NOVALED GMBH

Patent Trials and Appeals BoardOct 29, 2021

2021002385 (P.T.A.B. Oct. 29, 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. 14/426,698 03/06/2015 Mike Zoellner 17346-0170 3957 29052 7590 10/29/2021 EVERSHEDS SUTHERLAND (US) LLP 999 PEACHTREE STREET, N.E. SUITE 2300 ATLANTA, GA 30309 EXAMINER DIAZ, MATTHEW R ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 10/29/2021 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): patentdocket@eversheds-sutherland.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIKE ZOELLNER, KAY LEDERER, ANTON KIRIY, VOLODYMYR SENKOVSKYY, and BRIGITTE ISABELL VOIT Appeal 2021-002385 Application 14/426,698 Technology Center 1700 Before JEFFREY T. SMITH, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. SMITH, 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 1, 11, 20, 21, 34, 39, and 40. Claims 15–17, 37, and 38 are withdrawn from consideration. Claims 2–10, 12–14, 18, 19, 22–33, 35, and 36 have been cancelled. An oral hearing was held on 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Novaled GmbH of Dresden, Germany. (Appeal Br. 2.) Appeal 2021-002385 Application 14/426,698 2 September 28, 2021, a transcript of which is of record. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Appellant’s invention relates generally to a charge transporting semi- conducting material comprising a cross-linked charge transporting polymer that includes 1,2,3-triazole cross-linking units, a method for its preparation and a semiconducting device comprising the material. (Spec. 5–7.) Independent claim 1 is representative of the appealed subject matter and is reproduced below: 1. A charge transporting semi-conducting material comprising: a cross-linked charge-transporting polymer comprising 1,2,3-triazole cross-linking units of the general formulae Ia and/or Ib, , , wherein aa) Pol1– Pol4 are independently selected from charge- transporting polymers, bb) X1, X2, X3, and X4 are independently selected from spacer units having up to 30 multivalent atoms or represent direct bonding of Pol1– Pol4 to the 1,2,3-triazole ring, and cc) R and R’ are independently selected from the group consisting of H, halogen, nitrile, C1–C22 saturated or unsaturated alkyl, C3–C22 cycloalkyl, C6–C18 aryl, C1–C22 arylalkyl, C2–C13 heteroaryl having up to three heteroatoms independently selected Appeal 2021-002385 Application 14/426,698 3 from oxygen, nitrogen, or sulphur, SiR1R2R3 , wherein R1, R2, and R3 are independently selected from C1–C4 alkyl or phenyl, COR4 or COOR5, wherein R4 and R5 are independently selected from C1–C22 alkyl or C1–C22 arylalkyl, and CR6R7OR8, wherein R6 and R7 are independently selected from H, C1–C6 alkyl, C6– C9 aryl, or R6 and R7 together form a C3–C1 ring, and R8 is C1– C6 alkyl, C1–C22 arylalkyl, SiR9R10R11, wherein R9, R10, and R11 are independently selected from C1–C4 alkyl or phenyl, or COR12, wherein R12 is H or C1–C21 alkyl; and wherein (i) the cross-linked charge-transporting polymer is a continuous infinite network, (ii) the charge-transporting polymer is capable of transporting an injected charge due to a system of overlapping orbitals along the charge-transporting polymer, and (iii) the injected charge is an electron injected or withdrawn either by an electrode arranged in contact with the charge-transporting polymer and/or through a reaction with a dopant capable of increasing the conductivity of the charge- transporting polymer. The following rejections are presented for our review: I. Claims 39 and 40 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. (Final Act. 4–5.) II. Claims 1, 11, 20, 21, 34, 39, and 40 are rejected on the ground of nonstatutory double patenting as unpatentable over claims 1–13 and 16– 31 of Lederer et al. (“Lederer”) US 10,468,601 B2. (Final Act. 3–4.) III. Claims 1, 11, 20, 21, 34, 39, and 40 as anticipated under 35 U.S.C. §102 or, in the alternative, unpatentable under 35 U.S.C. §103 over Li et al. (“Li”), US 7,208,243 B2. (Final Act. 6–7.) Appeal 2021-002385 Application 14/426,698 4 OPINION Written Description Rejection Claims 39 and 40 Claims 39 and 40 stand rejected by the Examiner under 35 U.S.C. § 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. We sustain. The Examiner determines the recitation “Pol1– Pol4 are independently selected from non-acidic charge-transporting polymers,” in independent claim 39 and the recitation “Pol1– Pol4 are independently selected from charge-transporting polymers that do not include a sulfonated polyphenylene” in claim 40 are each not adequately described or supported by the Specification, as originally