DETAILED ACTION
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 1, 2025 has been entered.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6, 8, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO 2019132399). A machine translation is being used for WO 2019132399.
Considering Claims 1-3 and 5-6: Kim et al. teaches a compound of the formula
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194
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(pg. 12) or
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209
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(pg. 13), which reads on formula 1, where N-Het is a substituted triazine/C3 heterocyclic group substituted with C6 monocyclic aryl groups, R1-R6 are hydrogen, L1 and L2 are direct bonds, Z1 is a group of Chemical Formula 1-1, X1 is O or S, R21-25 are hydrogen, and X is O.
Kim et al. does not teach an example where one of R21-24 is selected from the claimed substituents. However, Kim et al. teaches that each of the positions on the dibenzofuran or dibenzothiophene can be substituted with cyano, C1-10 alkyl, C6-20 aryl, or C2-30 heteroalkyl group (pg. 7). It would have been obvious to a person of ordinary skill in the art to have substituted one or more of the hydrogen atoms of compounds 50 or 62 of Kim et al. with a cyano, C1-10 alkyl, C6-20 aryl, or C2-30 heteroalkyl group, and the motivation to do so would have been, as Kim et al. suggests, it is one of a finite number of named substituents on the position in the formula of Kim et al.
Considering Claim 7: When selecting the phenyl species of substituent in Kim et al., with the structure of claim 50 or 62, the modified compound reads on compound 1-73 and 1-93.
Considering Claim 8: Kim et al. teaches an organic light emitting device (100) comprising a cathode (110)/first electrode, and anode (120)/second electrode opposite to the first electrode, and an organic light emitting layer (130) comprising the compound provided between the anode and cathode (Fig. 1).
Considering Claims 13 and 14: Kim et al. teaches the compound as being in the light emitting layer, and teaches that it can function as a host material (pg. 11).
Considering Claim 15: Kim et al. teaches an auxiliary layer chosen from hole injecting layer, hole transport layer, electron transporting layer, electron blocking layer, electron transporting layer, or hole blocking layer (pg. 15).
Claims 9-12 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO 2019132399) as applied to claims 1 and 8 above, and further in view of Sasabe et al. (Advanced Materials, Vol. 24, No. 24, 2012, 3212-3217).
Considering Claims 9-12: Kim et al. teaches the device of claim 8 as shown above. Kim et al. teaches that an additional host material can be included in the emission layer (pg. 11).
Kim et al. does not teach the additional material as being of the claimed structure. However, Sasabe et al. teaches using
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as a host material for a light emitting device (Abstract). Kim et al. and Sasabe et al. are analogous art as they are concerned with the same field of endeavor, namely light emitting devices. It would have been obvious to a person of ordinary skill in the art to have used the host material of Sasabe et al. in the layer of Kim et al., and the motivation to do so would have been, as Sasabe et al. suggests, they are excellent host materials for blue phosphorescent OLED (Conclusions).
Considering Claims 16: Kim et al. teaches the composition of claim 1 as shown above. Kim et al. teaches that an additional host material can be included in the emission layer (pg. 11).
Kim et al. does not teach the additional material as being of the claimed structure. However, Sasabe et al. teaches using
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as a host material for a light emitting device (Abstract). Kim et al. and Sasabe et al. are analogous art as they are concerned with the same field of endeavor, namely light emitting devices. It would have been obvious to a person of ordinary skill in the art to have used the host material of Sasabe et al. in the layer of Kim et al., and the motivation to do so would have been, as Sasabe et al. suggests, they are excellent host materials for blue phosphorescent OLED (Conclusions).
Considering Claim 17: Kim et al. is silent towards the ratio of the compound of claim 1 and an additional host. However, Kim et al. teaches that the additional host improves charge mobility and stability (pg. 11), and thus the amount of the compound would be considered to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the amount of two host compounds through routine experimentation, and the motivation to do so would have been, as Kim et al. suggests, to improve the charge mobility and stability (pg. 11).
Considering Claim 18: Kim et al. teaches preparing a substrate, applying the cathode onto the substrate, applying the organic materials on the cathode, and applying the anode on the organic material (pg. 16).
Considering Claim 19: Kim et al. teaches using vacuum vapor deposition to form the organic layer (pg. 19).
Response to Amendment
The declaration under 37 CFR 1.132 filed August 1, 2025 is insufficient to overcome the rejection of claims 1-19 based upon Kim et al. (WO 2019132399) as set forth in the last Office action because:
A) The declaration provides opinion evidence as to the obviousness of the claimed structure in view of the teachings of Kim et al. Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application meets the requirements of 35 U.S.C. 112 is not entitled to any weight; however, facts supporting a basis for deciding that the specification complies with 35 U.S.C. 112 are entitled to some weight); In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, "some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him." 385 F.2d at 456, 155 USPQ at 524 (emphasis in original)). See MPEP § 716.01(c).
While the Office agrees with the declarant’s conclusion that Kim et al. does not teach an anticipatory compound that teaches condition 4, as set forth in the declaration, the declarants assertion that use of the claimed substituents would not be obvious is being given no patentable weight, as this is an issue of law. Kim et al. teaches that each of the positions on the dibenzofuran or dibenzothiophene can be substituted with cyano, C1-10 alkyl, C6-20 aryl, or C2-30 heteroalkyl group (pg. 7). It would have been obvious to a person of ordinary skill in the art to have substituted one or more of the hydrogen atoms of compounds 50 or 62 of Kim et al. with a cyano, C1-10 alkyl, C6-20 aryl, or C2-30 heteroalkyl group, and the motivation to do so would have been, as Kim et al. suggests, it is one of a finite number of named substituents on the position in the formula of Kim et al.
The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397. See MPEP § 2143.
B) The declarant’s argument of unexpected results is not persuasive. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02(d).
The instant claims cover a large number of compounds with disparate features and functional groups (see instant claim 7). The small number of examples shown in the original specification do not establish that the claimed effect would be present throughout the entirety of the claim scope. This is highlighted by the fact that compounds that were originally in the scope of chemical formula I, but that have been excluded from the claim by amendment, do not have the alleged property, despite being closer in structure to the exemplified compounds than some of those remaining within the claim scope.
Response to Arguments
Applicant's arguments filed August 1, 2025 have been fully considered but they are not persuasive, because:
A) The declaration provides opinion evidence as to the obviousness of the claimed structure in view of the teachings of Kim et al. Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application meets the requirements of 35 U.S.C. 112 is not entitled to any weight; however, facts supporting a basis for deciding that the specification complies with 35 U.S.C. 112 are entitled to some weight); In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or applicant’s opinion on the ultimate legal issue is not evidence in the case, "some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him." 385 F.2d at 456, 155 USPQ at 524 (emphasis in original)). See MPEP § 716.01(c).
While the Office agrees with the applicant’s conclusion that Kim et al. does not teach an anticipatory compound that teaches condition 4, as set forth in the declaration, the applicants assertion that use of the claimed substituents would not be obvious is being given no patentable weight. Kim et al. teaches that each of the positions on the dibenzofuran or dibenzothiophene can be substituted with cyano, C1-10 alkyl, C6-20 aryl, or C2-30 heteroalkyl group (pg. 7). It would have been obvious to a person of ordinary skill in the art to have substituted one or more of the hydrogen atoms of compounds 50 or 62 of Kim et al. with a cyano, C1-10 alkyl, C6-20 aryl, or C2-30 heteroalkyl group, and the motivation to do so would have been, as Kim et al. suggests, it is one of a finite number of named substituents on the position in the formula of Kim et al.
The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397. See MPEP § 2143.
B) The applicant’s argument of unexpected results is not persuasive. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02(d).
The instant claims cover a large number of compounds with disparate features and functional groups (see instant claim 7). The small number of examples shown in the original specification do not establish that the claimed effect would be present throughout the entirety of the claim scope. This is highlighted by the fact that compounds that were originally in the scope of chemical formula I, but that have been excluded from the claim by amendment, do not have the alleged property, despite being closer in structure to the exemplified compounds than some of those remaining within the claim scope.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767