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 Request for Continued Examination filed 29 April 2026, whereby the Amendment and Remarks filed 17 April 2026 was entered. Claims 1-13 remain pending and presently under consideration in this application.
Response to Amendment
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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Response to Arguments
Applicant’s arguments with respect to the rejection of claims under 35 U.S.C. 102(a)(1) over Ookawa et al. (2018/0022999), as set forth in paragraph 8 of the previous FINAL office action on the merits, have been fully considered but they are not persuasive. Applicants argue that the prior art of record lacks “any explicit disclosure” of a “ferroelectric” liquid crystalline medium, and assert that the “earliest reports of the existence of ferroelectric nematic materials did not appear until 2020, well before the disclosures of these documents”. Initially, the Examiner notes that applicants have simply amended the base independent claim 1 from reciting “A ferroelectric liquid crystalline medium“ in the preamble, to now reciting “wherein the nematic liquid crystalline medium is a ferroelectric nematic liquid crystalline medium” in the penultimate/ultimate lines of claim 1. The liquid crystalline medium of (at least) independent claim 1 simply requires one or more compounds of formula IA, which is expressly taught in the prior art of record, and there is no structural difference between the liquid crystalline medium of the claimed invention and the liquid crystalline medium of the prior art. 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)]. Subsequently, the Examiner asserts that the liquid crystalline medium of the prior art of record characterized by comprising one or more compounds of formula IA in a % by weight as claimed, is inherently ferroelectric. Additionally, the Examiner notes that there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). As such, the Examiner asserts that the liquid crystalline medium of the prior art of record is capable of inherently possessing the recited property of being ferroelectric. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Upon further reconsideration, the rejection of claims under 35 U.S.C. 102(a)(1) over each of Tanaka et al. (‘888) and Wittek et al. (‘253), as respectively set forth in paragraphs 9 and 10 of the previous FINAL office action on the merits, are hereby withdrawn.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ookawa (U.S. Patent Application Publication No. 2018/0022999).
Ookawa teaches a liquid crystal medium, the corresponding method of preparation thereof said liquid crystal medium, as well as the corresponding use thereof said liquid crystal medium in a liquid crystal display, characterized in that said liquid crystal medium comprises a compound inclusive of the compound of the present formula IA, as generally represented therein by
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(abstract; [0026], p. 2; examples; claims), and more specifically, as represented therein by
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691
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or
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([0084], p.6). Also, please note the following exemplified compounds (p. 106+):
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713
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730
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731
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698
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690
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. Ookawa teaches a liquid crystal medium comprising a chiral agent, as represented by
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added to Example 36 therein ([0630], p. 128+) which comprises at least one compound inclusive of the compound of the present formula IA, in an amount of at least 15% by weight as recited in the present claim 3, as well as at least one compound inclusive of the compound of the present formula IB, such that the % by weight of the compounds of formulae IA + IB is at least 80% as recited in the present claim 5. The Examiner asserts that the liquid crystalline medium of Ookawa characterized by comprising one or more compounds of formula IA in a % by weight is claimed, is inherently ferroelectric.
Allowable Subject Matter
The Examiner notes that claims rewritten to be limited to the ferroelectric nematic liquid crystalline medium comprising at least one compound of formula IA
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wherein at least one of the substituents A1A is represented by
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are considered to distinguish patentably over the art of record in this application.
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, Anthony J Zimmer can be reached at (571)270-3591. 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
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