Prosecution Insights
Last updated: April 19, 2026
Application No. 16/092,860

HETEROCYCLIC COMPOUNDS COMPRISING DIBENZOFURAN AND/OR DIBENZOTHIOPHENE STRUCTURES

Non-Final OA §103§112
Filed
Oct 11, 2018
Examiner
GARRETT, DAWN L
Art Unit
1786
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Merck Patent GmbH
OA Round
9 (Non-Final)
72%
Grant Probability
Favorable
9-10
OA Rounds
3y 7m
To Grant
82%
With Interview

Examiner Intelligence

Grants 72% — above average
72%
Career Allow Rate
689 granted / 952 resolved
+7.4% vs TC avg
Moderate +10% lift
Without
With
+10.0%
Interview Lift
resolved cases with interview
Typical timeline
3y 7m
Avg Prosecution
74 currently pending
Career history
1026
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
43.7%
+3.7% vs TC avg
§102
15.6%
-24.4% vs TC avg
§112
24.4%
-15.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 952 resolved cases

Office Action

§103 §112
DETAILED ACTION Continued Examination Under 37 CFR 1.114 The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 10, 2025 has been entered. The claim amendment dated November 26, 2025 has been entered. Claims 1-18, 20-27, and 42-64 are cancelled claims. Claim 19 was amended. Claim 71 was added. Claims 19, 28-41, and 65-71 are pending. Claim Objections Claim 70 is objected to because of the following informalities: Claim 70 continues to contain many chemical structures that are not printed clearly. For instance, see Formula 6 where the compound is faintly printed and heteroatoms and bonding lines are not legible. Also, especially see compound Formulas 24, 30, 41, 51, 58, and 113. Appropriate correction is required. 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 19, 28-41, and 65-69 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. Claim 19 defines a variable “X”, but it is not seen where a “X” is presented within a Formula IIa. Accordingly, the meaning of X in the recited compounds is not understood. Claims depending from claim 19 are included within the rejection. Clarification and/or correction are required. 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 19, 28-30, 32, 34, 36, 38, 39, 65-68, 70, and 71 are rejected under 35 U.S.C. 103 as being unpatentable over Tanabe et al. (US 2009/0131673 A1). Regarding compounds of instant claim 19, Tanabe et al. teaches compounds for an organic light emitting device according to formula I: PNG media_image1.png 277 670 media_image1.png Greyscale (see paragraph [0008]). In the formula I, any one of R81 to R88, respectively, may be selected as substituted aryl per instant -L2-Q2 and either of R84 or R85, respectively, may be heteroaryl per instant -L1-Q1 (see par. 8, par. 67 heteroaryl definition, par. 64 aryl definition; see also claim 1 definitions on pages 50-51). A substituted aryl may comprise the substituent as G, which may be E as heteroaryl (see claim 1, pages 50-51). Par. 67 specifically defines heteroaryl groups to include triazine. Substitutions are taught in par. 70. Regarding claim 19, groups R84 and R86 may be the required groups, respectively, as discussed above (see par. 8, par. 67, par. 54). Regarding claims 19, 68, and 70, the group of Formula I taught by Tanabe (see par. 8) is a dibenzofuran group as shown in instant IIa of claim 19, respectively, or core groups of claim 70. Regarding instant Ar1 and instant claim 28, instant formula I does not require an Ar1 as present when both instant Q1 and Q2 are selected as Q-18. Regarding claim 29, carbazole or triarylamine group substitution is not required (see par. 8). Regarding claim 30, no “hole transporting groups” are required for a Formula I compound (see par. 8). Regarding claim 32, the material may be used in combination with other functional material such as light emitting material (see par. 102). Regarding claim 34, the material may be dissolved or dispersed in solvent (see par. 107). Regarding claim 36, the formula I compounds may be synthesized by coupling reaction(s) (see par. 112-168). Regarding claims 38 and 71, the material is used in a light emitting device (see par. 109). Regarding claim 39, a photoreceptor, solar cell, or organic EL device may be formed among others (see par. 110). While Tanabe does not set forth an exemplified compound of the Formula I of claim 19 including the specific heteroaryl groups per instant Q1 and Q2 on a dibenzofuran core at the respective bonding positions of the dibenzofuran core per instant Formula IIa or compounds of claim 70, Tanabe Formula I is defined to include the instant required groups on a dibenzofuran that may be at bonding positions as claimed. Given the teachings of the reference, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form a Formula I material of the reference wherein resultant compounds would also meet the limitations of the instant claims. One would expect to achieve function Formula I compounds within the disclosure of Tanabe for an operational light emitting device with a predictable result and a reasonable expectation of success. Regarding claims 65 and 70, paragraph 67 specifically defines heteroaryl groups to include triazine as discussed above. Regarding claims 66, 67, and 70, an aryl group (see par. 8) per a linking group L2 may be phenylene (see par. 64). Claims 31, 33, 35, 37, 40, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Tanabe et al. (US 2009/0131673 A1) ) in view of Parham et al. (US 2012/0223276). Tanabe et al. is relied upon as set forth above. Tanabe et al. teaches the dibenzofuran compounds may be used as host material (see par. 86). Regarding instant claim 31 and the recitation of “An oligomer, polymer, or dendrimer comprising one or more compounds…”, primary reference Tanabe et al. does not expressly teach that the material of Formula I may be bonded as part of an oligomer, polymer or dendrimer compound structure. In analogous art, Parham ‘276 teaches a heterocyclic material used as a matrix (host) material in an organic electroluminescent device may be bonded to a polymer, oligomer or dendrimer structure (see Parham-‘276, par. 76-79). