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 2, 4, 6-10, 14-16, 18, 20, 22, 25-31 of N. Thompson et al., US 16/922,571 (July 7, 2020) are pending, under examination on the merits and are rejected.
Election/Restrictions
Applicant previously elected of Group (I) (currently, Group (I) consists of claims 2, 4, 6-10, 20, 22, 25, 26, 27, 28, 29, 30 and 31) drawn to a compound having a structure of formula I), without traverse in the Reply to Restriction Requirement filed on July 29, 2022.
New independent claim 29 corresponds to previous independent claim 13 (now cancelled) and claim 29 now replaces claim 13 as a linking claim among Groups (I)-(VI) in conformity with the restriction issued on July 14, 2022.
Claims 14, 15, 16 and 18 to the non-elected inventions of Groups (II)-(IV) and (VI) stand withdrawn from consideration pursuant to 37 CFR 1.142(b). In view of the foregoing, the restriction requirement is maintained as FINAL.
Pursuant to the Election of Species Requirement, Applicant elected the following species:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
The elected species searched and determined to be free of the art of record. The search was extended to the full scope of claims 2, 4, 6-10, 14-16, 18, 20, 22, 25-27, and 28-30, which were determined to be free of the art of record. The provisional election of species requirement is withdrawn and all claims previously withdrawn as not reading on the elected species are rejoined.
Rejoinder
Claims 28 and 29 are free of the art of record. Claims 14, 15, 16 and 18, previously withdrawn from consideration as a result of a restriction requirement, require all the limitations of claims 28 and 29. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement among inventions (I)-(VI), as set forth in the Office action mailed on July 14, 2022, is hereby withdrawn and claims 14, 15, 16 and 18 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or non-statutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. See MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look to how the claim term is used in the prior art, which includes prior art patents, published applications, trade publications, and dictionaries. MPEP § 2111.01 (III). However, specific embodiments of the specification cannot be imported into the claims, particularly where the subject claim limitation is broader than the embodiment. MPEP § 2111.01(II).
Interpretation of GD (donor group) and GA (acceptor group)
Claim 1 recites that “GD is a donor group and GA is an acceptor group”. The current application is directed to thermally activated delayed fluorescence (TADF) compounds of the donor-acceptor type for use as hosts in OLED devices. Specification at page 1, [0006]. As known in the art, a successful design strategy for TADF molecules is an intra-/intermolecular donor−acceptor (D−A) system exhibiting a charge-transfer (CT) transition, and such systems have achieved excellent OLED performance. See e.g., M. Mamada et al., 3 ACS Central Science, 769-777 (2017) (“Mamada”); H. Uoyama et al., 492 Nature (2012). As does the instant specification at page 7, [0054], the terms “donor” and “acceptor” in this art respectively refer to (and are interchangeable with) “electron donor” and “electron acceptors”.
As such, the claims term “donor group” is broadly and reasonably interpreted, consistent with the specification, as any chemical group/moiety that can donate electrons, relative to hydrogen, whether by resonance or inductive effects. J. March, ADVANCED ORGANIC CHEMISTRY REACTIONS, MECHANISMS AND STRUCTURE (4th ed., 1992) (see page 273 under “Resonance and Field Effects”).
Similarly, the claim term “acceptor group” is broadly and reasonably interpreted, consistent with the specification, as any chemical group/moiety that can accept electrons, relative to hydrogen, whether by resonance or inductive effects. J. March, ADVANCED ORGANIC CHEMISTRY REACTIONS, MECHANISMS AND STRUCTURE (4th ed., 1992) (see page 273 under “Resonance and Field Effects”).
Withdrawal Claim Rejections
The claim rejections stated in the previous Office action are withdrawn in view of Applicant’s amendments.
Claim Objections
Improper Claim Numbering
Dependent claims 2, 4, 6-10, 14-16, 18, 20, 22, and 25-27 are objected to because they improperly numerically precede independent their independent base claims. Dependent claims should be numbered after respective independent claims. That is, a series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim. MPEP § 608.01(n)(IV). This objection can be obviated, for example, by cancelling claims 2, 4, 6-10, 14-16, 18, 20, 22, and 25-27 and adding them as new claims.
Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). A claim is indefinite when it contains words or phrases whose meaning is unclear. MPEP § 2173.05(e) (citing In re Packard, 751 F.3d 1307, 1314, 110 USPQ2d 1785, 1789 (Fed. Cir. 2014)).
Unclear Antecedent Basis in Claims 28 and 29
Independent claims 28 and 29 (and their dependent claims 2, 4, 6-10, 14-16, 18, 20, 22, 25-27, and 30) are rejected under 35 U.S.C. 112(b) as indefinite because independent claims 28 and 29 each recite:
Claims 28 and 29 . . . wherein at least one phenyl bonded to the Si or tetravalent C is directly bonded to at least two GA . . .
and it is unclear which “one phenyl bonded to the Si or tetravalent C” is referenced because numerous occurrences of “phenyl bonded to the Si or tetravalent C” are possible within Formula I of claims 28 and 29. MPEP § 2173.05(e). For example, structurally undefined L1 and L2 may include “phenyl bonded to the Si or tetravalent C”. In another example, GD is defined using open-ended ‘comprising’ language and may therefore also include “phenyl bonded to the Si or tetravalent C”. In still another example, each of the G1 structures contains “phenyl bonded to the Si or tetravalent C”.
As discussed in the MPEP a lack of clarity could arise where a claim refers to "said lever" or "the lever," where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. MPEP § 2173.05(e). Similarly, if two different levers are recited earlier in the claim, the recitation of "said lever" in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended. MPEP § 2173.05(e). A claim which refers to "said aluminum lever," but recites only "a lever" earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made. MPEP § 2173.05(e).
Here is unclear what specific “phenyl bonded to the Si or tetravalent C” is required by the subject limitation to be “directly bonded to at least two GA”.
Dependent claims 2, 4, 6-10, 14-16, 18, 20, 22, 25-27, and 30 do not cure the issue.
Claim Rejections - 35 USC § 102 (AIA )
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.
§ 102(a)(1)/(2) over K. Gray et al., US 2018/0002597 (2018) (“Gray”)
New claim 31 is rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by K. Gray et al., US 2018/0002597 (2018) (“Gray”). Gray discloses the following compound.
PNG
media_image2.png
200
400
media_image2.png
Greyscale
This compound meets each and every limitation of claim 31, compound XXXIX-(i)(k), where D1 is structure D1 and A1 is structure A11.
Claim Rejections – Improper Markush Grouping
New claim 31 is rejected on the judicially created basis it is directed to an improper Markush grouping of alternatives. MPEP § 2117(II). The rejection is on the grounds that the members of claims 31 (directed to seven completely different core structures) do not share a ‘single structural similarity’.
Relevant MPEP Discussion
“A Markush grouping is proper if the members of a group share a single structural similarity and a common use”. MPEP § 2117(I). A Markush claim may be rejected under judicially approved "improper Markush grouping" principles when the claim contains an improper grouping of alternatively useable members. A Markush claim contains an "improper Markush grouping" if either: (1) the members of the Markush group do not share a "single structural similarity" or (2) the members do not share a common use. MPEP § 2117(II) (citing 76 Federal Register 7162-7175 (2011); In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).
Members of a Markush group share a "single structural similarity" when they belong to the same recognized physical or chemical class or to the same art-recognized class. . MPEP § 2117(II)(A). A recognized physical class, a recognized chemical class, or an art-recognized class is a class wherein there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. MPEP § 2117(II)(A).
Where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the compounds do not appear to be members of a recognized physical or chemical class or members of an art-recognized class, the members are considered to share a "single structural similarity" and common use when the alternatively usable compounds share a “substantial structural feature” that is essential to a common use. MPEP § 2117(II)(B).
The Improper Markush Rejection
In the instant case, the claimed Markush group alternatives are disclosed to share the common use of thermally activated delayed fluorescence (TADF). MPEP § 2117(II) (“the alternatives . . . share a common function or use when they are disclosed in the specification or known in the art to be functionally equivalent in the context of the claimed invention”). However, the claimed Markush members do not share a "single structural similarity".
