DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/09/2026 has been entered.
Claims 1-8, 10, 18 and 20-24 are currently pending. Claims 9, 11-17 and 19 have been canceled.
Claim Objections
Claim 1 is objected to because of the following informalities:
Ring H1 to Ring H5 are not closed rings in claim 1. The rings need to be closed.
The last sentence in claim 1 should be amended to recite “ the at least one chiral compound” instead of “the chiral compound” based on claim consistency.
Appropriate correction is required.
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 10 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 10 recites the limitation of “The liquid crystal composition according to claim 9,…”. However, claim 9 has been canceled. Therefore the claim as written is indefinite and unclear. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-8, 10, 18 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Gorecki et al. (US 2017/0351130 A1).
Regarding claims 1-8, 10, 18 and 20-21, Gorecki et al. disclose Gorecki et al. ( see abstract, claims , examples and Example 1: M-1 ) teach a light modulation device and a liquid crystal medium therein, wherein in the mixture example , M-1 comprises 2% of a chiral compound, 43.8% of a compound belonging to formula I of the present application, 14.2% of a compound belonging to formula II of the instant claims, 37% of a compound belonging to formula III of the instant invention and 3% of a compound belonging to formula IV of the present invention. Gorecki et al. teach the liquid crystal medium may further comprises a polymerisable compounds and initiators [0290-0293].
Although Mixture M-1 of Gorecki et al. do not explicitly disclose the liquid crystal composition contains 15% to 34.5% by mass of at least one compound selected from the compounds represented by the general formula II as instantly claimed, Gorecki et al. recognize that Mixture M-1 includes 14.2% of a compound belonging to formula II of the instant claims. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to recognize that the 14.2% of a compound belonging to formula II (reference) and 15% of a compound belonging to formula II (instant application) are close and therefore would be expected to perform in the same manner. The same results of the 14.2% of a compound belonging to formula II as would be expected from the 15% of a compound belonging to formula II. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (MPEP 2131.03). Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. [MPEP 2112.01 In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)].
Also, Mixture M-1 of Gorecki et al. do not explicitly disclose the liquid crystal composition contains 5% to 20% by mass of the chiral compound as instantly claimed. However, Gorecki et al. recognize that the liquid crystal composition preferably comprises preferably from 1 to 20% by mass of the at least one chiral compound for the purpose of exhibiting a high helical twisting power [0239-0242]. It is noted that the mass amount is well-known to one of ordinary skilled in the art to be optimizable. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Therefore, it would have been obvious to one of ordinary skilled in the art to modify the chiral compound in Mixture M-1 of Gorecki et al. to be included in an amount of 5% to 20% by mass in view of exhibiting a high helical twisting power.
Allowable Subject Matter
Claims 22-24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments, see pages 12-18, filed 02/09/2026, with respect to the rejection(s) of claim(s)1-10, 14, 16 and 18-24 under 35 USC 102(a)(1) as being anticipated by Gorecki et al. (US 2017/0351130 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Gorecki et al. (US 2017/0351130 A1).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., N-TB phase transition temperature, P-state recovery and clearing point) 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).
Therefore, Gorecki et al. (US 2017/0351130 A1) remains prior art as being obvious over the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANCEITY N ROBINSON whose telephone number is (571)270-3786. The examiner can normally be reached Monday-Friday (8:00 am-6:00 pm; IFP; PHP).
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/CHANCEITY N ROBINSON/Primary Examiner, Art Unit 1737
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