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed a polymer, dendrimer or oligomer structure using Formula I compounds as described by Tanabe et al., because one would expect a polymer, oligomer, or dendrimer bonded to the Formula I compound(s) to result in similarly useful light emitting layer material for an organic electroluminescent device as material in the form of polymeric, oligomeric or dentrimeric matrix material as taught by Parham ‘276. One would expect to achieve functional polymers, oligomers or dendrimers bonded to a Formula I compound as disclosed within the prior art references with a predictable result and a reasonable expectation of success. Regarding claim 33, Tanabe et al. teaches Formula I material may be used in combination with other functional material such as light emitting material (see par. 102). Regarding claim 34 and 35, the Tanabe et al. formula I material may be dissolved or dispersed in solvent (see par. 107). Regarding claims 36 and 37, the Tanabe et al. formula I compounds may be synthesized by coupling reaction(s) (see par. 112-168). In addition, secondary reference, Parham, teaches a Suzuki coupling synthesis method of joining a heterocycle radical in a coupling reaction with an electron transporting group (see Parham page 117, par. 147). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized a known type of coupling reaction as disclosed by Parham in forming formula I compounds as taught by Tanabe, because one would expect known coupling reaction synthesis steps resulting in desired final product compounds in solution to be similarly useful in forming compounds as taught within Tanabe formula I with a predictable result and a reasonable expectation of success. Regarding claims 40 and 41, the Tanabe formula I compounds are part of an organic electroluminescent device (par. 109-110). Claims 19, 28-30, 32, 34, 36, 38, 39, and 65-71 are rejected under 35 U.S.C. 103 as being unpatentable over Dyatkin et al. (US 2016/0329502 A1). Dyatkin et al. teaches OLED organic compounds with two triazine rings attached to an aromatic or heteroaromatic ring system core (see abstract). More specifically, compounds are according to Formula I (see par. 17), which read upon instant formula (I) compounds of independent claim 19: PNG media_image2.png 65 257 media_image2.png Greyscale A and B may each be nitrogen-containing group such as the following (see par. 18): PNG media_image3.png 105 110 media_image3.png Greyscale R1, R2 may include hydrogen or aryl (see par. 19) and the triazine group is the same as instant Q-18 group of instant claim 19 and comprises two per instant claim 65. L1 and L2 are defined as including aryl group (see par. 20) and n and m are each 0 to 3. Note that one of n or m may be 1 while the other is selected as zero. Further note that aryl is defined as at least phenyl per instant claims 66 and 67. The core “Z” group of Formula I may be dibenzofuran or dibenzothiophene or aza derivatives thereof (see par. 23) and at least the following are shown: PNG media_image4.png 101 151 media_image4.png Greyscale PNG media_image5.png 99 140 media_image5.png Greyscale PNG media_image6.png 88 314 media_image6.png Greyscale PNG media_image7.png 96 125 media_image7.png Greyscale PNG media_image8.png 92 315 media_image8.png Greyscale PNG media_image9.png 268 320 media_image9.png Greyscale PNG media_image10.png 276 337 media_image10.png Greyscale PNG media_image11.png 137 306 media_image11.png Greyscale PNG media_image12.png 130 325 media_image12.png Greyscale PNG media_image13.png 134 305 media_image13.png Greyscale PNG media_image14.png 135 315 media_image14.png Greyscale . [Note that where the bonding lines are into the central portion of the ring the bonding position may be present at any carbon bonding location of the ring.] While it is not seen where an example formula I compound the same as instant formula (IIa) is set forth in Dyatkin et al., given the teachings of the reference as discussed above, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to form material of the reference defined formula I wherein the resultant compound would also meet the limitations of the instant claims. One would expect to achieve functional compound for an operational device within the disclosure of Dyatkin et al. with a predictable result and a reasonable expectation of success. Regarding claims 19 and 70, “Z” groups within par. 23 as discussed above meet the bonding location requirements of a core group according to claims 19 and 70. Regarding claims 68 and 69, dibenzofuran and dibenzothiophene groups are taught (see par. 23). Regarding claim 28, an instant Q group having an Ar1 group is not required to be present on an instant formula (I) compound. Regarding claim 29, Dyatkin et al. formula I compounds described above do not require a carbazole or triarylamine group be present. Regarding claim 30, the groups of a Dyatkin et al. formula I as described above are not considered to have a “hole-transporting” group. Regarding claim 32, Dyatkin et al. teaches the compounds of formula I may be used in combination with host material in a light emitting layer (see par. 127). Further, Dyatkin et al. teaches the material of formula I is used in an organic layer of a device and may be used in combination with other functional materials (see par. 69-72, 80-81, and claim 10 on page 91). Regarding claim 34, compounds of formula I are in solvent at the end of the synthesis process (see par. 119). Regarding claim 36, a method for forming compounds of formula I includes a step of joining an electron-transport group (i.e., a Dyatkin nitrogen-containing group A and/or B) to the core “Z” group of formula 1 (see par. 118). Regarding claims 38, 39, and 71, the compounds are part of an organic electroluminescent device (see abstract and claim 9 at page 85). Claims 31, 33, 35, 37, 40, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Dyatkin et al. (US 2016/0329502 A1) in view of Parham et al. (US 2012/0223276). Dyatkin et al. is relied upon as set forth above. Regarding instant claim 31 and the recitation of “An oligomer, polymer, or dendrimer comprising one or more compounds…”, primary reference Dyatkin et al. does not expressly teach that the material of Formula I may be bonded as part of an oligomer, polymer or dendrimer compound structure. In analogous art, Parham ‘276 teaches a heterocyclic material used as a matrix (host) material in an organic electroluminescent device may be bonded to a polymer, oligomer or dendrimer structure (see Parham-‘276, par. 76-79). