Merck Patent GmbH

Patent Trials and Appeals Board

Mar 18, 2022

2021002144 (P.T.A.B. Mar. 18, 2022)

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. 15/575,415 11/20/2017 Graham SMITH MERCK-4650 2196 23599 7590 03/18/2022 MILLEN, WHITE, ZELANO & BRANIGAN, P.C. 2200 CLARENDON BLVD. SUITE 1400 ARLINGTON, VA 22201 EXAMINER MALLOY, ANNA E ART UNIT PAPER NUMBER 1722 NOTIFICATION DATE DELIVERY MODE 03/18/2022 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 GRAHAM SMITH, MARK GOEBEL, KEVIN ADLEM, SARAH WHITEHOUSE, and TARA PERRETT Appeal 2021-002144 Application 15/575,415 Technology Center 1700 Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and JANE E. INGLESE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1-8, 10-12, and 14-22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Merck Patent GmbH (Appeal Br. 1). Appeal 2021-002144 Application 15/575,415 2 CLAIMED SUBJECT MATTER The claims are directed to a mixture of reactive mesogens. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A mixture comprising: P is a polymerisable group, Sp is a spacer group or a single bond, wherein the spacer group is Sp'-X', where Sp' is alkylene with 1 to 20 C atoms, which is optionally mono- or polysubstituted by F, Cl, Br, I or CN, and wherein one or more non-adjacent CH2 groups are optionally replaced, in each case independently from one another, by -O-, -S-, -NH-, -NR0-, -SiR00R000- , -CO-, -COO-, -OCO-, -OCO-O-, -S-CO-, -CO-S-, - NR00-CO-O-, -O-CO-NR00-, -NR00-CO-NR00-, -CH=CH- or -C≡C- in such a manner that O and/or S atoms are not linked directly to one another, X' is -O-, -S-, -CO-, -COO-, -OCO-, -O-COO-, -CO-NRx-,-NRx-CO-,-NRx-CO-NRY-, - OCH2-, -CH2O-, -SCH2-,-CH2S-, -CF2O-, - OCF2-, -CF2S-, -SCF2-, -CF2CH2-,-CH2CF2-, -CF2CF2-, -CH=N-, -N=CH-, -N=N-,- CH=CRx-, -CY1=CY2-, -C≡C-, -CH=CH- COO-,-OCO-CH=CH- or a single bond, Rx and Ry are independently of each other H or alkyl with 1 to 12 C-atoms, and Y1 and Y2 are independently of each other H, F, Cl or CN, rl, r2 and r3 are independently of each other 0, 1, 2, 3 or 4, with r1+r2+r3≥1, and with r2+r3≥1 if a (F)r1 group is not present, Appeal 2021-002144 Application 15/575,415 3 Rll is straight chain or branched alkyl, alkoxy, thioalkyl, alkylcarbonyl, alkoxycarbonyl, alkylcarbonyloxy or alkoxycarbonyloxy with 1 to 15 C atoms which is optionally fluorinated, A and B denote, in case of multiple occurrence independently of one another, an aromatic or alicyclic group, which optionally contains one or more heteroatoms selected from N, O and S, and is optionally substituted by (F)r1, Z11 and Z12 denotes, in case of multiple occurrence independently of one another, -O-, -S-, -CO-, -COO-, -OCO-, -S-CO-,- CO-S-,-O-COO-, -CO-NR00-, -NR00-CO-,-NR00-CO- NR000, -NR00-CO-O-, -O-CO-NR00-, -OCH2-, -CH2O-, - SCH2-, -CH2S-, -CF2O-, -OCF2-, -CF2S-, -SCF2-, - CH2CH2-, -(CH2)n1, -CF2CH2-, -CH2CF2-, -CF2CF2-, - CH=N-, -N=CH-, -N=N-, -CH=CR00-, -CY1=CY2-, - C≡C-, -CH=CH-COO-,-OCO-CH=CH- or a single bond, R00 and R000 independently of each other denote H or alkyl with 1 to 12 C-atoms, Y1 and Y2 independently of each other denote H, F, Cl or CN, n is 1, 2, 3 or 4 m is 0, 1, 2, 3 or 4, and nl is an integer from 1 to 10; one or more chiral compounds of the formula CRM, wherein P0* is a polymerisable group, Appeal 2021-002144 Application 15/575,415 4 A0 and B0 are, in case of multiple occurrence independently of one another, 1,4 phenylene that is unsubstituted or substituted with 1, 2, 3 or 4 groups L as defined above, or trans-1,4-cyclohexylene, X1 and X2 are independently of each other -O-, -COO-, -OCO-, -O- CO-O- or a single bond, Z0* is, in case of multiple occurrence independently of one another, -COO-, -OCO-, -O-CO-O-, -OCH2-, -CH2O-, - CF2O-, -OCF2-, -CH2CH2-, -(CH2)4-, -CF2CH2-, - CH2CF2-, -CF2CF2-, -C≡C-, -CH=CH-, -CH=CH-COO-, -OCO-CH=CH- or a single bond, t is, independently of each other 0, 1, 2 or 3, a is 0, 1 or 2, b is 0 or