MERCK PATENT GMBHDownload PDFPatent Trials and Appeals BoardMay 24, 20212020003810 (P.T.A.B. May. 24, 2021) Copy Citation 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. 15/575,238 11/17/2017 Eun-Kyu LEE MERCK-4651 2361 23599 7590 05/24/2021 MILLEN, WHITE, ZELANO & BRANIGAN, P.C. 2200 CLARENDON BLVD. SUITE 1400 ARLINGTON, VA 22201 EXAMINER ROBINSON, CHANCEITY N ART UNIT PAPER NUMBER 1722 NOTIFICATION DATE DELIVERY MODE 05/24/2021 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): docketing@mwzb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EUN-KYU LEE, JIN-SOON PARK, HYUN-JIN YOON, MIN-OK JIN, and YONG-KUK YUN Appeal 2020-003810 Application 15/575,238 Technology Center 1700 Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. McGEE, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 1 In our Decision, we refer to the Specification (“Spec.”) of Application 15/575,238 filed Nov. 17, 2017 (“the ’238 App.”); the Final Office Action dated July 17, 2019 (“Final Act.”); the Appeal Brief filed Nov. 12, 2019 (“Appeal Br.”); the Examiner’s Answer dated Mar. 6, 2020 (“Ans.”); and the Reply Brief filed Apr. 24, 2020 (“Reply Br.”). Appeal 2020-003810 Application 15/575,238 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to a liquid crystal (LC) medium. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A liquid crystal (LC) medium comprising a polymerisable component A) comprising one or more polymerisable compounds, and a liquid-crystalline component B) comprising one or more mesogenic or liquid-crystalline compounds, which comprises one or more compounds selected from the group consisting of compounds of formulae C, P, T and D C P 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as MERCK PATENT GMBH. Appeal Br. 1. Appeal 2020-003810 Application 15/575,238 3 T D in which the individual radicals, on each occurrence identically or differently, and each, independently of one another, have the following meaning: is , is , is e is 1 or 2, R1 and R2 are alkyl having 1 to 12 C atoms, in which one or two non-adjacent CH2 groups are optionally replaced by -O-, -CH=CH-, -CO-, -OCO- or -COO- in such a way that O atoms are not linked directly to one another, R5 and R6 are alkyl having 1 to 12 C atoms, in which one or two non-adjacent CH2 groups are optionally replaced by -O-, -CH=CH-, -CO-, -OCO- or -COO- in such a way that O atoms are not linked directly to one another, Appeal 2020-003810 Application 15/575,238 4 Zx and Zy are -CH2CH2-, -CH=CH-, -CF2O-, -OCF2-, -CH2O-, -OCH2-, -CO-O-, -O-CO-, -C2F4-, -CF=CF-, -CH=CH-CH2O- or a single bond, L1–4 are F or Cl, LT1–LT6 are H, F or Cl, with at least one of L T1 to LT6 being F or Cl, wherein the following conditions are fulfilled: component B) comprises ≥60% of compounds selected from formulae C, P, T and D, component B) comprises ≥50% of compounds selected from formula[e] C, P and T, component B) comprises ≥40% of compounds selected from formulae C and P wherein R2 is an alkoxy group having 1 to 12 C atoms, component B) comprises 1–20% of compounds of formula D wherein e is 1. REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Name Reference Date Shimada et al. (“Shimada”)3 WO 2014/196061 A1 Dec. 11, 2014 3 The Examiner relies on US 2016/0075948 A1 (“Ogawa”) as an English language equivalent of Shimada, to which Appellant does not object. Final Act. 2. Appeal 2020-003810 Application 15/575,238 5 Name Reference Date Niwa et al. (“Niwa”)4 WO 2014/057578 A1 Apr. 17, 2014 REJECTIONS The Examiner maintains the following rejections of claims 1–20 under 35 U.S.C. § 1035 over: (1) Shimada; and (2) Niwa. Final Act. 2–6; Ans. 3–7. OPINION Appellant argues claims 1–20 as a group. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). I. Obviousness rejection of claims 1–20 over Shimada The Examiner rejects all of the claims at issue over Shimada. Final Act. 2. The Examiner finds that Shimada’s liquid crystal composition 21, which is used in a liquid crystal display device, satisfies the claimed conditions because Shimada’s LC component comprises: (i) “50% of compounds selected from formula C, P and T,” (ii) “40% of compounds selected from formulae C and P wherein R[2] is an alkoxy group having 1 to 12 C atoms,” and (iii) “2% of compounds of formula D wherein e is 1.” Id. at 2–3; see also Appeal Br. 16 (Claims App.). 4 The Examiner relies on US 2016/0075945 A1 (“Iwashita”) as an English language equivalent of Niwa, to which Appellant does not object. Final Act. 4. 