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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/01/2026 has been entered.
Status of Claims
Claims 1 and 7-8 are amended due to Applicant's amendment dated 05/01/2026. Claims 1-9 and 16-26 are pending.
Response to Amendment
The rejection of claims 7-8 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 as set forth in the previous Office Action is overcome due to the Applicant’s amendment dated 05/01/2026. The rejection is withdrawn.
The rejection of claims 7-8 under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 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 as set forth in the previous Office Action is overcome due to the Applicant’s amendment dated 05/01/2026. The rejection is withdrawn.
The rejection of claims 1-9 and 16-26 under 35 U.S.C. 103 as being unpatentable over Nakano (US 2021/0066599 A1) in view of Bae (English translation of KR 20180113015 A obtained from Google Patents) and Han (Han, Si Hyun, et al. "Ideal blue thermally activated delayed fluorescence emission assisted by a thermally activated delayed fluorescence assistant dopant through a fast reverse intersystem crossing mediated cascade energy transfer process." Journal of Materials Chemistry C 7.10 (2019): 3082-3089.) is overcome due to the Applicant’s amendment dated 05/01/2026. The rejection is withdrawn.
The provisional rejection of claims 1-9 and 16-25 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of co-pending application No. 18/095,295 herein revised to reflect the amended claims due to Applicant’s reply dated 05/01/2026.
Response to Arguments
Applicant’s arguments on pages 22-25 of the reply dated 05/01/2026 with respect to the rejection of claims 1-9 and 16-26 as set forth in the previous Office Action have been fully considered but they are not persuasive.
Applicant's argument –On pages 22-24, Applicant argues that the previously cited references fail to teach the amended claims which requires RIX to be selected from groups that do not include a C1-C4 alkyl.
Examiner's response –As discussed in greater detail in the rejection below, Nakano in view of Bae and the newly cited reference Hatakeyama (English translation of WO 2019235402 A1 obtained from Global Dossier) teach a compound of the amended claims wherein RIX is hydrogen and RVIII is a C1 alkyl. Accordingly, the cited references teach the claims as amended.
Applicant's argument –On pages 23-24, Applicant requests that as the claims have been amended, the provisional obvious-type double patenting rejection of claims 1-9 and 16-25 should be withdrawn without requiring a terminal disclaimer.
Examiner's response –As discussed in the provisional double patenting rejection below, compound 3 of ‘295 reads on the amended Formula 1 of claim 1. Accordingly, the amended claims do not overcome the provisional double patenting rejection over copending Application No. 18/095,295. Accordingly, the provisional double patenting rejection is not overcome and the rejection is maintained. Additionally, as no terminal disclaimer has been filed, the rejection is maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9 and 16-26 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano (US 2021/0066599 A1) in view of Bae (English translation of KR 20180113015 A obtained from Google Patents) and Hatakeyama (English translation of WO 2019235402 A1 obtained from Global Dossier).
Regarding claims 1-9 and 16-26, Nakano teaches a compound represented by formula (1), which may be further represented by formula (5), wherein the compound is used as a material for an organic electroluminescence device and provides the device with long lifetime (abstract, ¶ [0006], and [0119]). Examples of compounds represented by formula (1) include the compound below on pg. 36. The organic EL device comprises a substrate, an anode, an emitting layer, and a cathode, wherein the emitting layer comprises a dopant material and a host material, and the compound represented by formula (1) is preferably the dopant material (¶ [0298] and [0320]-[0323]) (claims 16-25). Nakano teaches the layers of the device may be formed by dry film-forming method such as vacuum deposition (evaporation) or a wet film-forming method such as spin-coating (i.e., from solution) (¶ [0368]) (claim 26).
formula (5):
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compound on pg. 36:
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Nakano’s compound fails to read on the claimed Formula II as it comprises fluorene groups. However, Nakano teaches X1 and X1A may be C(R28)2 and C(R28A)2, respectively, wherein examples of R28 and R28A include substituted or unsubstituted aryl groups having 6 to 50 ring carbon atoms, and two adjacent R28 may form a ring and two adjacent R28A may form a ring (¶ [0012], [0087], [0095], [0124]-[0125], and [0128]).