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed a polymer, dendrimer or oligomer structure using Formula I compounds as described by Dyatkin et al., because one would expect a polymer, oligomer, or dendrimer bonded to the Formula I compound(s) to result in similarly useful as matrix (host) material for an organic electroluminescent device as material in the form of polymeric, oligomeric or dentrimeric matrix material as taught by Parham ‘276. One would expect to achieve functional polymers, oligomers or dendrimers bonded to a Formula I compound as disclosed within the prior art references with a predictable result and a reasonable expectation of success. Regarding claim 33, Dyatkin et al. teaches the compounds of formula I may be used in combination with host material in a light emitting layer (see par. 127). The material is used in an organic layer of a device and may be used in combination with other functional materials (see par. 69-72, 80-81, and claim 10 on page 91). Regarding claim 35, Dyatkin compounds of formula I are in solvent at the end of the synthesis process (see Dyatkin par. 119). Regarding claim 37, a method for forming compounds of Dyatkin formula I includes a step of joining an electron-transport group (i.e., a nitrogen-containing group A and/or B) to the core “Z” group of formula 1 (see Dyatkin par. 118). In addition, secondary reference, Parham, teaches a Suzuki coupling synthesis method of joining a dibenzothiophene radical in a coupling reaction with an electron transporting group (see page 117, par. 147). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized a known type of coupling reaction as disclosed by Parham in forming formula I compounds as taught by Dyatkin, because one would expect known coupling reaction synthesis steps resulting in desired final product compounds in solution to be similarly useful in forming compounds as taught within Dyatkin formula I with a predictable result and a reasonable expectation of success. Regarding claims 40 and 41, the Dyatkin compounds are part of an organic electroluminescent device (see abstract and claim 9 at page 85). Response to Arguments Applicant's arguments filed November 26, 2025 have been fully considered but they are not persuasive. Applicant argues Tanabe et al. “discloses an extraordinarily large number of possible compounds” and “in no way discloses or suggests the instantly claimed compounds”. In response, the office maintains compounds the same as claimed are with the defined formula taught by Tanabe et al. While many compounds may be within the taught formula, note that MPEP 2123 sets forth “"[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).” Applicant further alleges impermissible hindsight. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The office submits compounds as claimed contain groups as expressly defined by Tanabe et al. for arriving at a compound and there is no relied upon “modification” without factual support expressly within the prior art reference set forth in the obviousness rejection. On page 21 of the remarks, applicant appears to question how every compound of possible compounds within Tanabe et al. would provide a predictable result. Note that a prior art reference is relevant for all that it teaches. Further, the office submits applicant’s allegation that not every compound with the teachings of Tanabe et al. would be predictably useful is not further supported by any experimental or factual evidence provided by applicant. Applicant suggests Dyatkin teaches preferred bonding positions and variables as shown in exemplified compounds that are likely as successful (pages 23-24 of remarks). The office submits ““Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)”. Applicant has not argued or shown persuasive comparative data commensurate in scope with the claimed compounds to show that the specifically claimed compounds have unexpectedly improved properties of statistical significance. Applicant suggests on page 24 of the remarks that additional data was conducted. The cited example is only of one compound versus a single comparative compound. Further, applicant has not described the specific structures of the example devices compared. None of the claims are limited to the single compound Eg1 and if the compound is in a specifically layered device structure, the claims are not limited to the scope of that tested device structure. The two tested compounds are respectively not commensurate in scope with the breadth of claimed compounds and compounds taught by the prior art. The additional experiments do not appear persuasive to overcome the rejections over the currently pending claims and furthermore, the additional examples are not presented in the form of a signed declaration. MPEP 2145 sets forth “arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).” Conclusion The art made of record and not relied upon is considered pertinent to applicant's disclosure: Fan, C., Duan, C., Han, C., Han, B., & Xu, H. (2016). Dibenzothiophene sulfone-based phosphine oxide electron transporters with unique asymmetry for high-efficiency blue thermally activated delayed fluorescence diodes. ACS Applied Materials & Interfaces, 8(40), 27383-27393. The reference discusses advantages in an asymmetrically substituted dibenzothiophene derivative. The reference is considered relevant to the state of the art. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dawn Garrett whose telephone number is (571)272-1523. The examiner can normally be reached Monday through Thursday (Eastern Time). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /DAWN L GARRETT/Primary Examiner, Art Unit 1786
Read full office action

