Semiconductor Energy Laboratory Co., Ltd.

Patent Trials and Appeals BoardMar 17, 2021

2020002708 (P.T.A.B. Mar. 17, 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. 15/634,114 06/27/2017 Hideko INOUE 0553-1194.01 1563 24628 7590 03/17/2021 HUSCH BLACKWELL LLP HUSCH BLACKWELL SANDERS LLP WELSH & KATZ 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 EXAMINER RODRIGUEZ-GARCIA, VALERIE ART UNIT PAPER NUMBER 1626 MAIL DATE DELIVERY MODE 03/17/2021 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 HIDEKO INOUE, TOMOHIRO KUBOTA, SATOSHI SEO, HAYATO YAMAWAKI, and YASUSHI KITANO Appeal 2020-002708 Application 15/634,114 Technology Center 1600 Before ERIC B. GRIMES, FRANCISCO C. PRATS, and LILAN REN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of the Decision entered February 9, 2021 (“Decision”). The request for rehearing is denied. Appellant argues that “the Board appears to have based its decision on new grounds and new arguments that were not previously presented by the Examiner.” Req. Reh’g. 2. Specifically, Appellant argues that “the Board in its decision . . . relies on the method of Kottas that depends on a dehalogenation reaction by S-Phos. This is a new argument first raised by the Board. . . . [T]he Examiner never contends or a[r]gues the dehalogenation method in Kottas.” Id. at 4. Appeal 2020-002708 Application 15/634,114 2 Appellant argues that, instead, “the Examiner argues that simple purification can achieve the reduced impurity-level by repeating common or conventional purification.” Id. at 5. Appellant argues that “[t]he Examiner has never cited the dehalogenation reaction by S-Phos. . . . The Examiner cited Kottas as the reference using HPLC, a conventional method.” Id. at 6. Appellant argues that “the Examiner never argues or relies upon the dehalogenation reaction of Kottas during the entire prosecution of this application. Instead, the Examiner cites the HPLC purification only.” Id. at 7. Appellant argues that “[t]he Examiner explicitly states that Kottas and Becker were cited for the description of e.g. HPLC on page 12 of the Examiner’s Answer.” Id. at 8. We are not persuaded that the basis for affirming the rejection under 35 U.S.C. § 103 set out in the Decision amounts to a new ground of rejection. “[T]he ultimate criterion of whether a rejection is considered ‘new’ in a decision by the board is whether appellants have had fair opportunity to react to the thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976). “The thrust of the Board’s rejection changes when . . . it finds facts not found by the examiner regarding the differences between the prior art and the claimed invention, and these facts are the principal evidence upon which the Board’s rejection was based.” In re Leithem, 661 F.3d 1316, 1320 (Fed. Cir. 2011). Here, the Examiner found that Kottas teaches that “a composition having less than 300 ppm of halogen impurity is subjected to additional rounds of purification to achieve the desired level of purity. The purified product contains less than 10 ppm of halogen (particularly paragraph [0046] Appeal 2020-002708 Application 15/634,114 3 and claim 6).” Ans. 6. The Examiner also found that “[m]any methods for the purification of the starting compounds and of the aromatic organic products used in OLEDs were known in the art,” citing “all the above references,” including Kottas. Id. at 9. Based on those known methods, the Examiner concluded that it would have been obvious “to use any of these common purification methods in combination and iteratively until purification was achieved to the desired level of purity.” Id. at 9–10. The Examiner also quoted Kottas’ disclosure that “[a]n iterative process can be performed whereby, for example, a composition having less than 300 ppm halogenated impurity, is subjected to additional rounds of purification by the method disclosed herein to achieve the desired level of purity.” Id. at 12 (quoting Kottas ¶ 45). See also id. at 14: The examiner reiterates that the secondary references above suggested purification methods that could be used to obtain the purified products containing less than 10 ppm of halogen. The “old, well known and commonly used purification methods” are those that the cited references teach and which are used iteratively (in additional rounds of purification) to achieve the desired level of purity (see at least the excerpt from Kottas above). In our view, the Examiner’s citation of paragraph 46 of Kottas, and quotation of paragraph 45, sufficiently indicated that the rejection was premised in part on the iterative use of Kottas’ method to achieve a desired level of purification with respect to halogenated contaminants. The fact- finding in the Decision did not go meaningfully beyond that of the Examiner. Compare Decision 6–7 (citing Kottas ¶¶ 2, 41, 44–46) with Ans. 6 (citing Kottas ¶¶ 41, 46), 12 (quoting Kottas ¶ 45). Appeal 2020-002708 Application 15/634,114 4 Thus, in affirming the rejection, the Decision relies on substantively the same fact-finding that the Examiner relied on in setting out the rejection. While the Decision might go into more detail than the Examiner did, that does not make the affirmance a new ground of rejection. See In re Adler, 723 F.3d 1322, 1328 (Fed. Cir. 2013) (“While the Board’s explanation may go into more detail than the examiner’s, that does not amount to a new ground of rejection.”); see also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“To assert that the Board’s thoroughness in responding to [Appellant’s] explanation put it in the position of a ‘super-examiner’ would limit the Board to verbatim repetition of the examiner’s office actions, which would ill-serve the Board’s purpose as a reviewing body.”). Appellant also argues that [t]he Board’s decision relying upon dehalogenation (i.e. converting halogenated impurity using the S-Phos reaction) in Kottas is incorrect as one skilled in the art would not convert the halogenated impurity of the claimed invention using this method. As a Suzuki-coupling, a base K3PO4 in the S-Phos reaction would enhance the reactivity of Pd2(dba)3. The claimed compound (a biaryl-dibenzoquinoxaline) has poor solubility, which indicates that the reactivity will be also low. One skilled in the art would not know if K3PO4 is sufficient for the reaction with the claimed compound but would tend to think that it is unlikely. Req. Reh’g 9. We are not persuaded that this argument represents an issue that was overlooked or misunderstood in rendering the Decision, for two reasons. First, this argument was not made in the Appeal Brief or Reply Brief, so it cannot have been previously overlooked or misunderstood. Second, Appellant cites no evidence to support the argument that Kottas’ method Appeal 2020-002708 Application 15/634,114 5 would not be effective in reducing the chlorine content of the elected species of dibenzoquinoxaline derivative to less than 10 ppm. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). DECISION SUMMARY Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1–21 103 Kadoma, Becker, Kottas, Higashi 1–21 1–21 Nonstatutory Double Patenting 1–21 Overall Outcome 1–21 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–21 103 Kadoma, Becker, Kottas, Higashi 1–21 1–21 Nonstatutory Double Patenting 1–21 Overall Outcome 1–21 REHEARING DENIED