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 24 February 2026, wherein claim 17 was canceled. Subsequently, claims 1-7 and 9-16 remain pending and presently under consideration in this application.
Response to Amendment
The rejection of claim 1 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in each of paragraphs 8 and 10 of the previous office action on the merits, are hereby withdrawn in view of applicant’s amendments to the same.
Applicant’s amendments have failed to satisfactorily address the rejection of claim 1 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraph 9 of the previous office action on the merits.
The rejection of claim 17 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraph 11 of the previous office action on the merits, is hereby withdrawn in view of applicant’s cancellation of the same.
The objection of claim 3, as set forth in paragraph 20 of the previous office action on the merits, is hereby withdrawn in view of applicant’s amendments to the same.
Applicants have amended the base independent claim 1 to delete the compound of formula V-9, such that component “c” is limited to being compound of formula V-13.
Response to Arguments
Applicants’ arguments filed 24 February 2026 generally allege that the amendments to claim 1 overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in the previous office action on the merits, and do not directly address the rejections independently.
Applicants’ arguments filed 24 February 2026 with respect to the rejections of claims under 35 U.S.C. 102(a)(1) over each of Sugisawa et al. (CN 114907865 A), (CN 115678570 A), Hirschmann et al. (GB 2539153 A), and Hirschmann et al. (USPGPUB 2023/0272282), as respectively set forth in paragraphs 14-17 of the previous office action on the merits, said argument essentially to the effect that the deletion of compound V-9 from the base independent claim 1 renders the rejections moot, have been fully considered and are persuasive. The aforementioned rejections have been withdrawn.
Applicants’ arguments filed 24 February 2026 with respect to the rejection of claims under 35 U.S.C. 103 over Hirschmann et al. (U.S. Patent Application Publication No. 2023/0272282), as set forth in paragraph 19 of the previous office action on the merits, have been fully considered but are not persuasive. Initially, the Examiner notes that applicants’ argument alleging that the rejection over Hirschmann ‘282 “should not be maintained against amended claim 1 and dependent claims thereof” since “in the Office Action, only corresponding structure for the claimed one or more compound of formula V-9 were identified” is not factually correct. The rejection set forth in paragraph 19 of the previous office action on the merits clearly mentioned the page/section wherein Hirschmann teaches a compound of formula V-13. In response to applicant’s arguments regarding the lack thereof Hirschmann “disclosing a singular example containing all the claimed component compounds”, the Examiner kindly reminds applicants that the rejection is under 35 U.S.C. 103, and not under 35 U.S.C. 102. Applicants’ arguments that Hirschmann et al.’s teaching of the use of compounds inclusive of the compounds of the present formulae BC and/or PH-1 as “preferred” ([0175]), “particularly preferred” ([0176]) and “very particular preference” ([0177]) is “paltry guidance”, has been considered, but is not persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation in Hirschmann et al. as to the benefits there from the use of compounds inclusive of the compounds of the present formulae BC and/or PH-1, 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 this case, the express teaching that the compounds inclusive of the compounds of the present formulae BC and/or PH-1 is very particularly preferred is sufficient motivation for their use thereof.
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.
Claims 1-7 and 9-16 are 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.
Amended claim 1 remains rejected as being vague and indefinite when it recites “wherein the one or more compounds of sub-formula V-13 is different from the one or more compounds of formula I” (emphasis added); the scope of the protection sought is not clear. The compound of formula
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is not a sub-formula of the compound of formula
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, and is thus inherently different from the compound of formula I . Amended claim 1 fails to particularly point out and distinctly claim the contents of the claimed liquid crystal 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 1-7 and 9-16 are rejected under 35 U.S.C. 103 as being obvious over Hirschmann et al. (U.S. Patent Application Publication No. 2023/0272282).
Hirschmann et al. discloses 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 device, characterized in that said liquid crystal medium comprises a combination of compounds as claimed:
at least one compound inclusive of the compound of the present formula I as generally represented therein by
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([0153];
at least one compound inclusive of the compound of the present formula V-13, as is now claimed in the base indepdnt claim 1, as represented therein by
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([0153]; p. 33). Hirschmann et al. teaches ([0175], p. 41) that preferred mixtures comprise one or more compound of
at least one compound inclusive of the compound of the present formula BC as generally represented therein by
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([0175]; p. 41) and/or
at least one compound inclusive of the compound of the present formula PH-1 as generally represented therein by
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([0175]; p. 41). Hirschmann et al. also teaches that the liquid crystal medium comprises:
at least one compound inclusive of the compound of the general formula III as recited in claim 16, as well as the more specific present formula III-1 and III-6 as recited in claim 2, respectively represented therein by
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([0099]; p. 23) and
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([0113]; p. 25);
at least one compound inclusive of the compound of the present formulae IIA, IIB, IIC, and IID recited in claim 3, as respectively generally represented therein by
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([0076]; p. 4-5);
at least one compound inclusive of the compound of the present formula IIIA, as recited in claim 4, as generally represented therein by
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([0099]; p. 23);
at least one compound inclusive of the compound of the present formula IV as recited in claims 5 and 6, as generally represented therein by
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([0118]; p. )28;
at least one compound inclusive of the compound of the present formula IVa-2 as recited in claim 7, as generally represented therein by
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([0139]; p. 31);
at least one compound inclusive of the compound of the present formulae VI-1 through VI-21, as recited in claim 9 ([0153]; p. 32-33);
at least one compound inclusive of the compounds of the present formula CR and formula PH-2, as recited in claim 10, as generally respectively represented therein by
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([0175]; p. 41);and
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([0175]; p. 41).Although each of Examples M21 and M22 (p. 132) therein teach the liquid crystal medium comprising a combination of compounds inclusive of the compounds of the present formulae I, V-9, III/III-6, IIA, IID, and IV/IV-3:
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Hirschmann et al. does not expressly illustrate the further incorporation of at least one compound of formula V-13, BC and/or PH-1, each of which are well known in the liquid crystal art, individually as well as in combination, as generally taught therein. It would have been obvious to one of ordinary skill in the requisite art at the time the invention was filed to further utilize at least one compound of formula V-13, BC and/or PH-1 in the inventive liquid crystal medium of Hirschmann et al., as “preferably” taught therein, 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
THIS ACTION IS MADE FINAL. 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