Kouki Sagou et al.

Patent Trials and Appeals BoardOct 11, 2019

13806146 - (D) (P.T.A.B. Oct. 11, 2019)

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. 13/806,146 12/21/2012 Kouki Sagou 38672-US-1002-PCT 7980 31561 7590 10/11/2019 JCIPRNET P.O. Box 600 Taipei Guting Taipei City, 10099 TAIWAN EXAMINER MALLOY, ANNA E ART UNIT PAPER NUMBER 1722 NOTIFICATION DATE DELIVERY MODE 10/11/2019 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): Belinda@JCIPGROUP.COM USA@JCIPGROUP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KOUKI SAGOU and YASUHIRO HASEBA ____________ Appeal 2018-008781 Application 13/806,146 Technology Center 1700 ____________ Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 16, 17, and 33–65. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as JNC Corporation and JNC Petrochemical Corporation. Appeal Br. 1. Appeal 2018-008781 Application 13/806,146 2 The invention relates to a compound of a specific formula used as a liquid crystal compound and a liquid crystal medium for optical elements. Spec. ¶ 1. Claim 16 is illustrative of the inventive compound and we refer to the Claims Appendix for the text of the claim. Appeal Br. 11–12 (Claims App.). Independent claim 33 is also directed to a compound similar to claim 16’s compound. Appellant requests review of the following rejections from the Examiner’s Final Office Action:2 I. Claims 16, 17, and 33–65 rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Haseba ’681 (WO 2010/058681 A1, published May 27, 2010, and relying on US 2011/0242473 A1 to Haseba (hereinafter Haseba ’473), published October 6, 2011, as the English equivalent) and Osawa (US 4,997,942, issued March 5, 1991). II. Claims 16, 17, 33–42, 44, and 45 rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Matsui (US 5,858,270, issued January 12, 1999), as evidenced by Osawa. III. Claims 16, 17, and 33–65 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Haseba ’157 (US 2009/0059157 A1, published March 5, 2009) and Osawa. As a preliminary matter, the Examiner relies on Haseba ’681, Matsui, and Haseba ’157 as primary references in separate rejections for the same proposition, that of teaching a compound useful in liquid crystal compositions having a branched terminal group, where the compound is structurally similar to the claimed compound but differs from the claimed compound in that it lacks a branched alkyl group represented by formula 2 The Examiner withdrew the rejections based on the ground of nonstatutory double patenting. Ans. 24. Appeal 2018-008781 Application 13/806,146 3 (CHN-1-1). Final Act. 7, 16–17, 19–20. Appellant does not dispute the Examiner’s specific finding with respect to the noted primary references. See generally Appeal Br. Further, the Examiner further relies on the same secondary reference to Osawa to overcome the deficiencies of the primary references. See generally Final Act. Therefore, we find the primary references and the rejections based on these references to be cumulative. Accordingly, we limit our discussion to Rejection I3, based on Haseba ’681 and Osawa, as representative of the Examiner’s position with the understanding that our discussion of this rejection applies equally to all rejections. OPINION Appellant does not argue any claim separate from the other. See generally Appeal Br. Accordingly, we select independent claim 16 as representative of the subject matter claimed. Claims 17 and 33–65 stand or fall with claim 16. After review of the respective positions the Appellant provides in the Appeal and Reply Briefs and the Examiner provides in the Final Action and the Answer, we affirm the Examiner’s prior art rejections of claims 16, 17, and 33–65 for the reasons the Examiner presents. We add the following for emphasis. Claim 16 (Rejection I) The Examiner finds, and Appellant does not dispute, that Haseba ’681 teaches a compound useful in liquid crystal compositions having a branched 3 We note that Rejection I addresses all claims presented for review on appeal. Appeal 2018-008781 Application 13/806,146 4 terminal group, where the compound is structurally similar to the claimed compound but differs from the claimed compound in that it lacks a branched alkyl group represented by formula (CHN-1-1). Final Act. 7. The Examiner finds that Osawa teaches that a liquid crystal composition comprising a compound having a branched alkyl group would effectively lower the melting point of the liquid crystals compared with those containing a straight chain alkyl group. Final Act. 8; Osawa col. 9, ll. 46–51. The Examiner determines that it would have been obvious to one of ordinary skill in the art to arrive at the claimed invention from the combined teachings of the cited art because (1) Haseba ’681 teaches straight and branched alkyl are equivalent and branched alkyls provide good compatibility with other liquid crystal compounds and (2) Osawa teaches branched alkyls lower the melting point of the liquid crystals. Final Act. 8; Haseba ’681 ¶¶ 35, 130; Osawa col. 9, ll. 46–51. Appellant argues that there is evidence pointing to Osawa’s statement that “a branched terminal alkyl lowers the [melting point]” as not a general case. Appeal Br. 8 (emphases omitted). That is, Appellant contends that there is evidence demonstrating that a branched terminal alkyl will not always lower the melting point and, thus, the Examiner has no basis for combining the teachings of the cited art. Id. In view of this, Appellant also asserts that the evidence demonstrates that the 2-position branching of the terminal alkyl/alkenyl is unexpectedly particularly effective in lowering melting point as compared to branching at the other positions. Id. at 8–9. We note that the evidence Appellant discusses in support of the stated assertions are statements from the secondary reference to Osawa (see Appeal 2018-008781 Application 13/806,146 5 generally Appeal Br.) and a Table 7’4 submitted in a response dated October 3, 2016 (hereinafter “Response”) (Appeal Br. 7). According to Appellant, the data of Table 7’ shows that the 2-position branched compound (7-1) of the claimed invention has a melting point lower by more than 10°C as compared to i) the straight-terminal compound ref. G-1) after eliminating the even-odd effect and ii) the straight-terminal compound ref. G-2) having the same total carbon number of terminal alkyl as the 2-position branched compound (7-1) of the claimed invention. Response 19. Appellant further contends that the data of Table 7’ show that compounds ref. G-3) to ref. G- 5), having terminal alkyl groups branch at different positions, all adversely have higher melting points as compared to the straight terminal compound ref. G-1) or ref. G-2). Id. Therefore, Appellant asserts that the claimed compound having a terminal group branched at 2-position carbon unexpectedly lowers the melting point. Id. Appellant’s arguments and data are not persuasive of reversible error in the Examiner’s determination of obviousness. The burden of establishing unexpected results rests on the Appellant. Appellant may meet this burden by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence; attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope 4 Table 7’ is not presented as part of any declaration evidence. Appeal 2018-008781 Application 13/806,146 6 with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). We first note that Appellant’s statement in the Appeal Brief that the Examiner has “ignored the clarification that the showing that Osawa’s statement is not a general case is not an unexpected effect of this invention but is actually a basis of unexpectability of the real unexpected effect of this invention” (emphasis added) (Appeal Br. 8) appears inconsistent because it is not clear if Appellant is asserting unexpected results. Further, Appellant’s comparison is limited to a single inventive compound (7-1). Appellant has not explained why this compound is representative of the broad scope of compounds claimed. In addition, there is no recognition in the Specification that alkyl group branchings at the 2-position unexpectedly lower the melting point of compounds. In fact, the Specification describes that “[a]s compared to the straight-chain compounds, a compound having an alkyl group branching at 2-, 3-, 4- or 1-position, such as the groups (CHN 1-1) to (CHN 1-9), has a quite low melting point.” Spec. ¶ 84. Without further explanation of what Appellant is doing that is different from Osawa, the statement in the Specification appears to be just as general as Osawa’s statement. Thus, on this record, Appellant has not adequately explained why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims. Appellant’s arguments that Osawa does not teach a specific example at the 2-position or that the lowering of a melting point depends on the branching position are also unavailing for the reasons the Examiner provides. Ans. 26–27. Further, as noted above, the Specification does not Appeal 2018-008781 Application 13/806,146 7 recognize any advantage of placing an alkyl branching group in the 2- position either. Spec. ¶ 84. Appellant additionally argues that one of ordinary skill in the art would not have been motivated to make the 2-branched alkyl R1 of Osawa’s compound directly bond to a ring because Osawa limited the R1 group to be bonded via the –O–. Appeal Br. 9. This argument is also unavailing because, as the Examiner notes, Osawa suggests that bonding an alkyl branched group R2 directly to the ring also lowers the melting point. Ans. 30. Thus, Appellant has not distinguished the claimed invention from the teachings of the cited art. Accordingly, we affirm the Examiner’s prior art rejections of claims 16, 17, and 33–65 under 35 U.S.C. § 103(a) for the reasons the Examiner presents and we provide above. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 16, 17, and 33–65 103(a) Haseba ’681, Osawa 16, 17, and 33–65 16, 17, 33– 42, 44, and 45 103(a) Matsui, Osawa 16, 17, 33–42, 44, and 45 16, 17, and 33–65 103(a) Haseba ’157, Osawa 16, 17, and 33–65 Overall Outcome 16, 17, and 33–65 Appeal 2018-008781 Application 13/806,146 8 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)(1). AFFIRMED