
Application 14/822,918
STATEMENT OF THE CASE
The claims stand rejected by the Examiner as follows:
1. Claim 5 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written description
requirement. Ans. 4.
2. Claims 2 and 4--17 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as indefinite for failing to particularly point
out and distinctly claim the subject matter which the inventor or a joint
inventor, or for pre-AIA the applicant regards as the invention. Ans. 6.
3. Claims 8 and 9 under 35 U.S.C. § 112(d) or pre-AIA 35 U.S.C.
§ 112, 4th paragraph, as in improper dependent form for failing to further
limit the subject matter of the claim upon which it depends, or for failing to
include all the limitations of the claim upon which it depends. Ans. 7.
4. Claims 2, 4, 16 and 17 under 35 U.S.C. § 102(a)(l) as anticipated
by Kosuga et al., JP 2008/127314 A. Ans. 8. The Examiner provided an
English translation, which is referred to in the Final Office Action and
Answer, and in this Decision, as "Kosuga."
5. Claims 2, 4, 16 and 17 under 35 U.S.C. § 103 as obvious in view
of Kosuga. Ans. 11.
Claim 2, the only independent claim on appeal, is reproduced below:
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Appeal2018-001537
Application 14/822,918
2. An aromatic benzotriimizole compound of Formula I:
Formula I
wherein,
R 1 is independently H, alkyl or aryl, wherein alkyl and
the substitutions of aryl can include alkyl substituted with a
reactive moiety; and
R2 is independently chloro, fluoro, bromo or cyano, or
wherein R2 is aryl.
REJECTIONS UNDER 35 U.S.C. § 112
Appellants responded to all of the 35 U.S.C. § 112 rejections by
stating that the claims had been amended or cancelled to address the
rejections. Br. 5. However, the Examiner explained in the Answer that the
Amendments filed by Appellants after the Final Office Action were not
entered. Ans. 17. The Examiner therefore maintained all rejections because
the last entered amendment did not correct the wording in the claims
identified by the Examiner as making them defective under 35 U.S.C. § 112.
Ans. 17-19. Consequently, we affirm the 35 U.S.C. § 112 rejections of
claim 2 and 4--17 for the reasons set forth by the Examiner. Final Act. 3-11;
Ans. 4--7.
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Appeal2018-001537
Application 14/822,918
REJECTION UNDER 35 U.S.C. § 102
The Examiner rejected claims 2, 4, 16, and 17 as anticipated by
Kosuga. The Examiner found that Kosuga describes Compound A45 which
anticipates the claimed Formula I compound. Final Act. 12-13.
Appellants contend that the claims were amended to overcome the
rejection. Br. 6.
The amendment was not entered, and consequently the Examiner
maintained the rejection. Ans. 19-21.
For the reasons set forth by the Examiner, the anticipation rejection of
claims 2, 4, 16, and 1 7 is affirmed.
REJECTION UNDER 35 U.S.C. § 103
The Examiner found that the claimed compounds are generically
described in Kosuga. Final Act. 17-20. The Examiner explained why it
would have been obvious to one of ordinary skill in the art to select the
variable structures described in Kosuga to have arrived at a compound
within the scope of claim 2. Id. at 20. The Examiner stated that it would
have been reasonably expected that structurally similar compounds would
possess similar properties, such as being useful in electroluminescence
devices. Id.
Appellants argue:
[O]ne of ordinary skill would not have been able to predict the
results from using the Appellant's disclosed compounds without
the benefit of an impermissible hindsight analysis. Even with
structurally similar compounds, it is not obvious that these
similarities will prove beneficial as taught by the Appellant's
disclosure. Benefits such as luminous efficiency, brightness
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Appeal2018-001537
Application 14/822,918
Br. 8.
degradation by prolonged luminescence cannot be determined
by structural similarities alone.
This argument is not persuasive. Kosuga teaches the organic
compounds defined by the disclosed structural formulae display high-
intensity luminescence and other properties that make them useful as organic
light emitting elements. Kosuga ,r,r 6, 7, 15, and 18. Appellants have not
provided any reason as to why compounds having such structure would not
have the properties disclosed by Kosuga. As stated by the Examiner:
Homologues are of such close structural similarity that the
disclosure of a compound renders prima facie obvious its
homologue. As was stated in In re Grose, 201 USPQ 57
([CCPA] 1979), page 63, "[t]he known structural relationship
between adjacent homologues, for example, supplies a chemical
theory upon which a prima facie case of obviousness of a
compound may rest." The homologue is expected to be
preparable by the same method and to have generally the same
properties.
Ans. 15.
Br. 9.
Appellants also argue:
Examiner is using a hindsight analysis to arrive at Appellant's
invention since the Examiner has not explicitly stated a
rationale for why the inventor of Kosuga[] would want or need
to modify their invention or look for additional compounds.
Now here in Kosuga is there found any reference to a need for
additional compounds.
This argument does not persuade us that the Examiner erred in
rejecting the claims as obvious. As explained by the Examiner, compounds
which fall within the scope of claim 2 are either anticipated or embraced by
Kosuga's generic formula. Final Act. 22-23; Ans. 12-16. To the extent that
a particular species within the scope of claim 2 is not specifically named by
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Appeal2018-001537
Application 14/822,918
Kosuga, the Examiner explained it would have been obvious to have chosen
it from Kosuga' s generic formula because Kosuga considered all organic
compounds within the disclosed genus of compounds to possess high-
intensity luminescence. Kosuga ,r,r 6, 7, 15, and 18. Appellants have not
identified any reason why it would not have been obvious to select the
structural groups, specifically identified by Kosuga in its generic formula, to
have arrived at a compound within the scope of claim 2. Appellants have
also pointed to no evidence of record to show that the Examiner used
knowledge that could have been gleaned only from Appellants'
Specification. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
For the reasons set forth by the Examiner, the obviousness rejection of
claims 2, 4, 16, and 17 is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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