Ex Parte Stoessel et al

Patent Trials and Appeals BoardSep 10, 2014

11718692 - (D) (P.T.A.B. Sep. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/718,692 05/04/2007 Philipp Stoessel 14113-00095-US 9212 23416 7590 09/10/2014 NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP (DE OFFICE) 1875 EYE STREET, N.W. SUITE 1100 WASHINGTON, DC 20006 EXAMINER CLARK, GREGORY D ART UNIT PAPER NUMBER 1786 MAIL DATE DELIVERY MODE 09/10/2014 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 PHILIPP STOESSEL, ESTHER BREUNING, HORST VESTWEBER, and HOLGER HEIL Appeal 2012-012025 Application 11/718,692 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, GRACE KARAFFA OBERMANN, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-012025 Application 11/718,692 2 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134 from the final decision rejecting claims 27–31, 33, 35, 36, 39–46, 53, and 54.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER Appellants’ invention is directed to an organic electronic device comprising a cathode, an anode, and a layer containing at least one atropisomeric organic compound which is capable of forming diastereomers (Spec. p. 4, ll. 21–24). An atropisomeric compound is a compound which exhibits stereoisomerism because of hindered rotation about a single bond (Spec. p. 2, ll. 20–22). Independent claim 27, the sole independent claim on appeal, is representative of the claims on appeal, and is reproduced below from the Claims Appendix to the Brief (key claim limitation in italics): 27. An organic electronic device comprising cathode, anode, and at least one layer, said at least one layer comprising at least one atropisomeric organic compound, wherein said at least one atropisomeric organic compound capable of forming diastereomers has an atropisomeric excess of at least 70 %, and wherein said at least one atropisomeric organic compound comprises one or more single bonds having an activation energy for rotation about said one or more single bonds of at least 140 kJ/mol. 1 The real party in interest is Merck Patent GmbH (Br. 1). 2 The Examiner’s initial recitation of the rejection being appealed does not include claim 39 as one of the rejected claims (see, Ans. 4). However, in the Answer, the Examiner provides a rationale for rejecting claim 39 (Ans. 9), and Appellants believe that claim 39 stands rejected (Br. 3). Accordingly, we assume that the omission of claim 39 from the Examiner’s original statement of rejection was an error, and that claim 39 stands rejected. Appeal 2012-012025 Application 11/718,692 3 REJECTIONS Claims 27–31, 33, 35, 36, 39–46, 53, and 54 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yong3 in view of Shi,4 as evidenced by Garner.5 The Examiner finds, and Appellants do not dispute, that Yong teaches each of the limitations of claim 27, except that Yong does not disclose (1) its atropisomeric compound comprises one or more single bonds having an activation energy for rotation about said single bond of at least 140 kJ/mol, and (2) its compound has an atropisomeric excess6 of at least 70% (Ans. 5–6). With respect to difference (1) above, the Examiner finds that Yong teaches a diaryl compound which would inherently show atropisomeric properties and which would inherently have two restricted rotation single bonds with activation energies for rotation of at least 140 kJ/mol (Ans. 6, 12). We agree with Appellants (see, generally, Br. 3–4) that the Examiner has not demonstrated that Yong inherently discloses a compound meeting this limitation. As set forth in some detail in Appellants’ Brief at pages 3–4, the evidence of record7 shows that atropisomeric compounds can have activation energies for rotation of less than 140 kJ/mol. 3 Yong et al. CN 1362464 A, published July 8, 2002. 4 Shi et al., EP 0 952 200 A2, published October 27, 1999. 5 Garner et al., Preconditions for Axial Chirality and Mechanisms of Atropisomerization, 44 ANGEW. CHEM. INT. ED. 5384–5427 (2005). 6 “Atropisomeric excess” is defined in the Specification as (molar proportion of the isomer in excess) – (molar proportion of the isomer not in excess) x 100 (Spec. 9). A slightly different definition for compounds which can form more than two atropisomers is also provided (id.). 7 E.g., Garner, and LaPlante et al., Revealing Atropisomer Axial Chirality in Drug Discovery, 6 CHEMMEDCHEM 505–513 (2011). Appeal 2012-012025 Application 11/718,692 4 The principles of inherency may be applied in an obviousness analysis. See, e.g., Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1369 (Fed. Cir. 2012). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999), quoting Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). In this instance, Appellants have demonstrated that atropisomeric compounds can have activation energies which are outside the claimed range of greater than 140 kJ/mol. Despite this evidence, the Examiner has not provided a persuasive explanation of why this claim limitation would have been inherent in the cited art (i.e., why the compound disclosed by Yong would have necessarily have had an activation energy within the claimed range). Accordingly, we reverse the obviousness rejection of claim 27, and of each of the remaining claims on appeal, which depend from claim 27 and, therefore, include the same limitation.8 8 Appellants also argue that the atropisomeric excess limitation would not have been obvious over the cited art (Br. 4–5). Because we determine that the Examiner erred in finding that Yong inherently disclosed the activation energy limitation, we do not address the atropisomeric excess limitation. Appeal 2012-012025 Application 11/718,692 5 CONCLUSION We REVERSE the rejection of claims 27–31, 33, 35, 36, 39–46, 53, and 54 under 35 U.S.C. § 103(a) as being unpatentable over Yong in view of Shi, as evidenced by Garner. REVERSED cdc