filed. (Final Act. 5.) The Examiner determines the exclusion of acidic charge-transporting polymers (claim 39) and sulfonated polyphenylenes (claim 40) comprised within the charge- transporting polymers are each not adequately described or supported in the original Specification. (Final Act. 5.) The Examiner determines the original Specification as filed fails to recite or suggest the invention includes or excludes acidic charge transporting polymers and/or sulfonated polyphenylene charge transporting polymers sufficiently to positively exclude such limitations from the claims. (Final Act. 5.) Appellant argues the Specification provides implicit support for excluding acidic charge transporting polymers and/or sulfonated polyphenylene charge transporting polymers. (Appeal Br. 11 (citing Spec. pages 11–13).) Appellant argues the Specification provides examples of building units that may be present in the first and second precursor charge- Appeal 2021-002385 Application 14/426,698 5 transporting polymer and none of the disclosed substituents is an acid or a sulfonated phenyl. (Appeal Br. 11.) The purpose of the written description requirement in 35 U.S.C. § 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562−63 (Fed. Cir. 1991) (citation omitted)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. [Ariad] “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. With regard to negatively claimed features and the written description requirement, the critical question is whether such negatively claimed features introduce new concepts. Ex parte Grasselli, 231 USPQ 393, 394 (BPAI 1983) aff’d 738 F.2d 453 (Fed. Cir. 1984) (determining that the negatively claimed language “said catalyst being free of uranium and the combination of vanadium and phosphorous” in a product claim introduced new concepts because “the express exclusion of certain elements implies the permissible inclusion of all other elements not so expressly excluded” (citing In re Anderson, 471 F.2d 1237, 1241 (CCPA 1973))); cf. Ex parte Parks, 30 USPQ2d 1234 (BPAI 1993) (determining that the claimed phrase “in the Appeal 2021-002385 Application 14/426,698 6 absence of a catalyst” in a process claim did not violate the written description requirement because it was implicitly clear from the specification that the reactions were carried out without a catalyst such that no new concept was introduced by the negatively claimed language); see also In re Johnson, 558 F.2d 1008 (CCPA 1977) (holding that deleting two disclosed species from a generic claim via a negative limitation in response to a lost interference count did not violate the written description requirement). We have fully considered Appellant’s evidence and arguments and the Examiner’s findings regarding this matter. We find that the preponderance of the evidence supports the Examiner’s finding that the claim lacks written descriptive support for the disputed claim recitations excluding acidic charge transporting polymers and/or sulfonated polyphenylene charge transporting polymers. While the Specification reasonably conveys support for charge transporting polymers comprising attached azide groups and acetylenic groups generally, the addition to the claim that specifies exclusion of acidic charge transporting polymers and/or sulfonated polyphenylene charge transporting polymers introduces a new concept to the written description. Appellant has not directed us to portions of the Specification that imply clearly that the charge transporting polymers comprising attached azide groups and acetylenic groups exclude acidic charge transporting polymers and/or sulfonated polyphenylene charge transporting polymers. Accordingly, the claim recitations excluding acidic charge transporting polymers and/or sulfonated polyphenylene charge transporting polymers lack written descriptive support in the originally filed Specification. Appeal 2021-002385 Application 14/426,698 7 For the foregoing reasons and those the Examiner presents, we sustain the rejection of claims 39 and 40 under 35 U.S.C. § 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph. Obviousness double patenting Claims 21, 22, and 24–41 are rejected on the ground of non-statutory double patenting as unpatentable over claims 1–10 and 14 of U.S. Patent No. 10,468,601. We sustain. The Examiner determined all of the limitations of the appealed claims 1, 11, 20, 21, 34, 39, and 40 are not patentability distinct from claims 1–13 and 16–31 of US 10,468,601 B2. (Final Act. 3–4.) The Examiner explains in the Answer that claims of the ’601 patent recite the charge-transporting polymer comprises