an integer from 1 to 12, z is 0 or 1, and wherein the naphthalene rings are optionally substituted with one or more identical or different groups L, wherein L is, independently of each other F, Cl, CN, halogenated alkyl, alkoxy, alkylcarbonyl, alkoxycarbonyl, alkylcarbonyloxy or alkoxycarbonyloxy with 1 to 5 C atoms; and one or more compounds selected from compounds of the formulae MRM1 and MRM7: wherein P0 is a polymerisable group, x and y are independently of each other 0 or identical or different integers from 1 to 12, z is 0 or 1, with z being 0 if the adjacent x or y is 0, Appeal 2021-002144 Application 15/575,415 5 R0 is alkyl, alkoxy, thioalkyl, alkylcarbonyl, alkoxycarbonyl, alkylcarbonyloxy or alkoxycarbonyloxy with 1 to 15 C atoms or denotes Y0 or P-(CH2)y-(O)z-, P is a polymerisable group, Y0 is F, Cl, CN, NO2, OCH3, OCN, SCN, SF5, or mono- oligo- or polyfluorinated alkyl or alkoxy with 1 to 4 C atoms, w is 0 or 1, and wherein the benzene and naphthalene rings can additionally be substituted with one or more identical or different groups L. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Coates US 6,420,001 B1 July 16, 2002 Farrand US 6,514,578 B1 Feb. 4, 2003 Fukuoka US 2006/0119783 A1 June 8, 2006 May ‘942 US 7,597,942 B2 Oct. 6, 2009 May ‘571 US 8,021,571 B2 Sept. 20, 2011 Nakata US 2014/0256896 A1 Sept. 11, 2014 Eastwood GB 2 388 599 A Nov. 19, 2003 Kuwana (machine translation) JP 2011/213790 A Oct. 27, 2011 REJECTIONS Claims Rejected 35 U.S.C. § Reference(s)/Basis 1-8, 10-12, 14-21 103 Kuwana 1-8, 10-12, 14-21 103 May ‘942 1-8, 10-12, 14-22 103 May ‘571 1-8, 10-12, 14-21 Nonstatutory double patenting, May ‘492 1-8, 10-12, 14-22 Nonstatutory double patenting, May ‘571 22 103 May ‘942, Coates 22 103 Kuwana, Nakata Appeal 2021-002144 Application 15/575,415 6 OPINION Rejections under 35 U.S.C. § 103 We need address only the sole independent claim (1). The Appellant does not separately argue dependent claims 4, 6, 8, 10-12, and 14-22 (Appeal Br. 9-39). Regarding dependent claims 2, 3, 5, and 7, the Appellant argues only that because the dependent claims are narrower than the independent claim, the references provide less direction to make the more specific selections required to meet their limitations and the Appellant’s comparative data for showing nonobviousness is stronger for them (Appeal Br. 18, 29, 39). Thus, the Appellant does not provide a substantive argument for the separate patentability of any dependent claim. The dependent claims, therefore, stand or fall with the independent claim. See 37 C.F.R. § 41.37(c)(1)(iv) (2013).2 Rejection over Kuwana Kuwana discloses “a polymerizable liquid crystal composition which easily expands a wavelength range of selective reflection of a cholesteric reflection film” (¶ 7). That wavelength range expansion appears to be the increased broadening potential achieved by the Appellant (Spec: 2:35-3:2). The composition contains a combination of liquid crystal compounds having one, two, or more polymerizable functional groups (¶ 12), and can include liquid crystal compounds within the Appellant’s formula I (¶¶ 109, 123), CRM (¶ 196), and MRM1 (¶ 75). The amount of the liquid crystal compound within the Appellant’s formula I particularly preferably is 10- 2 We incorporate herein the findings of fact and conclusions of law in the Examiner’s Final Rejection and Answer. Appeal 2021-002144 Application 15/575,415 7 70 mass%, which encompasses the Appellant’s 30-70 wt% range (¶ 112). See in In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003): In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness . . . . . . . Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range. In fact, when, as here, the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap. [(Citations omitted)] The Appellant argues (Appeal Br. 14-15): [W]hile it is true that the generic formula (2-11) of Kuwana would encompass compounds of appellants’ formula I (as alleged in the Final Office action), this is a generic formula and is included among 17 options of subgeneric formulae within Kuwana’s formula (2); see, pgs. 23-26. So, to arrive at a compound of appellants' formula I, one would have to choose this one subgeneric formula out of 17 options, choose a species within the subgeneric formula which meets appellants’ formula I, use at least 30% of this component and then make two more specific selections of two additional components meeting appellants’ formula CRM and appellants’ formula MRMl or MRM7. One could only make these selections and combine them if appellants’ own teachings were used as a blueprint to do so. Even if Kuwana may have broad generic formulae which could include compounds of each of appellants’ formulae I, CRM, MRMl or MRM7, Kuwana does not direct the specific selections necessary to arrive at a mixture with the specific combination as currently recited in claim 1. Kuwana does not give the direction to pick compounds out of their broadly generic formulae which would meet each of appellants’ formula I, CRM and MRMl or MRM7. More importantly, Kuwana does not provide the direction necessary to make each Appeal 2021-002144 Application 15/575,415 8 of these three separate selections and then combine those specifically selected species together in a single mixture - and with the specific amount required in the claims for the formula I compound. In support of that argument, the Appellant relies upon Orexo AB v. Actavis Elizabeth LLC, 903 F.3d 1265 (Fed. Cir. 2018) (Appeal Br. 15). In that case, the Federal Circuit reversed the district court’s decision that it would have been obvious to one of ordinary skill in the art to use citric acid disclosed in prior art US Patent 8,475,832 for lowering the pH in an orally- dissolvable film containing an opioid-antagonist buprenorphine/naloxone combination, as carrier particles for buprenorphine microparticles used in combination with naloxone in the patentee’s opioid-antagonist combination, although “no reference suggests citric acid carrier particles.” See Orexo, 903 F.3d at 1268, 1270, 1273. The Appellant argues that Orexo “is analogous to the instant facts” because “the references had generic teachings encompassing the use of each of two components required in a claimed composition and each used in the same general type of compositions (pharmaceuticals there)” (Appeal Br. 15). The Appellant does not address the specific factual differences between Orexo and the present case, let alone establish that Orexo indicates that the liquid crystal compound combinations Kuwana would have suggested to one of ordinary skill in the art exclude the combinations within the Appellant’s claim 1.3 The fact that many compounds are disclosed would not have made any of them less obvious, particularly where, as here, the 3 This discussion of Orexo also applies to the rejections over May ‘492 and May ‘571. Appeal 2021-002144 Application 15/575,415 9 compounds recited in the Appellants’ claim are used for an identical purpose taught by the reference (polymerizable liquid crystal composition having improved wavelength broadening - Kuwana Abstract, ¶ 7; Appellant’s Spec. 1:8-9, 2:29-30). See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 841 (CCPA 1964). The Appellant argues that Kuwana would not have suggested the helical pitch gradient, high birefringence, good solubility, improved broadening potential, favorable transition temperatures, and high resistance against yellowing after UV light exposure obtained by the Appellant (Appeal Br. 16). To support a prima facie case of obviousness of the Appellant’s claimed composition, Kuwana need not disclose or suggest newly- discovered properties of that composition. See In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc). The Appellant argues that “Kuwana gives no indication that tolane compounds with a fluoro lateral