Ex Parte Seferos et al

Patent Trial and Appeal Board

Aug 21, 2018

14199460 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/199,460 03/06/2014
32425 7590 08/23/2018
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
FIRST NAMED INVENTOR
Dwight Seferos
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SABA.P0008US/l l 402086 1060
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
2814
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DWIGHT SEFEROS, BRANDON DJUKIC, and AMIT TEVTIA
Appeal2017-006325
Application 14/199 ,460
Technology Center 2800
Before TERRY J. OWENS, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-23. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 We refer to the Specification ("Spec.") filed March 6, 2014; Final Office
Action ("Final Act.") dated August 5, 2016; Appellant's Appeal Brief
("App. Br.") filed October 11, 2016; Examiner's Answer ("Ans.") dated
December 13, 2016; and Appellant's Reply Brief ("Reply Br.") filed
February 9, 2017.
2 Appellant is Applicant, Saudi Basic Industries Corporation, which is
identified as the real party in interest. App. Br. 1.
Appeal2017-006325
Application 14/199 ,460
BACKGROUND
The subject matter on appeal relates to perylene bisimide based
polymers intended for use in photovoltaic cells. Spec. ,r 2. Claim I-the
sole independent claim on appeal-is illustrative:
1. A polymer having a structure of:
R. Rs
R,.
R~-.:
R:s #
Ro Rs
n
wherein
R1 and R2 are each independently selected from the group
consisting of H, C1-30-alkyl, C2-30-alkenyl, C2-30-alkynyl, C3_10-
cycloalkyl, Cs-10-cycloalkenyl, 3-14 membered
cycloheteroalkyl, C6-14-aryl and 5-14 membered heteroaryl,
R3, ~' R9, and Rio are each independently hydrogen, or
---CN,
Rs, R6, R7, and Rs are each independently hydrogen, a
halogen selected from the group consisting of fluorine,
chlorine, bromine iodine, and astatine, ---CN, -N02,
--O-CH2CH20---C1-10-alkyl, --O-COX1, -S---C1-10-alkyl, -NH2,
-NHX1, -NX1X2, -NH---COX1, -COOR, -COORS, ---CONH2,
---CONHX1, ---CONX1X2, ---CO-H, ---COX1, C3_10-cycloalkyl,
3-14 membered cycloheteroalkyl, C6-I4-aryl or a 5-14
membered heteroaryl, with the proviso that neither of Rs, R6,
R7, and Rs are alkoxy groups,
wherein
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Appeal2017-006325
Application 14/199 ,460
X1 and X2 are each independently C1-10-alkyl, C2-10-
alkenyl, C2-10-alkynyl, C3_10-cycloalkyl, Cs-10-cycloalkenyl, 3-14
membered cycloheteroalkyl, C6-14-aryl and 5-14 membered
heteroaryl, and
n is an integer from 2 to 1000.
App. Br. 19--20 (Claims Appendix) (some paragraphing provided).
REJECTIONS
I. Claims 1-13 and 15-22 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Facchetti. 3
II. Claims 1-13 and 15-22 alternatively stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over by Facchetti.
III. Claim 14 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over by Facchetti and Gregg. 4
IV. Claim 23 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over by Facchetti, Zhou, 5 and Lee. 6
3 US 2010/0283047 Al, published November 11, 2010 ("Facchetti").
4 Gregg, B.A. et al., "Doping Molecular Semiconductors: n-Type Doping of
a Liquid Crystal Perylene Diimide," J. Am. Chem. Soc., vol. 123, no. 32,
7959--60 (2001) ("Gregg").
5 Zhou, E. et al., "All-Polymer Solar Cells from Perylene Diimide Based
Copolymers: Material Design and Phase Separation Control," Angew. Chem.
Int. Ed., vol. 50, no. 12, 2799--2803 (2011) ("Zhou").
6 Lee, T. et al., "Stereo selective Hydroboration of Diynes and Triyne to Give
Products Containing Multiple Vinylene Bridges: A Versatile Application to
Fluorescent Dyes and Light-Emitting Copolymers," Organometallics,
vol. 23, no. 20, 4569--75 (2004) ("Lee").
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Appeal2017-006325
Application 14/199 ,460
OPINION
Rejections I and II
With regard to Rejections I and II, the Examiner finds that Facchetti
discloses a polymer having perylene diimide group (M1) and a linking group
(M2) which, when specified substituent groups are selected, falls within the
structure set forth in claim 1. Final Act. 3-5. Facchetti provides that M 1
may be a perylene imide or diimide. Facchetti ,r 58. Facchetti further
provides that M2 may be have a structure-z----(Ar)m-z-in which Ar is
substituted or unsubstituted aryl or heteroaryl and z is a linker. Id. ,r,r 76,
103. Facchetti specifies that Ar may be:
in which R3 and R4 independently may be hydrogen (id. ,r,r 76, 79) and that
suitable linkers include:
CN
~.
CN
(id. ,r 80). Appellant does not dispute that selection of the disclosed
perylene diimide for M 1, and the disclosed- z----(Ar)m-Z- for M2, with
Ar selected as unsubstituted phenyl and z selected from the above-noted
