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 29 June 2026. Claims 1-14 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), second paragraph, as set forth in paragraphs 4, 5, and 7-18 of the previous office action on the merits, are hereby withdrawn in view of applicant’s amendments to the same.
Response to Arguments
Applicant's arguments filed 29 June 2026 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 paragraph 6 of the previous office action on the merits, have been fully considered and are persuasive. The aforementioned rejection is hereby withdrawn.
Applicant's arguments filed 29 June 2026 in response to the rejection of claims on the ground of nonstatutory double patenting as set forth in paragraphs 20 and 21 of the previous office action on the merits, have been fully considered but they are not persuasive.
Initially, in response to applicant’s arguments to the effect that the “claimed ferroelectric smectic phase is a totally new phase that was not known until recently” (Examiner emphasis added), the Examiner notes that a ferroelectric smectic liquid crystal composition was known as far back as least 2000, as illustrated in the prior art cited in the following paragraph 13, i.e., JP 3081555 B2.
In response to applicant’s assertion essentially that that the preamble of the claim reciting a “ferroelectric smectic liquid crystalline medium” (Examiner emphasis added) is sufficient to distinguish the present claims from those cited in said rejections, the Examiner notes that both sets of claims are drawn to a ferroelectric liquid crystal medium, and the corresponding process of preparation thereof said ferroelectric liquid crystal medium, characterized in that said ferroelectric liquid crystal medium exhibits a relative dielectric permittivity εr of 700 or more at 10° C. and 1 KHz, exhibits a hysteresis in its dielectric properties over varying temperature, and exhibits an enantiotropic ferroelectric smectic phase, and comprises a compounds inclusive of the compounds of the present formulae IA, IB, and/or IC. 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).
Applicant’s arguments filed 29 June 2026 with respect to the alleged allowability of the claims have been considered but are moot because the arguments do not apply to the references being used in paragraphs 12 and 14 of the current rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,215,267. Although the claims at issue are not identical, they are not patentably distinct from each other because the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to a ferroelectric liquid crystal medium, and the corresponding process of preparation thereof said ferroelectric liquid crystal medium, characterized in that said ferroelectric liquid crystal medium exhibits a relative dielectric permittivity εr of 700 or more at 10° C. and 1 KHz, exhibits a hysteresis in its dielectric properties over varying temperature, and exhibits an enantiotropic ferroelectric smectic phase, and comprises a compounds inclusive of the compounds of the present formulae IA, IB, and/or IC.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 12 of copending Application No. 18/858,650 (corresponding to U.S. Patent Application Publication No. 2025/0282995). Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to a ferroelectric liquid crystal medium, and the corresponding process of preparation thereof said ferroelectric liquid crystal medium, characterized in that said ferroelectric liquid crystal medium exhibits a relative dielectric permittivity εr of 700 or more at 10° C. and 1 KHz, exhibits a hysteresis in its dielectric properties over varying temperature, and exhibits an enantiotropic ferroelectric smectic phase, and comprises a compounds inclusive of the compounds of the present formulae IA, IB, and/or IC.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 4-8 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 comprising a compound inclusive of the compound of the present formula IA, as generally represented therein by
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140
727
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(abstract; [0026], p. 2; examples; claims), and more specifically, as represented therein by
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138
691
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or
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146
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([0084], p.6). Also, please note the following exemplified compounds (p. 106+):
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153
705
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150
705
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120
713
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131
730
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158
731
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312
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128
724
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163
698
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145
690
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315
740
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159
712
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.
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 1-3 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent No. JP 3081555 B2 (machine translation include for applicant’s convenience).
JP 3081555 B2 teaches a ferroelectric liquid crystal composition having a smectic phase (claim) characterized by comprising a first component having a negative dielectric anisotropy and a second component having a positive dielectric anisotropy. As for the claimed 5 % by weight or more of the first component and the 60% by weight or more of the second component, the Examiner notes that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). A particular parameter can be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, and the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (see MPEP 2144.05.II.B.). It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980). JP 3081555 B2 discloses all the limitations of a claim except a property or function, i.e., the rotational viscosity and the relative dielectric permittivity, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02. It would have been obvious to one of ordinary skill in the requisite art at the time the invention was filed to make and/or use the liquid crystal composition of JP 3081555 B2, with reasonable expectations of achieving, absent object evidence to the contrary, the advantages taught therein
Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure of a ferroelectric smectic liquid crystal composition: Japanese Patent No. JP 3757365 B2.
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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