Ex parte Aihara

• Decision Date: 29 April 1998
• Docket Number: Appeal 95-4830,Application 07/899,361
• Parties: Ex parte YOSHIHIKO AIHARA, TADAAKI ISOZAKI, NORIKO YAMAKAWA and ICHIRO KAWAMURA
• Court: Patent Trial and Appeal Board

Ex parte YOSHIHIKO AIHARA, TADAAKI ISOZAKI, NORIKO YAMAKAWA and ICHIRO KAWAMURA

Appeal 95-4830

Application 07/899, 361^[1]

United States Patent and Trademark Office, Patent Trial and Appeal Board

April 29, 1998

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

ON BRIEF

Before DOWNEY, WARREN and OWENS, Administrative Patent Judges.

DECISION ON APPEAI

OWENS Administrative Patent Judge.

This is an appeal from the examiner's final rejection of claims 1 and 2, which are all of the claims in the application. Claim 1 is illustrative and is appended to this decision.

THE REFERENCES

Reference relied upon by the examiner

Suzuki et al. (Suzuki)

4, 973, 738

Nov. 27, 1990

Additional reference relied upon by the board

Hopf et al. (Hopf)

5, 075, 032

Dec. 24, 1991 (parent filed May 13, 1987)

THE REJECTION

Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being unpatentable over Suzuki.

OPINION

We have carefully considered all of the arguments advanced by appellants and the examiner and agree with appellants that the aforementioned rejection is not well founded. Accordingly, this rejection will be reversed. Under the provisions of 37 CFR § 1.196(b), we will introduce a new ground of rejection of claims 1 and 2.

Suzuki discloses (col. 2, lines 34, 44-47 and 67; col. 7, lines 35-43) a liquid crystal compound which differs from that recited in appellants' claims 1 and 2 only in that in the terminal ester group shown at the left in each compound, the positions of the carbonyl and oxygen in Suzuki's ester are reversed relative to the structure in appellants' claim 1. That is, Suzuki discloses a terminal alkyloxycarbonyl group, whereas the compound recited in appellants' claim 1 has a terminal alkanoyloxy group.

The examiner argues that in the original parent case, appellants claimed both compounds having R-COO- and R-OCO-terminal ester groups, and therefore presented them as equivalents (answer page 5) .^[2] Also, the examiner argues, appellants' specification teaches that both terminal ester groups are capable of performing the same tasks. See id. The examiner states that she cannot understand how the compounds now can differ just because only one of them now is claimed. See id.

The deficiency in the examiner's argument is that she relies only upon appellants' disclosure for the functional equivalence of the R-COO- and R-OCO- terminal ester groups. Actual functional equivalence is not enough to justify refusal of a patent to a compound having one of the terminal ester groups when a compound having the other of the terminal ester groups is disclosed in the prior art. See In re Ruff, 256 F.2d 590, 599, 118 U.S.P.Q. 340, 348 (CCPA 1958). The functional equivalence must be disclosed in, or have been obvious to one of ordinary skill in the art in view of, the prior art. See id. Appellants' disclosure "may not be used against them as prior art absent some admission that matter disclosed in the specification is in the prior art." In re Wertheim, 541 F.2d 257, 269, 191 U.S.P.Q. 90, 102 (CCPA 1976). The examiner has not shown, and we do not independently find, where appellants have made such an admission.

The examiner argues that Suzuki teaches tri-stable states (answer, page 7). Suzuki shows tri-stable phases (Fig. 7 8D). The examiner's argument, however, is deficient because the examiner has not explained why Suzuki would have fairly suggested, to one of ordinary skill in the art compounds having an R-COO- terminal ester group.

For the above reasons, we conclude that the examiner has not carried her burden of establishing a prima facie case of obviousness of appellants' claimed invention. The rejection of appellants' claims 1 and 2 under 35 U.S.C § 103 over Suzuki therefore is reversed.

Under the provisions of 37 CFR § 1.196(b), we enter the following new ground of rejection. Claims 1 and 2 are rejected under 35 U.S.C. § 103 over Suzuki in view of Hopf.

