Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is responsive to the Amendment and Remarks filed 23 December 2025. Claims 1-14 and 16-19 remain pending and presently under consideration in this application.
Response to Amendment
The rejection of claims under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 8-13 of the previous office action on the merits, are hereby withdrawn in view of applicant’s amendments to the same.
Applicants have amended the base independent claim as follows and argue that said amendment sufficiently distinguishes the liquid crystal composition of the present claims from that of the prior art of record:
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The aforementioned amendment introduces new considerations in claim 14 as follows under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph.
Response to Arguments
Applicant's arguments filed 23 December 2025 in response to the rejection of claims under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 8-13 of the previous office action on the merits, are moot as the aforementioned rejections have been withdrawn.
Applicant's arguments filed 23 December 2025 in response to the rejection of claims under 35 U.S.C. 103 over Manabe et al. (‘263) in view of Hirschmann et al. (‘863), as set forth in paragraph 16 of the previous office action on the merits, have been fully considered but they are not persuasive.
In response to applicant's arguments filed 23 December 2025 to the effect that the amendment to the base independent claim 1, which now requires the additional use of at least one compound of formula Vf or at least one compound of formula XXXII, distinguishes the claimed liquid-crystalline medium from that of the prior art, the Examiner notes that Manabe et al. (‘263) teaches the use of at least one compound of formula Vf as well as at least one compound of formula XXXII, and that Hirschmann et al. (‘863) teaches the use of at least one compound of formula Vf as well as at least one compound of formula XXXII.
In response to applicant's arguments filed 23 December 2025 that one or more compounds of formula Vf or one or more compounds of formula XXXII “are not expressly disclosed by the examples”, the Examiner notes that prior art is not required to teach a specific example of every embodiment disclosed therein. All the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art even though the art teachings relied upon are phrased in terms of a non-preferred embodiment or even as being unsatisfactory for the intended purpose, In re Boe, 148 USPQ 507 (CCPA 1966); In re Smith, 65 USPQ 167 (CCPA 1945); In re Nehrenberg, 126 USPQ 383 (CCPA 1960); In re Watanabe, 137 USPQ 350 (CCPA 1963). Additionally, the disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004). Further, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments (MPEP 2123.I.).
In response to applicant's arguments filed 23 December 2025 that there is no teaching, suggestion, or motivation to combine the compounds having a low molecular weight and lower polarity, i.e., compounds of formulae LP1, with two or more compounds of formula ST as well as compounds inclusive of the compounds of the present formulae XII, IVc, XV, Z2, IVd, CCH-nOm, and Vf or XXXII, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In response to applicant's arguments filed 23 December 2025 that the references fail to show certain features of the invention, i.e., “high clearing points” and/or “high elastic constants K1 and K3”, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The Examiner also notes the fact that the inventor may have recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's arguments filed 23 December 2025 that Manabe et al. “teaches an LC media having a positive dielectric anisotropy” and Hirschmann et al. “”teaches an LC media having a negative dielectric anisotropy”, the Examiner notes that Hirschmann et al. was cited to support the concept of utilizing at least stabilizing compounds of the present formula ST. Notwithstanding that fact, the Examiner notes that modifying the selection of substituents of a liquid crystal compound in order to achieve a positive or negative dielectric anisotropy of the resulting compound is well within the level of skill of one in the liquid crystal art. One of ordinary skill in the liquid crystal art also recognizes that changing the frequency of an electrical field imposed on a liquid crystal material determines whether the liquid crystal material has either a positive or a negative dielectric anisotropy.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 is rejected as being vague and indefinite when it recites a “process for the preparation of liquid-crystalline medium comprising mixing one or more compounds of the Formula LP1 and/or LP2” “and two or more compounds of the Formula ST”; the scope of the protection sought is not clear in light of the amendment to the base independent claim whereby the claimed medium now also comprises at least one compound of formula Vf or at least one compound of formula XXXII. Claim 14 fails to particularly point out and distinctly claim the process for the preparation of liquid-crystalline medium.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-14 and 16-19 are rejected under 35 U.S.C. 103 as being obvious over Manabe et al. (U.S. Patent No. 10,774,263) in view of Hirschmann et al. (U.S. Patent No. 11,884,863).
Manabe et al. discloses a liquid-crystalline medium, the corresponding method of preparation thereof said liquid-crystalline medium, corresponding use thereof said liquid-crystalline medium in a liquid crystal display, as well as the corresponding method of preparation thereof said liquid crystal display. Multiple Examples in Manabe et al., including, but not limited to Examples 17 through 22 (beginning in column 153), expressly illustrate a liquid-crystalline medium characterized by comprising a combination of compounds inclusive of the compounds of the present claims, i.e.,
at least one compound inclusive of the compound of the present formula LP1 as represented therein by CLP-V-m,
at least one compound inclusive of the compound of the present formula LP2 as represented therein by CLP-n-T,
wherein the “total amount of the one or more compounds selected from LP1 and LP2 is between 2 to 35%”,
at least one compound inclusive of the compound of the present formula XII as represented therein by CCP-Vn-m,
at least one compound inclusive of the compound of the present formula IVc as represented therein by CCP-n-(O)T,
at least one compound inclusive of the compound of the present formula Z1 as represented therein by CC-n-V,
at least one compound inclusive of the compound of the present formula Z3 as represented therein by CC-n-2V1,
at least one compound inclusive of the compound of the present formula Z5 as represented therein by CCVC-n-V,
at least one compound inclusive of the compound of the present formula XIV as represented therein by PP-n-2V1,
at least one compound inclusive of the compound of the present formula II as represented therein by PUQU-n-F,
at least one compound inclusive of the compound of the present formula III as represented therein by CDUQU-n-F, DGUQU-n-F, APUQU-n-F, AND
as is now claimed, at least one compound inclusive of the compound of the present formula Vf as represented therein by
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(column 38, line 43), or at least one compound inclusive of the compound of the present formula XXXII as represented therein by
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(columns 87-88).
Table F (beginning in columns 107-108) shows stabilizers which can preferably be employed in the mixtures according to the invention, and includes the stabilizing compounds of the present formula ST, as represented therein by
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. However, Manabe et al. does not expressly illustrate the use of two or more compounds of the present formula ST.
Although the Examiner is of the opinion that it would have been obvious to one of ordinary skill in the liquid crystal art at the time the invention was filed to utilize more than one stabilizing compound of the present formula ST, the Examiner has cited Hirschmann et al. to support the concept. Hirschmann et al. teaches a liquid-crystalline medium characterized by comprising at least one stabilizing compound of the present formula ST, as generally represented therein by
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(abstract; claims), and more specifically, as represented therein by (
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column 39, line 47). In fact, claim 9 of Hirschmann et al. expressly teaches two or more compounds of the present formula ST. Hirschmann et al. also teaches that the claimed liquid-crystalline medium contains at least one compound inclusive of the compound of the present formula XXXII, as is now claimed, as represented therein by
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(column 58, line 10).
It would have been obvious to one of ordinary skill in the requisite art at the time the invention was filed to utilize two or more compounds of the present formula ST, as expressly taught in Hirschmann et al. in the liquid-crystalline medium of Laut et al., with reasonable expectations of achieving, absent object evidence to the contrary, the advantages taught therein, as well as those associated with their combination thereof.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark F Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737