Bae teaches an organic light emitting device including a novel compound represented by formula (1), wherein examples thereof include compound 1 (abstract and beginning of pg. 4; pg. 9). The compound obtains high Tg due to the stability of the spirobifluorene group, and thus has a long thin film stability during device operation, thereby obtaining a long life (middle of pg. 6). Bae teaches if the compound were to comprise fluorene and not spirobifluorene, a relatively low Tg is formed and thus the lifetime may be lowered (middle of pg. 6). Accordingly, Bae teaches providing a spirobifluorene group instead of a fluorene group provides a compound with high Tg, long thin film stability, and improved lifetime.
formula (1):
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compound 1:
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Therefore, as Nakano teaches each of R28 and R28A may be unsubstituted aryl groups having 6 ring carbon atoms that combine to form a ring, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to substitute each fluorene group of Nakano’s compound with an unsubstituted spirobifluorene group as shown in Bae’s compound 1, based on the teaching of Bae. The motivation for doing so would have been to provide the compound with high Tg, long thin film stability, and improved lifetime, as taught by Bae.
Nakano in view of Bae:
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366
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The compound of Nakano in view of Bae fails to read on the claimed Formula I as RIV to RXI are each hydrogen. However, Nakano does teach R1 to R11 may be a substituted or unsubstituted alkyl group including 1 to 50 carbon atoms (¶ [0015]).
Hatakeyama teaches a polycyclic aromatic compound represented by general formula (1) having a substituent introduced to a specific position (Z1) (¶ [0010]-[0012]). Such a compound provides an organic electroluminescent element with high emission efficiency and short delayed fluorescence lifetime (¶ [0037]). Examples of compounds represented by general formula (1) include BN2p-m-0001 (¶ [0099]).
general formula (1):
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BN2p-m-0001:
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The compound of Nakano in view of Bae reads on Hatakeyama’s general formula (1) except wherein it does not contain a substituent Z1.Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to substitute a hydrogen atom in the location of Nakano’s R4 with a methyl group, as shown in Hatakeyama’s BN2p-m-0001, to arrive at a compound of Hatakeyama’s general formula (1), based on the teachings of Hatakeyama. The motivation for doing so would have been to provide a device with high emission efficiency and short delayed fluorescence lifetime, as taught by Hatakeyama.
The modified compound of Nakano in view of Bae and Hatakeyama is reproduced below in comparison to the claimed Formula I and II. As the modified compound of Nakano in view of Bae and Hatakeyama comprises spirobifluorene groups and not fluorene groups, the modified compound is expected to obtain Bae’s benefits of high Tg, long thin film stability, and improved lifetime, as discussed above. Additionally, the modified compound of Nakano in view of Bae and Hatakeyama reads on Hatakeyama’s general formula (1) wherein: Z1 is an alkyl having 1 carbon atom; R1 to R10 are each hydrogen; X1 and X2 are each N-R wherein R is aryl (see Hatakeyama, ¶ [0012]). Accordingly, the modified compound of Nakano in view of Bae and Hatakeyama is expected to obtain the benefits of Hatakeyama.
Formula I:
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Formula II:
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Nakano in view of Bae and Hatakeyama:
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The modified compound reads on the claimed Formulas I, II, and IIf (claim 4) wherein:
R1 and R2 are each a second chemical moiety of Formula II (claim 2);
RI to RVII and RIX to RXI are each hydrogen, and RVIII is a C1 alkyl (methyl) (claims 7-9);
n and s are each 1, and thus m and r are each 0;
T and V are each a single bond;
At each occurrence RA1, RA3, and RA4 are each hydrogen, and RA2 is the binding site of a single bond linking the second chemical moiety to Formula I (claims 5-6 and 9); and
At each occurrence RA5, RA6, RA15, and RA16 are not required to be present, and RA7 to RA14 and RA17 to RA20 are each hydrogen (claims 5-6 and 9).
Per claim 3, the modified compound alternatively reads on the Formula II wherein:
n and s are each 0, and thus m and r are each 1;
T and V are not required to be present;
At each occurrence RA1, RA3, and RA4 are each hydrogen, and RA2 is the binding site of a single bond linking the second chemical moiety to Formula I;
At each occurrence RA5 to RA20 are hydrogen;
RA5 forms a polycyclic ring system with the substituent of the group RA6, and RA15 forms a polycyclic ring system with the substituent of the group RA16.