Suzuki discloses a liquid crystal compound (col. 7, lines 37-43) which differs from that recited in appellants' claim 1 only in that the terminal ester radical shown at the left in Suzuki's compound is alkoxycarbonyl, whereas that in appellants' claim 1 is alkanoyloxy. However, Hopf discloses a liquid crystal compound of the formula R1-Q1-A-(Q2) _q-R2, wherein R1 can be, inter alia, an alkanoyloxy group (R-COO-) or an alkoxycarbonyl group (R-OCO-) having 1 to 15 carbon atoms, Q1 can be inter alia, A°-Z° where A° is 1, 4-phenylene and Z° is -COO- or -OCO-, A can be, inter alia, tetralin or 1, 2, 3, 4-tetrahydrophenanthrene, q can be either zero or 1, and R2 can be, inter alia, an alkyl group having 1 to 15 carbon atoms, wherein one or more CH₂ groups are replaced by a group from a list including -CHhalogen-, -0-CO- and -CO-0- (col. 1, line 6 - col. 3, line 38). In our view, such a Hopf compound is sufficiently similar to that of Suzuki that one of ordinary skill in the art would have expected Hopf s -0-CO- and -CO-O-terminal esters to be interchangeable not only in Hopf s compound, but also in that of Suzuki. Thus, one of ordinary skill in the art would have been motivated to use either of these terminal esters in the Suzuki liquid crystal compound and would have had a reasonable expectation of success in doing so. Accordingly, use of a terminal alkanoyloxy group instead of a terminal alkoxycarbonyl group in Suzuki's compound would have been prima facie obvious to one of ordinary skill in the art in view of Hopf. See In re Vaeck, 947 F.2d 488, 493, 20 U.S.P.Q.2d 1438, 1442 (Fed. Cir. 1991); In re O'Farrell, 853 F.2d 894, 902, 7 U.S.P.Q.2d 1673, 1680 (Fed. Cir. 1988); In re longi, 759 F.2d 887, 892-93, 225 U.S.P.Q. 645, 648 (Fed. Cir. 1985) .

Regarding appellants' claim 2, Suzuki teaches that X can be either -COO- or -OCO- (col. 2, lines 44-48).

Appellants argue that Table 2 of their specification shows that appellants' claimed invention produces a surprising improvement in a significant property, i. e., response time (brief, page 13). Appellants state that since they claim both configurations of the internal ester, the important issue is whether the orientation of the terminal ester recited in their claim 1 unexpectedly improves response time (brief, pages 11 and 13).

Appellants argue that appellants' Table 2 shows that in one of six tests, appellants' compound had a response time which was only 80% as fast as that of Suzuki, whereas in the other five tests, the response times of appellants' compositions were faster by factors of 1.6, 1.7, 3.4, 4.3 and 9.9 (brief, page 12). For the following reasons, we do not find this argument to be convincing.

First, it is not enough for appellant to show that the results for appellant's invention and the comparative examples differ. The difference must be shown to be an unexpected difference. See In re Freeman, 474 F.2d 1318, 1324, 177 U.S.P.Q. 139, 143 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080, 173 U.S.P.Q. 14, 16 (CCPA 1972). Appellants merely provide attorney argument that their Table 2 shows unexpected results, and arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705, 222 U.S.P.Q. 191, 196 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315, 203 U.S.P.Q. 245, 256 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189, 197 U.S.P.Q. 227, 230 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405, 181 U.S.P.Q. 641, 646 (CCPA 1974). In their specification (page 39, lines 5-6), appellants state that of the compounds whose test results are shown in their Table 2, i. e., the compounds in Examples 6 and 7, which are compounds of appellants' invention, and the compounds of Examples 8 and 9, which are within the scope of Suzuki, "the compound in Example 6 is the most preferable."^[3] This statement does not indicate that the difference between this compound and those of Suzuki is an unexpected difference but, rather, indicates that the difference is merely an expected difference of degree.

Second, the evidence presented in the declaration is not commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 743, 218 U.S.P.Q. 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035, 206 U.S.P.Q. 289, 296 (CCPA 1980). Appellants' claim 1 encompasses R_x having 5-18 carbon atoms and R₂ having 6-16 carbon atoms, and Suzuki discloses an R_x having 1-20 carbon atoms and an R₂ having 4-14 carbon atoms (col. 2, lines 19-44). However, in appellants' Table 2, only one R_1, having 8 carbon atoms, and one R₂, having 6 carbon atoms, are used. We find in the evidence of record no reasonable basis for concluding that the great number of materials encompassed by appellant's claims would behave as a class in the same manner as the particular materials tested. See In re lindner, 457 F.2d 506, 508, 173 U.S.P.Q. 356, 358 (CCPA 1972); In re Susi, 440 F.2d 442, 445-46, 169 U.S.P.Q. 423, 426 (CCPA 1971).

Appellants argue that the declaration of Okabe filed on January 24, 1994 (paper no. 8) shows that the compounds of appellants' claimed invention, but not those of Suzuki, show a tristable S*(3) phase in both heating and cooling cycles (brief, pages 13-15). For the following reasons, we are not persuaded by this argument.

First the declaration shows a difference between appellants' claimed compounds and those of Suzuki, but appellants have provided no evidence that such a difference would have been unexpected by one of ordinary skill in the art. See Freeman, 474 F.2d at 1324, 177 U.S.P.Q. at 143; Klosak, 455 F.2d at 1080, 173 U.S.P.Q. at 16. Appellants merely provide attorney argument that an unexpected result is produced, and such arguments of counsel cannot take the place of evidence. See De Blauwe, 736 F.2d at 705, 222 U.S.P.Q. at 196; Payne, 606 F.2d at 315, 203 U.S.P.Q. at 256; Greenfield, 571 F.2d...