5 Because this application was filed after the March 16, 2013, effective date of the America Invents Act, we refer to the AIA version of the statute. Appeal 2020-003810 Application 15/575,238 6 The Examiner acknowledges that Shimada’s liquid crystal composition 21 does not satisfy the claimed condition in which the LC component comprises ≥60% of compounds selected from formula C, P, T, and D. Final Act. 3. However, the Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize Shimada’s liquid crystal composition 21 to satisfy the claimed condition “in view of routine optimization to yield a negative dielectric anisotropy of which the absolute value is relatively large.” Id. (citing Shimada ¶¶ 86–88). Appellant argues that the Examiner “provides no reason regarding how or why one skilled in the art would ‘optimize’ the cited prior art, i.e., what is being optimized and how is it optimized and for what purpose is missing from the rationale of the rejection.” Appeal Br. 6. Appellant contends that neither the Examiner nor Shimada identifies a variable which achieves a recognized result. Id. In response, the Examiner argues Shimada explicitly teaches that “increasing the concentration of the compounds results in an increase in the absolute value of dielectric anisotropy.” Ans. 11 (citing Shimada ¶¶ 86–88). According to the Examiner, one of ordinary skill in the LC media art would have “recognized the variable to be a result-effective variable for the claimed purpose of improving features of display devices.” Ans. 11. The Examiner does not demonstrate prima facie obviousness by a preponderance of the evidence. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument”). The Examiner errs in an important factual finding—Shimada Appeal 2020-003810 Application 15/575,238 7 does not teach that increasing the concentration of the LC compounds results in an increase in the absolute value of dielectric anisotropy (compare Ans. 11 with Shimada ¶¶ 67, 86). Rather, Shimada only teaches that selecting certain compounds increases the absolute value of dielectric anisotropy. Shimada’s paragraphs 67 and 86 follow: [0067] Among general formulae (II-2a) to (II-2f), in order to increase the absolute value of dielectric anisotropy, general formulae (II-2a), (II-2b), and (II-2e) are preferred. [0086] Each of the compounds represented by general formulae (II-1) and (II-2) has a negative dielectric anisotropy of which the absolute value is relatively large. The total amount of such compounds is preferably in the range of 30 to 65%, more preferably 40 to 55%, and especially preferably 43 to 50%. Shimada ¶¶ 67, 86 (emphases added). Based on our review of Shimada’s teachings, we are persuaded by Appellant that the Examiner’s relied-upon disclosures do not support the Examiner’s conclusion.6 See Reply Br. 5 (persuasively arguing that “the above teaching does not relate to the concentration of compounds of the general formulae . . . [and] is not teaching that increasing the concentration of the noted compounds increases dielectric anisotropy”). The Examiner thus errs in finding that Shimada identifies a result effective variable for one of ordinary skill in the art to arrive at the claimed subject matter. This factual error demonstrates a lack of “rational underpinning” to support obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some 6 The Examiner’s reliance on Shimada’s paragraphs 87 and 88 for teaching a result effective variable is also not warranted. Final Act. 3; Ans. 11. Appeal 2020-003810 Application 15/575,238 8 articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” “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.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. “To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.1983)). We do not sustain the rejection of claims 1–20 over Shimada. II. Obviousness rejection of claims 1–20 over Niwa The Examiner rejects all of the claims at issue over Niwa. Final Act. 4. The Examiner finds that Niwa’s LC medium of Example 19 satisfies the claimed conditions because Niwa’s LC component comprises: (i) “51% of compounds selected from formula C, P and T,” (ii) “43% of compounds selected from formulae C and P wherein R2 is an alkoxy group having 1 to 12 C atoms,” and (iii) “3% of compounds of formula D wherein e is 1.” Final Act. 5; see also Appeal Br. 16 (Claims App.). The Examiner finds that Niwa’s LC medium of Example 19 does not satisfy the claimed condition in which the LC component comprises ≥60% of compounds selected from formulae C, P, T and D, but determines that it would have been obvious to one of ordinary skill in the art at the time of the Appeal 2020-003810 Application 15/575,238 9 invention to optimize Niwa’s LC medium of Example 19 to satisfy this condition “in view of routine optimization to aid[] in response speed and