The Claimed Alternatives Are not Members of a Physical, Chemical, or Art-Recognized Class and do not Share a “Single Structural Similarity”
The claim 31 Markush group comprises alternatives constructed by mixing and matching thirteen cores (seven of which are completely different) with variables D1 and A1.
The alternatives are not recognized as belonging to any physical or chemical class or members of an art-recognized class. There is no art of record (or other evidence of knowledge in the art in the Application’s file) providing an expectation from the knowledge in the art that all the members of the claim 1 Markush grouping will behave in the same way in the context of the claimed invention. MPEP § 2117(II)(A).
Where the alternatives do not belong to a recognized class as above, the members of the Markush grouping may still be considered to be proper where the alternatives share a “substantial structural feature that is essential to a common use”. MPEP § 2117(II)(B) However, in view of the generic nature of claim 31, there is clearly no common structural feature among the claimed alternatives meeting the requirements of a “single structural similarity”.
The Markush Grouping Is Improper
In view of the foregoing, the instantly claimed compound alternatives falling within the scope of instant claim 31 do not: (1) share a "single structural similarity" because they do not belong to the same recognized physical or chemical class or to the same art-recognized class; or (2) share a “substantial structural feature” that is essential to a common use because the claimed generic formulae do not comprise a “substantial structural feature”.
This is a rejection on the merits and may be appealed to the Patent Trial and Appeal Board in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1). MPEP 2117(III).
Subject Matter Free of the Art of Record
Claims 2, 4, 6-10, 14-16, 18, 20, 22, 25-30 are free of the art of record. The closest art of record is § 102(a)(1) over B. Park et al., KR 20160069021 (2016) (“Park”).
Park discloses compounds of formula (1) capable of improving the light emitting efficiency, the driving voltage and the lifetime of the device, the organic electric device. Park at page 95 of 195. The closest Park compound is example 5-18.
PNG
media_image3.png
200
400
media_image3.png
Greyscale
Park at page 36 of 95.
Park compound 5-18 does not meet the independent claim 28 or claim 29 limitation of:
Claims 28 and 29 . . . wherein at least one phenyl bonded to the Si or tetravalent C is directly bonded to at least two GA,
wherein each of the at least two GA is independently nitrile or comprises at least one of the chemical moieties selected from the group consisting of isonitrile, borane, pyridine, pyrimidine, pyrazine, triazine, aza-carbazole, aza-dibenzothiophene, aza-dibenzofuran, aza-dibenzoselenophene, aza-triphenylene, pyrazole, oxazole, thiazole, isoxazole, isothiazole, thiadiazole, and oxadiazole . . .
In the chemical arts obviousness rational based on structural modification is stated as motivation to select a known compound and also motivation to structurally modify the selected compound in a particular way to achieve a claimed compound. MPEP § 2143(I)(B) (see for example, MPEP § 2143(I)(B) Example 9, citing Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 87 USPQ2d 1452 (Fed. Cir. 2008). 1
Here, one of ordinary skill is not motivated by Park or secondary art to select compound 5-18 (Park does not point to compound 5-18, synthesize compound 5-18 or employ compound 5-18 in a working example) and thereafter structurally modify compound 5-18 so as to arrive at a compound of instant claims 28 or 29.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ALEXANDER R PAGANO whose telephone number is (571)270-3764. The examiner can normally be reached 8:00 AM through 5:00 PM.
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, Scarlett Goon can be reached at 571-270-5241. 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.
ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 In the chemical arts, a "lead compound" obviousness analysis is often applied; the “lead compound” analysis requiring initial motivation to select a prior art compound and thereafter still further motivation to make the specific structural modifications thereto so as to arrive at a claimed compound. See MPEP § 2143(B) (discussing “lead compound cases” in Examples 9-11 with respect to pharmaceutical applications). However, the MPEP warns against applying the lead compound analysis rigidly in view of the flexible approach stated in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) see also, MPEP § 2143(B), Example 11 (citing Altana Pharma AG v. Teva Pharm. USA, Inc., 566 F.3d 999, 91 USPQ2d 1018 (Fed. Cir. 2009) a ‘restrictive view of the lead compound test would present a rigid test similar to the teaching-suggestion-motivation test that the Supreme Court explicitly rejected in KSR’).