Semiconductor Energy Laboratory Co., Ltd.

Patent Trials and Appeals BoardNov 2, 2020

15346190 - (D) (P.T.A.B. Nov. 2, 2020)

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. 15/346,190 11/08/2016 Hiromi Nowatari 0553-0920.01 7612 24628 7590 11/02/2020 HUSCH BLACKWELL LLP HUSCH BLACKWELL SANDERS LLP WELSH & KATZ 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 EXAMINER YANG, JAY ART UNIT PAPER NUMBER 1786 MAIL DATE DELIVERY MODE 11/02/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROMI NOWATARI, SATOSHI SEO, HARUE OSAKA, and TAKAKO TAKASU Appeal 2019-005223 Application 15/346,190 Technology Center 1700 Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and JULIA HEANEY, Administrative Patent Judges. HEANEY, 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 2–4, 6–12, and 14–17. See Final Act. 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 Semiconductor Energy Laboratory Co., Ltd. Appeal Br. 4. Appeal 2019-005223 Application 15/346,190 2 CLAIMED SUBJECT MATTER The claims are directed to a composite material that includes an organic compound and an inorganic compound. Spec. ¶ 1. Claims 2 and 10 are independent claims. Claim 2, reproduced below, is illustrative of the claimed subject matter: 2. A composite material comprising: a molybdenum oxide; and a heterocyclic compound represented by a formula (G1): wherein: A represents oxygen or sulfur, R1 to R7 separately represent one of hydrogen, an alkyl group comprising 1 to 4 carbon atoms, and an aryl group comprising 6 to 25 carbon atoms in a ring, R8 to R12 separately represent hydrogen or a substituent selected from a phenyl group, a naphthyl group, a phenanthryl group, a triphenylenyl group, a fluorenyl group, a dibenzothiophenyl group and dibenzofuranyl group, and at least one of R8 to R12 does not represent hydrogen. Appeal 2019-005223 Application 15/346,190 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kumaki US 2006/0027830 A1 Feb. 9, 2006 Nakano US 2007/0141387 A1 June 21, 2007 REJECTION The Examiner maintains the following rejection on appeal: Claims 2–4, 6–12, and 14–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kumaki and Nakano. Final Act. 2–6. OPINION The Examiner finds that Kumaki discloses an organic electroluminescent device that includes a substrate, an anode, a first hole- generating layer, a light-emitting layer, an electron generating layer, a second hole-generating layer, and a cathode. Ans. 4. The Examiner further finds that Kumaki discloses that its hole-generating layers may include a hole-transporting material, which may be formed from a variety of organic compounds, and an electron-accepting material, which may be made from molybdenum oxide. Id. However, the Examiner finds that Kumaki does not disclose the claimed heterocyclic compound. Id. The Examiner finds Nakano discloses an organic electroluminescent device that includes a plurality of layers interposed between a pair of electrodes. Id. The Examiner finds Nakano discloses the following compound: Appeal 2019-005223 Application 15/346,190 4 Id. at 4–5. The Examiner concludes it would have been obvious to incorporate Nakano’s compound in Kumaki’s device because Nakano teaches its compounds result in a great efficiency of light diffusion, no defect pixels, excellent heat resistance, and long lifetimes for an organic electroluminescent device. Id. at 5. Appellant contends that Kumaki “is directed [to] a specific compound as a hole-transporting material” and [t]here is no disclosure, motivation or suggestion in Kumaki to use an organic material other than an aromatic amine compound or a phtalocyanine-based material to arrive at the solution of Kumaki and achieve a peak in the near IR region which results from the generation of holes by interaction of an aromatic amine compound and molybdenum. Appeal Br. 10; Reply Br. 2–3. Appellant asserts “there would have been no reason to select heterocyclic compounds from Nakano to use as a hole- transporting material for forming the composite material of Kumaki” because Nakano does not disclose the optical properties of its materials and “one skilled in the art would have no expectation of success that the heterocyclic compound of Nakano could be used as a compound for a hole- transporting material for forming the composite material of Kumaki.” Appeal Br. 11; Reply Br. 3. Appellant contends that “while some of the Appeal 2019-005223 Application 15/346,190 5 materials in Nagano may relate to the heterocyclic compound in the claims, it appears that most of compounds shown by Nakano do not read on or disclose the claimed heterocyclic compound and do not appear related to the disclosure of the present application” and while the claimed heterocyclic compound is a phenyl group bonded to the 4-position of a dibenzofuran skeleton or a dibenzothiophene skeleton, Nakano’s general formula (3) has a phenyl group bonded to the 6-position of a dibenzofuran skeleton or a dibenzothiophene skeleton. Reply Br. 3–4. Appellant also argues that Nakano only discloses an organic compound but not a composite material and so there would not have been a reasonable expectation of success that Nakano’s material and Kumaki’s device would achieve the results