driving voltage.” Final Act. 6 (citing Niwa ¶ 67). The Examiner finds that Niwa teaches concentration ranges for compounds represented by General Formulas III, IV, V, and VII, which correspond to the claimed formulas C, P, T, and D, respectively. Final Act. 5; Niwa ¶¶ 34, 40, 47, 70. Appellant argues, inter alia, that Niwa’s concentration ranges for the individual compounds of General Formula III, IV, V, and VII “allow multiple possibilities of combining the respective lower and upper limits with each other, where most of these combinations do not lead to [two conditions] of claim 1, i.e., that the total amount of C, P, T and D is ≥60% and the total amount of C, P and T is ≥50%.” Appeal Br. 12. Because the Examiner’s grounds for rejecting claim 1 over Niwa are “essentially in the same format as the [rejection] citing Shimada,” Appellant relies on the same arguments set forth supra in Ground 1 to rebut the Examiner’s findings regarding routine optimization. Id. In other words, Appellant argues that the Examiner “provides no reason regarding how or why one skilled in the art would ‘optimize’ the cited prior art.” Id. at 6. In response, the Examiner argues Niwa explicitly teaches that “increasing the concentration of the compounds results in an increase in the absolute value of dielectric anisotropy and enhanced response speed.” Ans. 47 (citing Niwa ¶¶ 74–76). According to the Examiner, one of ordinary skill in the LC media art would have “recognized the variable to be a result- effective variable for the claimed purpose of improving features of display devices.” Id. Appeal 2020-003810 Application 15/575,238 10 Contrary to the Examiner’s finding, Niwa does not teach that increasing the concentration of the compounds represented by General Formulas III, IV, V, and VII provides the alleged results (compare Ans. 47 with Niwa ¶¶ 74–76). Niwa’s paragraph 76 follows: [0076] The dielectric anisotropy of the liquid crystal composition of the invention is preferably in the range of –2.0 to –6.0 at 25° C., more preferably in the range of –2.5 to -5.0, and particularly preferably in the range of –2.5 to –4.0. In more detail, in the case where the response speed is emphasized, the dielectric anisotropy is preferably in the range of –2.5 to –3.4, and in the case where the driving voltage is emphasized, the dielectric anisotropy is preferably in the range of –3.4 to –4.0. Niwa ¶ 76 (emphasis added). We find that Niwa’s paragraph 76 does not support a conclusion that increasing the concentration of the claimed LC compounds results in either an increase in the absolute value of dielectric anisotropy, enhanced response speed, or driving voltage. The Examiner’s reliance on Niwa’s paragraphs 74 and 75, which also do not identify any variable that achieves a recognized result, is similarly misplaced. Ans. 47. With respect to the teachings of Niwa’s paragraph 67, the Examiner finds in the Answer that Niwa[] recognize[s] among respective compounds consisting of the liquid crystal composition of Niwa, the proportion occupied by a compound having two or more fluorine specifically, formulas III, IV and V including two or more fluorine atoms is preferably in a range of 50 to 60 % due to emphasis on the response speed [0067], which meets the limitation of condition II of component B as instantly claimed of ≥50% of compounds of C, P and T. It is noted that formulas III, IV and V of Niwa[] corresponds respectively to compounds C, P and T. Therefore, if the compounds of formulas III, IV and V are outside the Appeal 2020-003810 Application 15/575,238 11 respective claimed range then the respond speed will not be enhance[d]. Ans. 52 (citing Niwa ¶ 67) (emphasis added); see also Final Act. 6. However, Niwa’s paragraph 67 is silent regarding LC compounds represented by General Formula IV, which corresponds to the claimed formula P. Id. Niwa ¶ 67. In other words, the Examiner errs in finding that Niwa identifies a variable that achieves a recognized result through which Niwa’s LC medium of Example 19 may comprise ≥50% of compounds selected from formula C, P, and T. Ans. 52. The Examiner’s factual errors cannot support a determination that Niwa would have rendered claim 1 obvious. Warner, 379 F.2d at 1017. Rather than a factual basis, the Examiner’s interpretation of Niwa appears to be proposed out of hindsight. Sensonics, 81 F.3d at 1570. We do not sustain the rejection of claims 1–20 over Niwa. CONCLUSION The Examiner’s rejections are reversed. More specifically, DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103 Shimada 1–20 1–20 103 Niwa 1–20 Overall Outcome 1–20 REVERSED Copy with citationCopy as parenthetical citation