Prosecution Timeline

Oct 11, 2018
Application Filed
Mar 26, 2021
Non-Final Rejection — §103, §112
Jun 25, 2021
Response Filed
Aug 25, 2021
Final Rejection — §103, §112
Nov 01, 2021
Response after Non-Final Action
Nov 04, 2021
Response after Non-Final Action
Nov 15, 2021
Request for Continued Examination
Nov 16, 2021
Response after Non-Final Action
Feb 01, 2022
Non-Final Rejection — §103, §112
May 09, 2022
Response Filed
Jun 13, 2022
Final Rejection — §103, §112
Oct 14, 2022
Request for Continued Examination
Oct 19, 2022
Response after Non-Final Action
Feb 02, 2023
Non-Final Rejection — §103, §112
Jul 06, 2023
Response Filed
Aug 22, 2023
Final Rejection — §103, §112
Jan 25, 2024
Request for Continued Examination
Jan 29, 2024
Response after Non-Final Action
Mar 29, 2024
Non-Final Rejection — §103, §112
Jul 02, 2024
Response Filed
Sep 07, 2024
Final Rejection — §103, §112
Mar 10, 2025
Request for Continued Examination
Mar 11, 2025
Response after Non-Final Action
Apr 17, 2025
Response after Non-Final Action
Jan 28, 2026
Non-Final Rejection — §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

9-10
Expected OA Rounds
72%
Grant Probability
82%
With Interview (+10.0%)
3y 7m
Median Time to Grant
High
PTA Risk
Based on 952 resolved cases by this examiner. Grant probability derived from career allow rate.

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