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 .
DETAILED ACTION
Claims 31, 32, 38, 41-45 and 48-59 are pending in the application. Claims 31, 32, 41-45, 48, 49 and 56-59 are rejected. Claims 38 and 50-55 are withdrawn from further consideration.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 3rd, 2026 has been entered.
Response to Amendment / Argument
On pages 33-35, Applicant traverses the prior art rejection over Jeong et al. under 35 USC 102(a)(1) and 102(a)(2). Applicant refers to the Office’s position regarding the option for one of Ar1 and Ar2 to be Ar-6 substituted by instances of R4 that are connected to form a ring. On page 35, Applicant refers to the amendment to claim 1 and that ‘the phrase “where two or more radicals R5 may be connected to each other to form a ring” from the definition of R5…”. This amendment does not address the scope where instances of R4 are taken together to form a ring. For this reason, the rejection under 35 USC 102 below is maintained.
On pages 36-39 of the response, Applicant traverses the rejection of claims under 35 USC 103 over Jeong et al. Applicant refers to the amendment to claim 31, which is not found persuasive for the reasons above. On page 37 of the response, Applicant discusses particular teachings of Jeong et al. relative to compounds of instant formula (I). Instant formula (I) still encompasses the use of the compound taught by Jeong et al. On page 38 of the response, Applicant refers to lack of experimental evidence regarding the compound cited under 35 USC 102. Applicant asserts that “it is unclear why a person skilled in the art would be motivated to select such compounds for use in the electron-blocking layer.” Applicant asserts that “it is unreasonable to expect a skilled person to undertake such extensive testing, particularly for the compound in question.” It is unclear if Applicant is attempting to imply that the prior art is not enabled for such testing; however, the prior art is presumed to be operable. See MPEP 2121. Furthermore, the instant claims are not limited to electron-blocking layers. Regardless, the prior art teaches the cited compound as a useful example. MPEP 2123(II) states: “Furthermore, "[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).”
On page 39 of the response filed February 3rd, 2026, Applicant states they will address the provisional double patenting rejection when the pending claims are otherwise allowable. Until such time, the provisional rejection is maintained.
All other objections and rejections made in the previous Office Action have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these objections and rejections will not be addressed.
Election/Restrictions
The instant claims are being examined according to MPEP 803.02 where the elected species is free of the prior art. Search and examination has been extended to include the species cited below under 35 USC 102 and to the species cited on the ground of nonstatutory double patenting. Furthermore, examination has been limited to claims embracing the elected species, which are claims 31, 32, 41-45, 48, 49 and 56-59 in accordance with MPEP 803.02.
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 42-45 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.
Claims 42-45 depend from claim 60, which has been cancelled. For the purposes of examination, the Examiner has interpreted the variable definitions as defined in claim 31.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 31, 32, 41-45, 48 and 49 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by WO 2017026727 A1 by Jeong et al.
The prior art teaches the following compound on page 16 of the original document (third row, left structure):
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The compound is embraced by Formula (I-A), the first structure in claim 43, Formula (I-A-2), Formula (I-A-2-2), Formula (I-I-2-2) and Formula (I-H-2-2) of claims 42-45 where R1 is an aromatic ring having 6 aromatic ring atoms (phenyl), each Z variable is CR2 where R2 is hydrogen, each R3 is straight-chain alkyl having 1 C atom, n is 0, m is 0, one of Ar1 and Ar2 is considered Ar-2 and the other is Ar-6 where the two terminal phenyl rings are substituted by R4 and connected to form a ring:
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The definitions above are embraced by instant claims 31, 32, 41, 42, 43, 44, 45, 48 and 49.
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.
Claim(s) 31, 32, 41-45, 48, 49 and 56-59 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017026727 A1 by Jeong et al.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Jeong et al. teach (page 1 of the machine translation): “The present invention relates to an organic electroluminescent device. More particularly, the present invention relates to an organic electroluminescent device comprising a specific hole transporting material and a specific electron blocking material.” The prior art further describes devices that contain compounds of general formulas on page 2 of the machine translation and where paragraph [15] of the original document depicts a formula (2). As an example of formula (2), the prior art teaches the following compound on page 16 of the original document (third row, left structure):
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The compound is embraced by Formula (I-A), the first structure in claim 43, Formula (I-A-2), Formula (I-A-2-2), Formula (I-I-2-2) and Formula (I-H-2-2) of claims 42-45 where R1 is an aromatic ring having 6 aromatic ring atoms (phenyl), each Z variable is CR2 where R2 is hydrogen, each R3 is straight-chain alkyl having 1 C atom, n is 0, m is 0, one of Ar1 and Ar2 is considered Ar-2 and the other is Ar-6 where the two terminal phenyl rings are substituted by R4 and connected to form a ring:
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The definitions above are embraced by instant claims 31, 32, 41, 42, 43, 44, 45, 48 and 49.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art is deemed to anticipate instant claims 31, 32, 41, 42, 43, 44, 45, 48 and 49 where anticipation is the epitome of obviousness. The prior art, however, does not teach explicit examples where the compound cited above was incorporated into compositions with an organic functional material, a solvent or device according to claims 56, 57, 58 and 59.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
The prior art teaches the arrangement of devices on page 7 of the machine translation as follows:
The organic electroluminescent device according to the present invention includes an anode, a cathode, and at least one organic film between the anode and the cathode, wherein the organic film includes a light emitting layer, An organic film including a compound and a compound represented by the following formula (2). Specifically, the organic layer including the compound represented by Formula 1 is a hole transport layer, and the organic layer including the compound represented by Formula 2 is an electron blocking layer, but the present invention is not limited thereto.
The prior art teaches an electronic device as required by claim 58, the presence of a hole transporting material as required by claim 56 as well as n anode, cathode, emitting layer and an electron blocking layer comprising a compound overlapping with the instant formula and embracing the structure depicted above. At least in the interest of determining which particular disclosed example would provide the best performance in the devices taught by the prior art, a person having ordinary skill in the art would have been motivated to test the disclosed examples (including the one depicted above) in analogous devices. Regarding instant claim 57, at least in the interest of synthesizing the prior art compound itself, a person having ordinary skill in the art would have been motivated to generate a reaction composition containing the compound as a final product where the various additional synthesis examples of the prior art employ a solvent for preparation and purification.
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 31, 32, 41—45, 48, 49 and 56-59 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23-28, 30, 32 and 34-45 of copending Application No. 17/608,495 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent are drawn to compounds overlapping with the instant claims. Claim 42 of the copending case recites structures embraced by the formulae including the following compound:
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The compound is embraced by instant formula (I) of claims 31 where Z1 is CR2 where R2 is hydrogen, R1 is an aromatic ring having 6 aromatic ring atoms and substituted by three radicals R5 that are fluorine, each Z1 is CR2 where R2 is hydrogen, each R3 is methyl, n is 0, m is 0, one of Ar1 and Ar2 is A4-4 and the other is Ar-139. These definitions are embraced by claims 31, 32, 41, 42 (formula (I-A)), 43 (first formula), 44 (Formula (I-A-2)), 45 (Formula (I-A-2-2)), 48 and 49. Regarding instant claims 56, 58 and 59, claim 23 of the copending case is drawn to an electronic device having the components of instant claim 59 (and further reading on instant claims 56 and 58) where a hole transport layer contains a compound of the copending case. Regarding instant claim 57, claim 40 of the copending case recites forming layers from solution such that a person having ordinary skill in the art would have been motivated to prepare a solution in a solvent to form the layer containing a compound of the copending case.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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