linkers, results in a structure within the scope of claim 1.
The Examiner finds that Facchetti's disclosure anticipates claim 1
because Facchetti identifies a defined group of compounds, such that one of
ordinary skill in the art would at once envisage the structure resulting from
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Application 14/199 ,460
the foregoing selections. Final Act. 3-5; Ans. 13. Alternatively, the
Examiner determines that one of ordinary skill would have had a reason to
make the foregoing selections in light of Facchetti's teachings that the
selected structures are useful for formulating a semiconductor polymer.
Final Act. 6.
Appellant argues the claims as a group, with the exception of claim
10, which is separately argued. We select claim 1 as representative, and
separately address claim 10.
Claim 1
With regard to claim 1, Appellant contends that Facchetti describes a
large number of alternative structures, such that one of ordinary skill would
not at once envisage the particular structure relied upon by the Examiner in
anticipating the claim. App. Br. 3; Reply Br. 2. We agree. A disclosure
that allows one skilled in the art to "at once envisage each member of [a]
limited class" describes each member of the class "as if [ the reference] had
drawn each structural formula or had written each name." In re Petering,
301 F.2d 676, 681-82 (CCPA 1962). Although Facchetti identifies possible
substituent selections that would yield the claimed structure, those selections
are amongst a significant number of possible alternative selections. We do
not read Facchetti as describing a class of structures that is so limited that
one skilled in the art would have envisaged each member of that class. Nor
does the Examiner identify any specific preferences in Facchetti that would
narrow the generic class of disclosed compounds to a definite and limited
class of compounds. See id. at 681 (holding that a reference's pattern of
"specific preferences" in connection with a generic formula constituted a
description of a "definite and limited class of compounds").
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Application 14/199 ,460
For the foregoing reasons, we are persuaded that the Examiner does
not identify evidence sufficient to support a prima facie case of anticipation.
Rejection I is not sustained.
With regard to the obviousness rejection, Appellant argues that
Facchetti fails to provide sufficient motivation to make the particular
selections needed to yield the claimed structure. App. Br. 4, 13-17. We
disagree. As correctly observed by the Examiner, Facchetti teaches that the
disclosed substituent selections are suitable to yield a semiconductor
polymer. Moreover, Facchetti identifies specific examples of the disclosed
polymer that share common features with that of claim 1. For example,
Facchetti identifies the following polymer, which includes the claimed
perylene diimide portion (M1).
Facchetti ,r 97. Although the above-noted example identifies a heteroaryl
linking group, Facchetti expressly teaches that a suitable alternative is the
structure-z----(Ar)m-z-with Ar selected as an unsubstituted phenyl and
z selected as any of:
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Application 14/199 ,460
Id. ,r,r 76, 79. Appellant does not point to any preference in Facchetti
regarding the selection of M2. As such, we are not persuaded that the
foregoing substitution for M2 in the exemplified polymer would have
involved more that the selection of an expressly identified alternative with a
reasonable expectation of success.
Claim 10
Regarding claim 10, Appellant additionally argues that Facchetti fails
to provide a reason to select hydrogen as the Ar substituent groups in M2.
App. Br. 17. However, Facchetti expressly teaches that the aryl substituents
may be hydrogen. Facchetti ,r,r 75, 79. Appellant does not point to any
evidence of preference in Facchetti that would suggest selecting any of the
disclosed aryl substituents other than hydrogen. Accordingly, we also are
not persuaded of error in connection with the Examiner's obviousness
determination as applied to claim 10.
For the foregoing reasons, Rejection II is sustained.
Rejections III and IV
Appellant does not present arguments against Rejection III or IV
beyond the arguments relied upon in connection with Rejection II.
Accordingly, Rejections III and IV also are sustained.
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Application 14/199 ,460
DECISION
The Examiner's decision rejecting claims 1-23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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