Accordingly, the modified compound reads on the Formula IIe and thus meets the limitations of claim 3.
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 1-9 and 16-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/095,295. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 13 and 20 of ‘295 recite compounds and a device that meet the limitations of claims 1-9 and 16-25 of ‘017.
For example, claims 13 and 20 of ‘295 recites compound 3 below which reads on the limitations of claims 1-9 of ‘017.
Formula I of ‘017:
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Formula II of ‘017:
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Compound 3 of ‘295:
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Compound 3 of ‘295 reads on the claimed Formulas I, II, and IIf (claim 4) wherein:
R1 and R2 are each a second chemical moiety of Formula II (claim 2);
RI, RIII, to RV, RVII, RVIII, RX, and RXI to RVIII are each hydrogen, and RII is a C4 alkyl (t-butyl) and RVI and RIX are each an unsubstituted C6 aryl (phenyl) (claims 7-9);
n and s are each 1, and thus m and r are each 0;
T and V are each a single bond;
At each occurrence RA2, RA3, and RA4 are each hydrogen, and RA1 is the binding site of a single bond linking the second chemical moiety to Formula I (claims 5-6 and 9); and
At each occurrence RA5, RA6, RA15, and RA16 are not required to be present, and RA7 to RA14 and RA17 to RA20 are each hydrogen (claims 5-6 and 9).
Compound 3 of ‘295 alternatively reads on the Formula II wherein:
n and s are each 0, and thus m and r are each 1;
T and V are not required to be present;
At each occurrence RA1, RA3, and RA4 are each hydrogen, and RA2 is the binding site of a single bond linking the second chemical moiety to Formula I;
At each occurrence RA5 to RA20 are hydrogen;
RA5 forms a polycyclic ring system with the substituent of the group RA6, and RA15 forms a polycyclic ring system with the substituent of the group RA16.
Accordingly, compound 3 of ‘295 reads on the Formula IIe and thus reads on the limitations of claim 3.
Additionally, ‘295 recites Formula 1 in claims 1, 6, 14, and 19, Formulas 1-1 to 1-3 in claims 2 and 15, Formulas 2-1 to 2-7 in claims 3 and 16, Formula 3 in claims 4 and 17, Formulas 3-1 to 3-3 in claims 5 and 18. As evidenced by the compounds in claims 13 and 20 of ‘295, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to select variables of Formula 1, Formulas 1-1 to 1-3, Formulas 2-1 to 2-7, Formula 3, and Formulas 3-1 to 3-3 to arrive at the instant claimed Formulas I and II comprising the limitations of claims 1-9 of ‘017 because it would have been choosing from a list of variables specifically taught, which would have been a choice from a finite number of identified, predictable solutions of a compound possessing the benefits taught by ‘295. One of ordinary skill in the art would have been motivated to produce additional compounds represented by of Formula 1, Formulas 1-1 to 1-3, Formulas 2-1 to 2-7, Formula 3, and Formulas 3-1 to 3-3 having the benefits taught by ‘295 in order to pursue the known options within his or her technical grasp with a reasonable expectation of success. See MPEP 2143.I.(E).
Additionally, claims 1-13 of ‘295 correspond to claims 16-25 of ‘017. In particular, claims 1-13 of ‘295 recite a light emitting element comprising a first electrode; a second electrode; and an emission layer therebetween which comprises a first compound represented by Formula 1; and at least one of a second compound represented by Formula HT-1, a third compound represented by Formula ET-1, or a fourth compound represented by Formula M-b. The first compound is considered a luminescent material, the second and third compounds are considered hosts, and the fourth compound is a dopant (see ¶ [0169], [0176], [0179], and [0184] of ‘295). It would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to use a compound of ‘295 (for example, compound 1) as described above in a light emitting element comprising the limitations of claims 1-13 of ‘295, because one of ordinary skill in the art would reasonably have expected the elements of the compound represented by Formula 1 and the light emitting element to predictably maintain their respective properties or functions after they have been combined, and this would have been combining prior art elements according to known methods to yield predictable results. See MPEP 2143.I.(A).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRAELYN R WATSON whose telephone number is (571)272-1822. The examiner can normally be reached M-F 7:30am-5pm.
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/BRAELYN R WATSON/Examiner, Art Unit 1786
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