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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/12/2025 has been entered.
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,844,266. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed and copending inventions are of overlapping scope.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,858,949. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed and copending inventions are of overlapping scope.
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.
Claims 11-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bae et al (US 2020/0392173) (Bae).
In reference to claims 11-19, Bae teaches the compound 78 as shown below that reads on the instant claims (Fleetham [0230] p 56).
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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 phenyl substituted with a R10A that is a C4 alkyl group, R2 is t butyl, R4 is t butyl, R51 and R52 are each methyl, and M1 is Pt.
For Claim 12: Reads on CY1-1, CY2-1, CY3-1, CY4-1.
For Claim 13: Reads on R10 is phenyl substituted with a C4 alkyl group.
For Claim 14: Reads on 10-17.
For Claim 15: Reads on wherein each R is hydrogen, alkyl or phenyl.
For Claim 16: Reads on alkyl.
For Claim 17: Reads on L-1.
For Claim 18: Reads on L-2.
For Claim 19: Reads on formula 1-1A.
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 1-7 and 9, 11-21 are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al (US 2020/0392173) (Bae).
In reference to claim 20, Bae teaches the compound 78 as shown above for claim 1.
The difference between the cited compound and the instantly claimed compound 30 is merely that of positional isomers of a tert-butyl group. It is noted that compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). In light of the case law cited above, it therefore would have been obvious to one of ordinary skill in the art that the compound disclosed in the present claims is but an obvious variant of the compound presently claimed, and thereby one of ordinary skill in the art would have arrived at the claimed invention
For Claim 20: Reads on 30.
In reference to claim 21, Bae teaches the compound 78 as shown above for claim 1 that is a member of the broader genus described therein of formula 1-1 wherein Ar1 is represented by formula Ar1-1. In Ar1-1, the groups E# can be selected as a substituted phenyl groups wherein substituents are deuterium (Bae [0014]; [0026] [0029] [0039]).
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Bae discloses the compound of formula 1 that encompasses the presently claimed compound, including the groups E# can be selected as a substituted phenyl groups wherein substituents are deuterium. Each of the disclosed substituents from the substituent groups of Bae 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 Bae and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
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.
For Claims 1-6 and 9, Bae teaches the material as described above for claim 11 and 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 (Bae [0004] [0288) 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 (Bae [0289]).
While Bae 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 Bae with the anticipation of providing a functionally similar device to those exemplified therein.
In reference to claim 7, Bae teaches a device of claim 1 as described above. While Bae 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 Bae et al (US 2020/0392173) (Bae) as applied to claim 9 above and further in view of Yamakazi et al. (US 2005/0197031) (Yamakazi).
In reference to claim 10, Bae teaches the device as described above. Bae 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] [300] 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 Bae.
Claim 8 are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al (US 2020/0392173) (Bae) in view Kondo et al (US 2019/0211219) (Kondo).
In reference to claim 8, Bae 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 11/12/2025 have been fully considered but they are not persuasive.
In reference to the outstanding double patenting rejections, Applicant argues that the rejections are improper as the patents 11844266 and 11858949 do not have a common assignee and do not have common inventors with the instant claims and consequently are not commonly owned. However, the patents in question are owned by Samsung Electronics Co., Ltd. or owned by both Samsung Electronics Co., Ltd. and by Samsung SDI Co, Ltd. The instant application is assigned to Samsung Display Co., Ltd which appears to be a subsidiary of Samsung Electronics Co., Ltd. and a presumptionof common ownership has been made. The double patenting rejections have been maintained herein. If, in fact, there is no common ownership of these patents, please clarify this on the record.
Additionally, if there is no common ownership of these patents, rejections of the instant claims under 35 USC 102 and 35 USC 103 are provided herein as a lack of common ownership would make the corresponding publications qualify as prior art under 35 USC 102(a)(2).
Applicants remarks concerning Fleetham are convincing as applicant has perfected the priority of the instant application.
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