argued by the Examiner. Appeal Br. 11– 12. Appellant asserts there would not have been a reason to select a compound from Nakano to use as Kumaki’s hole-transporting material instead of Kumaki’s compounds. Reply Br. 4. In view of the above, Appellant further argues that the Examiner relied upon impermissible hindsight in making the rejection. Appeal Br. 12. Appellant’s arguments do not persuasively identify reversible error. Kumaki discloses a light-emitting element that includes a light-emitting layer, an electron-generating layer, first and second hole-generating layers, an anode, a cathode, and an insulator. Kumaki ¶ 45. Kumaki discloses that the light-emitting element may further include a hole-injecting layer between the anode and first hole-generating layer. Id. ¶ 51. Kumaki also teaches that the first and second hole-generating layers may include a hole-transporting material and an electron-accepting material. Id. ¶ 97. Kumaki discloses various organic compounds that can be used for the hole-transporting Appeal 2019-005223 Application 15/346,190 6 material and various materials for the electron-accepting material, including molybdenum oxide. Id. Kumaki further states “[i]t is to be noted that the materials mentioned above are just examples, and a practitioner can select appropriately.” Id. Therefore, Kumaki’s disclosure supports the Examiner’s findings, including the finding that Kumaki does not limit the material for its hole-transporting material. Ans. 4, 6. Nakano is also directed to an organic electroluminescent device. Nakano ¶ 1. Nakano’s device can include an anode, a hole injection layer, a light emitting layer, an electron injection layer, and a cathode. Id. ¶¶ 1, 88. Although Nakano discloses several general formulae for an organic compound to be used in its device, Nakano also discloses specific examples of the material, including the specific compound D1 the Examiner cites in the rejection. Id. ¶¶ 25–26, 30, 34, 37, 40, 43, 46, 49, 84; Ans. 4–5. Appellant does not dispute that the claimed heterocyclic compound encompasses Nakano’s compound D1. See generally Appeal Br. Further, Nakano discloses the use of its organic compounds for use in the same type of device as Kumaki’s (i.e., an electroluminescent device) and Nakano’s device performs the same function as Kumaki’s (i.e., emits light). Nakano also teaches an organic electroluminescent device can exhibit great efficiency of light transmission, have no defect pixels, exhibit excellent heat resistance, and have a long life by using the compounds taught by Nakano. Id. ¶ 54. Therefore, Nakano’s disclosure provides a reason to use Nakano’s compound in an organic electroluminescent device, such as Kumaki’s. This disclosure of using Nakano’s compound in an organic electroluminescent device, as well as the resultant benefits, also provides a reasonable expectation that such a modification would have been successful. Appeal 2019-005223 Application 15/346,190 7 “Obviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–904 (Fed. Cir. 1988). In addition, Appellant cites the advantages described in the Specification, arguing “[t]he composite materials of the claimed invention have almost no absorption peak in the visible light region and the infrared region,” “light absorption due to charge transfer interaction between the heterocyclic material and molybdenum oxide is unlikely to occur” in the claimed invention, and “[t]his is a very advantageous result.” Appeal Br. 11. As the Examiner finds, however, Appellant has not presented results that are commensurate with the scope of the claims. Ans. 7. For instance, Appellant has not asserted results that are commensurate in scope with the range of heterocylic compounds encompassed by the formulas that independent claims 2 and 10 recite. Further, to the extent Appellant intended its arguments to assert unexpected results, Appellant has not explained how the cited results and advantages are an unexpected result rather than a different result.2 See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.”); In re Aller, 220 F.2d 454, 457 (CCPA 1955) (unexpected 2 Appellant also compares Kumaki’s experimental results to those of a reference (JP 2003-272860) discussed in the Specification. Appeal Br. 9– 10. Appellant does not appear to make an argument based upon this comparison in regard to the claim limitations. To the extent Appellant intended these comments to support an argument of unexpected results, Appellant has not properly compared the claimed invention to the closest prior art. Appeal 2019-005223 Application 15/346,190 8 results must demonstrate a difference in kind, not merely a difference in degree). Therefore, to the extent Appellant has argued unexpected results, Appellant’s evidence of unexpected results is entitled to little weight. A preponderance of the evidence supports the Examiner’s obviousness determination. Accordingly, we affirm the Examiner’s rejection of claims 2–4, 6– 12, and 14–17 as unpatentable over Kumaki and Nakano. CONCLUSION The rejection is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2–4, 6–12, 14–17 103 Kumaki, Nakano 2–4, 6–12, 14–17 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