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, Substitute Specification, Amendment and Remarks filed 12 June 2026, wherein claim 18 was newly added. Subsequently, claims 1-7, 9-16, and 18 are 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), second paragraph, as set forth in paragraph 13 of the previous FINAL office action on the merits, is hereby withdrawn in view of applicant’s amendments to the same.
Response to Arguments
Applicants’ arguments filed 12 June 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), i.e., herein referred to Hirschmann et al. ‘282, as set forth in paragraph 16 of the previous FINAL office action on the merits, again, essentially to the effect that Hirschmann et al. ‘282 lacks a “singular example containing all the claimed component compounds”, have been fully considered but are not persuasive. The Examiner notes that each of the rejection itself, under 35 U.S.C. 103, as well as the previous comments have already acknowledged that the examples lack an anticipatory teaching of the claimed subject matter. The Examiner has acknowledged and addressed the differences therein, i.e., the lack of a singular example expressly illustrating the use of a compound inclusive of the compounds of formulae BC and/or PH-1, and a prima facie case of obviousness was properly established, shifting the burden to applicant to overcome the obviousness rejection, i.e., to demonstrate how, despite Hirschmann et al. ‘282 teaching that the use of compounds inclusive of the compounds of the present formulae BC and/or PH-1 are very particularly preferred, there are some alleged unexpected advantages achieved with their use thereof, thus rendering Hirschmann et al. ‘282 nonobvious.
The Examiner had previously referenced the portions of Hirschmann et al. ‘282 in the Non-final rejection of 24 November 2025 in response to applicant’s allegations of “paltry guidance” (filed 30 October 2025) in Hirschmann et al. ‘282 for the use of said compounds of formula BC and/or PH-1. Applicants’ arguments filed 12 June 2026 maintain the position that Hirschmann et al. ‘282’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 not sufficient to “describe any particular advantage associated with compounds of formula BC, PH-1 and/or V-13, or with any combination of these compounds”. In response to applicant’s arguments filed 12 June 2026 alleging that “merely selecting certain compound, without providing any particular motivation or relevant teaching that would sufficiently guide the person of skill to choose the claimed components”, have been fully considered but are not persuasive. 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. "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Applicant's arguments filed 12 June 2026 alleging that the compound CLP-V-1, i.e., the compound of CLP-Vn-m(*) recited in newly added claim 18, “contributed to lower delta-n and higher Kavg in the negative LC mixture” (emphasis added) and that ”the achieved combination of lower birefringence and stronger elastic restoring effect can improve the electro-optic stability and reduce flicker”, have been fully considered but are not persuasive. Arguments must be considered mere attorney speculation not supported by evidence. In re Scarborough, 500 F.2d 560,566 182 USPQ 298,302 (CCPA 1974). It is well settled that arguments of counsel unsupported by competent factual evidence of record are entitled to little weight. In re Payne, 606 F.2d 303,315, 203 USPQ 245,256 (CCPA 1979). Notwithstanding that fact, the Examiner notes that said arguments are not commensurate in scope with the claims, in part as claim 18 is not drawn a liquid crystal composition having negative dielectric anisotropy. (*) The Examiner notes that CLP-Vn-m is a species of the genus V-13 in claim 1.
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, 9-16, and 18 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) characterized that Hirschmann et al. teaches that the use of said compounds inclusive of the compounds of the present formulae BC and/or PH-1 are “preferred” ([0175]), “particularly preferred” ([0176]) and “very particular preference” ([0177]). 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.
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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