MERCK PATENT GMBH

Patent Trials and Appeals Board

May 24, 2021

2020003810 (P.T.A.B. May. 24, 2021)

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.
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Application 15/575,238

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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,
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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.
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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.
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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
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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.
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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
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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.
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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
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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