a conjugated system of delocalized electrons and recite exemplary conjugated groups that read on the claimed system of overlapping orbitals along/comprised within the charge-transporting polymer. (Ans. 3– 4.) Appellant argues [T]he claims of the ’601 patent appears to have been allowed because (i) they solely encompass a specific class of charge transporting polymers that is very different from all examples of the present application, because polyethylene does not include any overlapping n-orbitals in the backbone, and (ii) the claimed subject matter of the ’601 patent can exhibit new and surprising technical effects which could not have been predicted in view of the embodiments disclosed in the present application. (Appeal Br. 13–14.) Appellant’s arguments are not persuasive of reversible error. Appellant’s assertions with respect to the apparent reasons for the allowance Appeal 2021-002385 Application 14/426,698 8 of the ’601 patent claims do not explain adequately why the claims of the present application are patentably distinct from those claims. Prior Art Rejections The Examiner rejected claims 1, 11, 20, 21, 34, 39, and 40 as anticipated under 35 U.S.C. § 102 or, in the alternative, obvious under 35 U.S.C. §103 over Li. We reverse. The dispositive issue for this rejection is: Did the Examiner err in determining that Li teaches a charge transporting semi-conducting material (proton exchange and ion-conducting material) comprising a cross-linked charge-transporting polymer comprising 1, 2, 3-triazole cross-linking units as required by the subject matter of independent claims 1, 39, and 40? After review of the respective positions provided by Appellants and the Examiner, we answer the question in the affirmative. We limit our discussion to independent claim 1. The Examiner finds Li teaches a charge transporting semi-conducting material (proton exchange and ion-conducting material) comprising a cross- linked charge-transporting polymer comprising 1, 2, 3-triazole cross-linking units as required by the claimed invention. The Examiner further determines: In the event Li fails to explicitly teach the cross-linked charge-transporting polymer is a continuous infinite network, it would have also been obvious to a person of ordinary skill in the art to arrive within the claimed limitation of the continuous infinite network because Li further teaches providing a plurality, i.e. two or more, of functional groups in polymer backbones including an equal number of azide and alkyne groups and also a surplus of one or the other (col. 3 lines 55-62, col. 5 lines 40- 43 and col. 6 lines 21-23) which are further taught to undergo a Appeal 2021-002385 Application 14/426,698 9 click reaction that go largely to completion (col. 3 line 65 to col. 4 line 2) which reads on the claimed continuous infinite network. (Final Act. 6–7.) Appellant has argued persuasively that the claimed charge transporting semi-conducting material is not anticipated or obvious over Li. (Appeal Br. 4–10.) Appellant has presented three Declarations from experts in the field, 2 who are not inventors of the present application, which provide a technical explanation of why the ion conducting materials of Li are not the same as the claimed charge transporting semiconducting materials. The Examiner has failed to provide any technical reasoning explaining error in the Declarants’s statements. Under these circumstances, we are constrained to reverse the appealed rejections under §§ 102(b) and 103. See In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007) (Failure to meaningfully address submitted evidence is error.); In re Rinehart, 531 F.2d 1048, 1053– 54 (CCPA 1976) (Failure to consider the rebuttable evidence in the affidavit relied upon by Appellant is error.) 2 Declaration Under 37 C.F.R. § 1.132 of Omrane Fadhel, Ph.D., signed August 22, 2017, and filed August 23, 2017 (First Declaration); Declaration Under 37 C.F.R. § 1.132 of Annette Steudel, Ph.D., signed February 22, 2018, and filed February 28, 2018 (Second Declaration); and Declaration Under 37 C.F.R. § 1.132 of Tomas Kalisz, signed September 2, 2019, and filed September 6, 2019 (Third Declaration). Appeal 2021-002385 Application 14/426,698 10 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 11, 20, 21, 34, 39, 40 non-statutory double patenting, Lederer, 1, 11, 20, 21, 34, 39, 40 39, 40 112 Written Description 39, 40 1, 11, 20, 21, 34, 39, 40 102 Li 1, 11, 20, 21, 34, 39, 40 1, 11, 20, 21, 34, 39, 40 103 Li 1, 11, 20, 21, 34, 39, 40 Overall Outcome 1, 11, 20, 21, 34, 39, 40 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