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, Amendment and Remarks filed 16 March 2026, whereby claim 18 was canceled, and claim 22 newly added. Subsequently, claims 1-3, 5-13, 15-17, and 19-22 are 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 filed 16 March 2026 in response to the rejection of claims under 35 U.S.C. 103 over Junge et al. (European Patent No. EP 3 884 011 B1), as set forth in paragraph 7 of the previous FINAL office action on the merits, said arguments essentially to the effect that the limitation that the chiral dopant is “in an amount of 0.01 to 2% by weight” distinguished the claimed liquid-crystalline medium from that of the prior art of record, have been fully considered but they are not persuasive.
Initially, the Examiner notes that applicant’s remarks in the third paragraph on page 11 are confusing because it is claim 22 that is newly added, and not “new claim 19”, and it is claim 18 that has been canceled, and not “claim 19, now canceled”?
In response to applicant's argument that the cited prior art is silent on the problems with respect to chiral phase behavior and undesirable textures arising when a chiral liquid-crystalline medium containing a comparatively high dye concentration is used, the fact that the inventor may have recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that amended claim 1 and newly added claim 22 differ from the disclosure of Junge et al. in that Junge does not disclose any concentration limits on the chiral compound, have been considered but are moot because the new ground of rejection relies upon a secondary reference not applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Notwithstanding that fact, 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).
In response to applicant's argument that claim 19 and newly added claim 22 (please the following paragraph 5) differ from the disclosure of Junge et al. in that Junge does not disclose “the claimed combination of formula R/S-5011 with the compound of formula I”, the Examiner kindly refers applicants’ to the secondary reference, i.e., van Raak et al., which expressly teaches as much, and with the chiral compound in an amount is as now claimed, as “preferred”.
Claim Objections
Applicant is advised that should claim 19 be found allowable, newly added claim 22 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-3, 5-13, 15-17, and 19-22 are rejected under 35 U.S.C. 103 as being obvious over Junge et al. (European Patent No. EP 3 884 011 B1) in view of van Raak et al. (U.S. Patent Application Publication No. 2022/0220383).
Junge et al. discloses a liquid-crystalline medium, and the corresponding use thereof said liquid-crystalline medium in each of a switching element ([0004], p. 3) as well as a window (examples; claims), characterized in that said liquid-crystalline medium comprises a combination of compounds inclusive of the compounds of the present invention:
at least one dichroic dye (p. 69: [0102], [0106]), as represented therein by the each of the compounds of formula I
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and formula II
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([0017], p. 4) in an amount as is claimed: preferably, the two or more compounds selected from the group of compounds of formula I and the two or more compounds selected from the group of compounds of formula II are present in the liquid-crystalline medium overall in a total concentration which is in the range of 0.01% by weight to 30% by weight, more preferably 0.025% by weight to 25% by weight, even more preferably 0.05% by weight to 15% by weight, still even more preferably 0.1% by weight to 10% by weight and particularly preferably 0.5% by weight to 5% by weight (p. 121: [0211]).
at least one compound inclusive of the compound of the present formula I as generally represented therein by
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(p. 142),
at least one compound inclusive of the compound of the present formula III as recited in claim 6, as generally represented therein by any one of
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([0170], p. 108), and more specifically, at least one compound inclusive of the compound of the present formula III-a as recited in claim 7, as generally represented therein by any one of
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(p. 109),
at least one compound inclusive of the compound of the present formula IV as recited in claim 6, as generally represented therein by any one of
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([0121]. p. 79),
at least one compound inclusive of the compound of the present formula V as recited in claim 6, as generally represented therein by
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([0120], p. 78).
Suitable chiral compounds (p. 121: [0214]) and usual procedures in this regard are known in the art, and Table F (p. 158+: [0263]) lists particularly preferred chiral compound that can be added to the LC medium, including at least one chiral dopant inclusive of the compounds recited in each of claims 19 and 20, as generally represented therein by
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([0263], p. 160).
Although Example 22 ([0336], p. 175)
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expressly illustrates a liquid-crystalline medium characterized by comprising at least one dichroic dye, i.e., compounds of formulae I-1, I-4, II-1, II4
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and in an amount of 3.11%, i.e., 0.566% + 0.847% + 0.730% + 0.967%, which meets the claimed limitation of “in an amount of 1% by weight or more” and at least one compound inclusive of the compound of present formula I, i.e., CP-8-N and CP-9-N:
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([0293], p. 167-8), Junge et al. does not expressly illustrate the incorporation of one or more chiral compounds as is now claimed.
van Raak et al. is relied upon for its teaching of a liquid-crystalline medium, and the corresponding use thereof said liquid-crystalline medium in each of a switching element as well as a window (claims), characterized in that said liquid-crystalline medium “preferably” comprises at least one chiral compound, in particular R-5011 or S-5011 ([0141+], p. 8; [0314], p. 21) in a % by weight of less than 2% and at least one compound inclusive of the compound of the present formula I, as represented therein by CP-n-N ([0313], p. 21), as well as “preferably” at least one dichroic dye in a % by weight of 0.1 to 25% ([0266+], p. 19).
It would have been obvious to one of ordinary skill in the requisite art at the time the invention was filed to include one or more chiral dopants in the liquid-crystalline medium of Junge et al., as generally taught therein Table F, and in an amount as is now claimed in light of the teachings in van Raak et al., with reasonable expectations of achieving, absent object evidence to the contrary, the advantages taught therein, as well as those associated with their use 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, 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
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