substitution would be preferred or better than compounds with no lateral substitution or a chloro or methyl substitution,” and the Appellant’s Figures 1-3 show unexpected yellowing reduction and reflection band broadening due to use of a fluoro substituent instead of a chloro or methyl substituent or no substituent (Appeal Br. 17). The Appellant does not establish that the relied-upon evidence of unexpected results is commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). The Appellant’s claim 1 encompasses a very large number of compounds, yet the relied-upon evidence tests only one compound (RM-1) (Spec. 74:16-17; 100:25-33). We find in the evidence of Appeal 2021-002144 Application 15/575,415 10 record no reasonable basis for concluding that the great number of compounds encompassed by Appellant’s claim would behave as a class in a manner comparable to the particular compound tested. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Susi, 440 F.2d 442, 445-46 (CCPA 1971). Rejections over May ‘942 and May ‘571 The Appellant acknowledges that May ‘492 and May ‘571 generically encompass liquid crystal compounds within the Appellant’s formula I, CRM, and MRM1 or MRM7, but argues that those references do not provide direction to select one compound from the Appellant’s formula I, CRM, MRM1 or MRM7 over another or to select a fluorine tolane substituent over the other disclosed tolane substituents (May ‘492, col. 3, ll. 12-16; May ‘571, col. 2, l. 60 - col. 3, l. 2) (Appeal Br. 23, 33-34). May ‘492 and May ‘571 would have indicated to one of ordinary skill in the art that any of the compounds within their disclosures corresponding to the Appellant’s formula I, CRM, and MRM1 or MRM7 are suitable, including those within the Appellant’s claim 1. The fact that many compounds are disclosed would not have made any of them less obvious, particularly where, as here, the compounds recited in the Appellant’s claim are used for an identical purpose taught by the reference (polymerizable liquid crystal material for use in liquid crystal displays - May ‘492 Abstract; Appellant’s Spec. 1:5-9; reactive mesogen mixtures for use in liquid crystal displays - May ‘571 Abstract; Appellant’s Spec. 1:5-9). See Merck, 874 F.2d at 807; Lemin, 332 F.2d 841. The Appellant argues that the Appellant’s Figures 1-3 show unexpected yellowing reduction and reflection band broadening due to use Appeal 2021-002144 Application 15/575,415 11 of a fluoro substituent instead of a chloro or methyl substituent or no substituent (Appeal Br. 26-28; 37-39). That argument is not persuasive for the reason given above regarding the rejection over Kuwana. Nonstatutory double patenting rejections With respect to the nonstatutory double patenting rejections, the Appellant argues only that if the full disclosure of May ‘492 or May ‘571 does not render the Appellant’s claimed composition obvious, then their claims do not support an obviousness-type double patenting rejection (Appeal Br. 7, 8). As indicated above, the full disclosure of May ‘492 or May ‘571 would have rendered the Appellant’s claimed composition obvious to one of ordinary skill in the art. CONCLUSION A prima facie case of obviousness of the Appellant’s claimed composition has been established and not effectively rebutted by the Appellant’s evidence of unexpected results. Accordingly, we affirm the Examiner’s rejections. Appeal 2021-002144 Application 15/575,415 12 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-8, 10- 12, 14-21 103 Kuwana 1-8, 10- 12, 14-21 1-8, 10- 12, 14-21 103 May ‘942 1-8, 10- 12, 14-21 1-8, 10- 12, 14-22 103 May ‘571 1-8, 10- 12, 14-22 1-8, 10- 12, 14-21 Nonstatutory Double Patenting, May ‘942 1-8, 10- 12, 14-21 1-8, 10- 12, 14-22 Nonstatutory Double Patenting, May ‘571 1-8, 10- 12, 14-22 22 103 May ‘942, Coates 22 22 103 Kuwana, Nakata 22 Overall Outcome 1-8, 10- 12, 14-22 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED