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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/03/2026 has been entered.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 and 15-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As amended, independent claims 1 and 11 each include the limitation below.
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There is no apparent support in the written description for such an “if/then” statement. This newly added proviso is not simply just carving out a single compound or a readily envisaged negative limitation but is instead an exclusion based on specific combinations of variables. The fairness of a new matter rejection hinges on whether that specific “carve out” was ever contemplated or if it creates a newly claimed sub-genus. While MPEP 2163.05(i) allows negative limitations to overcome the prior art, an Applicant cannot simply add a negative limitation that is created through the picking and choosing from multiple variable selections to create a sub-genus that was not originally identified. The originally filed disclosure does not provide any specific description of this sub-genus or any rationale linking the selection of R51 and R52 to specific selections from R10. These specific conditions leading to the proviso are not disclosed to suggest that Applicant had possession of such an exclusion.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 21 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 21 limits R10 to be “a phenyl group substituted with two deuterated phenyl groups” whereas claim 1 from which it depends requires R10 to be selected from 10-1, 10-2, 10-4, 10-5, 10-7 to 10-9, 10-11, 10-12, 10-14 to 10-16, 10-18, 10-19, 10-21 to 10-23, 10-26, 10-28 to 1-30, 10-32, 10-33, and 10-35 to 10-64 which does not include all phenyl groups substituted with deuterated two phenyl groups. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 20 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al (US 2018/0375036) (Chen).
In reference to claim 20, Chen teaches the compound of the formula as shown below.
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For example, wherein two of RD are fused to form a benzene, RA, RB, and RC are each hydrogen, R is a phenyl group, and L1 is CR’R”, R’ and R” are each hydrogen or in other words a compound 226820 wherein L1 is CH2 instead of O (Chen p. 82; [0056] [0054] [0046]).
Chen discloses the compounds that encompasses the presently claimed compound, including wherein two of RD are fused to form a benzene, RA, RB, and RC are each hydrogen, R is a phenyl group, and L1 is CR’R”, R’ and R” are each hydrogen or in other words a compound 226820 wherein L1 is CH2 instead of O. Each of the disclosed substituents from the substituent groups of Chen are considered functionally equivalent and their selection would lead to obvious variants of the compound.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, in the absence of unexpected results, to have selected these substituents among those disclosed for compound to provide the compound described above, which is both disclosed by Chen and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
For Claim 20: Reads on 1.
Claim 1-7, 9, 11-12, 15-19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Min et al (US 2020/0280003) (Min).
In reference to claim 21, Min teaches the compound of formula 12 as shown below
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for example the compound 105 as shown above (Min p. 60) except wherein R5 and R6 are each hydrogen, X11 is N(R1a), R1a is a deuterium substituted terphenyl and R1 is hydrogen (Min [0048] to [0070]).
Min discloses the compound of formula 1 that encompasses the presently claimed compound, including wherein R5 and R6 are each hydrogen, X11 is N(R1a), R1a is a deuterium substituted terphenyl and R1 is hydrogen. Each of the disclosed substituents from the substituent groups of Min are considered functionally equivalent and their selection would lead to obvious variants of the compound.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, in the absence of unexpected results, to have selected these substituents among those disclosed for the compound of formula 1 to provide the compound described above, which is both disclosed by Min and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Min further teaches that this material is included in an organic light emitting device comprising the compound as a dopant in an emitting layer comprising a host in addition to hole transport and electron transport layers between an anode and a cathode (Min [0200]; [0228]; [0229]) and further teaches that the host can be combinations of materials including e.g. TPBI and CBP that are electron transport and hole transport hosts, respectively (Min [0263]).
While Min does not exemplify a device with this specific configuration, it would have been obvious to the ordinarily skilled artisan to have used this exemplified material in the taught device configuration of Min with the anticipation of providing a functionally similar device to those exemplified therein.
For Claim 1: Reads on a device of formula 1-2 wherein CY1 is benzene, CY2 is Benzene, CY3 is benzene, L1 is N, R3 is phenyl and R3 and L1 are fused to form a ring with CY3, CY4 is pyridine, R10 is group 10-58, b1 is 2, R11 is methyl, R2 is t butyl, R4 is t butyl, R51 and R52 are each phenyl, and M1 is Pt.
For Claim 2: Reads on the claimed layers.
For claim 3: Reads on the emission layer.
For Claim 4: Reads on host and dopant.
For Claim 5: Reads on two hosts.
For Claim 6: Reads on a hole and electron host.
For Claim 9: Reads on apparatus.
For Claim 11: Reads on formula 1-2 wherein CY1 is benzene, CY2 is Benzene, CY3 is benzene, L1 is N, R3 is phenyl and R3 and L1 are fused to form a ring with CY3, CY4 is pyridine, R10 is group 10-58, b1 is 2, R11 is methyl, R2 is t butyl, R4 is t butyl, R51 and R52 are each phenyl, and M1 is Pt.
For Claim 12: Reads on CY1-1, CY2-1, CY3-1, CY4-1.
For Claim 15: Reads on wherein each R is hydrogen or alkyl .
For Claim 16: Reads on hydrogen.
For Claim 17: Reads on L-1.
For Claim 18: Reads on L-2.
For Claim 19: Reads on formula 1-1A.
For Claim 21: Reads on formula 1-2 wherein CY1 is benzene, CY2 is Benzene, CY3 is carbazole, L1 is a bond, CY4 is pyridine, R10 is phenyl substituted with a R10A that is a deuterated phenyl, R2 is t butyl, R4 is t butyl, R51 and R52 are each methyl, and M1 is Pt.
In reference to claim 7, Min teaches a device of claim 1 as described above. While Min does not specifically teach that the emission is in the claimed range, as the emissive material in the light emitting layer is identical to that instantly claimed, such an emission is expected to be inherent in the device.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I). Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 772. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, 195 USPQ 430.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Min et al (US 2020/0280003) (Min) as applied to claim 9 above and further in view of Yamakazi et al. (US 2005/0197031) (Yamakazi).
In reference to claim 10, Min teaches the device as described above. Min does not expressly teach that the device is used in device structures with the specific components instantly claimed.
With respect to the difference, Yamakazi teaches, in analogous art, device structures for display devices including housing members, display portions, color filters etc. (Yamakazi [0078] [0206] [0300] etc).
It would have been obvious to the ordinarily skilled artisan to have used the device structure features that are well known and typical in the art as described by Yamakazi in preparing a consumer product with the EL device of Min.
Claim 8 are rejected under 35 U.S.C. 103 as being unpatentable over Min et al (US 2020/0280003) (Min) in view Kondo et al (US 2019/0211219) (Kondo).
In reference to claim 8, Min teaches the device as described above for claim 1 but does not specifically point to a capping layer with a specific refractive index. With respect to the difference, Kondo teaches, in analogous art, EL device structures including a capping layer with a high refractive index and exemplifies those with refractive indices between 1.5 and 2.0 therein (Kondo [207] etc. Table 3). Kondo further teaches that the use of this film with high refractive index improves light extraction efficiency (Kondo [0206]). In light of the motivation of using the capping layer film as described above, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the capping layer film as described by Kondo in order to improve light extraction efficiency and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 08/03/2026 have been fully considered but they are not persuasive.
In reference to the rejections under 35 USC 102, Applicant’s amendments have excluded the specific compounds pointed to in the previous office action. However, the disclosures of Min still encompass the claimed subject matter as set forth above herein. Applicant argues that the new limitation restricting R10 to select groups when R51 and R52 are selected from phenyl groups was not clearly disclosed or suggested by the prior art of record. However, Applicant does not appear to have clearly disclosed or suggested this limitation in any more detail or clarity than as described by Min. There is no previous linkage described between R10 selections and R51 and R52 selections. Such a selection is just as obvious from the disclosure of Min as from Applicant’s own disclosure.
Applicant’s remarks concerning claim 16 are moot as such rejection is clarified herein above.
In reference to the rejections under 35 USC 103 over Bae, the arguments are moot as the claims are no longer rejected over Bae.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean M DeGuire whose telephone number is (571)270-1027. The examiner can normally be reached Monday to Friday, 7:00 AM - 5:00 PM.
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/Sean M DeGuire/Primary Examiner, Art Unit 1786
