DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
All outstanding objections and rejections, except for those maintained below, are withdrawn in light of applicant's amendment filed on 11/24/2025.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 11/24/2025. In particular, the scope of claims 1, 12, and 13 have been narrowed. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, 7, 13, 15, and 20 are rejected 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 pre-AIA the applicant regards as the invention.
Claim 1 recites Formula 2-1 as:
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where R9 and R10 are hydrogen and f and g are each independently an integer of 0 to 4. This combination of limitations renders the scope of the claim indefinite given that it unclear how one is able to obtain a stable compound when f and g have values that str less than four (4). That is, when the integers f and 4 are in the range of zero (0) to three (3), the compound is a radical. In order overcome this rejection Applicants are advised to amend the claim to recite that f and g are both four (4).
Claim 7 recites Formulas 4-1 and 4-2:
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where Y2 corresponds to Formula 2:
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Given that Formulas 4-1 and 4-2 in as-amended claim 7 appear to be identical, it is unclear what are the differences, if any, between these two formulas, thereby rendering the scope of the claim indefinite.
Furthermore, it is noted that the claim recites that R9-1 and R10-1 are hydrogen and f’ and g’ are each independently an integer of 0 to 4. This combination of limitations renders the scope of the claim indefinite given that it unclear how one is able to obtain a stable compound when f’ and g’ have a value that is less than four (4). That is, when the integers f’ and g’ are in the range of zero (0) to three (3) the compound is a radical. In order overcome this rejection Applicants are advised to amend the claim to recite that f’ and g ‘are both four (4).
Claim 13 recites Formula 2-1 as:
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where R9 and R10 are hydrogen and f and g are each independently an integer of 0 to 4. This combination of limitations renders the scope of the claim indefinite given that it unclear how one is able to obtain a stable compound when f and g have values that str less than four (4). That is, when the integers f and 4 are in the range of zero (0) to three (3), the compound is a radical. In order overcome this rejection Applicants are advised to amend the claim to recite that f and g are both four (4).
Claim 15 recites Formulas 4-1 and 4-2:
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where Y2 corresponds to Formula 2:
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Given that Formulas 4-1 and 4-2 in as-amended claim 15 appear to be identical, it is unclear what are the differences, if any, between these two formulas, thereby rendering the scope of the claim indefinite.
Furthermore, it is noted that the claim recites that R9-1 and R10-1 are hydrogen and f’ and g’ are each independently an integer of 0 to 4. This combination of limitations renders the scope of the claim indefinite given that it unclear how one is able to obtain a stable compound when f’ and g’ have a value that is less than four (4). That is, when the integers f’ and g’ are in the range of zero (0) to three (3) the compound is a radical. In order overcome this rejection Applicants are advised to amend the claim to recite that f’ and g ‘are both four (4).
Claim 20 recites Compound 61 as:
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which renders the scope of the claim indefinite for the following reasons. Claim 20 depends from claim 13, and claim 13 recites Formula 1 as:
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where Y1 and Y2 correspond to Formula 2-1:
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and Z1 and Z2 are both methyl groups. Given that Formula 2-1 requires that methyl is present on both phenyl groups of the aromatic amine, it is unclear how Compound 61 recited in claim 20 can possess an aromatic amine group that is not substituted by a methyl group.
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.
Claims 7 and 15 are 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 7 recites Formulas 4-1 and 4-2 as:
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where Y2 corresponds to Formula 2:
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and where Z1 and Z2 are both methyl groups and R9 and R10 are hydrogen. As amended claim 7 fails to limit the scope of the claim 1 for the following reasons. Claim 1 recites the formula:
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where Y1 and Y2 correspond to Formula 2-1:
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In the claims, R1 to R5, R9 and R10 are hydrogen, Z1 and Z2 are both methyl groups; X1 to X4 are NR8, where R8 is a phenyl group. Thus, the formula in claim 1 represents a single compound, which is also encompassed by claim 7, i.e. given that claim 1 encompasses a single compound, the formulas of claim 7 cannot further limit the scope of claim 1, and therefore, the requirements of 35 U.S.C. 112 (d) have not been met.
Claim 15 recites Formulas 4-1 and 4-2 as:
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where Y2 corresponds to Formula 2:
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and where Z1 and Z2 are both methyl groups and R9 and R10 are hydrogen. As amended claim 14 fails to limit the scope of the claim 13 for the following reasons. Claim 13 recites the formula:
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where Y1 and Y2 corresponds to Formula 2-1:
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In the claim 13, R1 to R5, R9 and R10 are hydrogen, Z1 and Z2 are both methyl groups; X1 to X4 are NR8, where R8 is a phenyl group. Thus, the formula in claim 13 represents a single compound, which is also encompassed by claim 15, i.e. given that claim 13 encompasses a single compound, the formulas of claim 15 cannot further limit the scope of claim 13, and therefore, the requirements of 35 U.S.C. 112 (d) have not been met.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al (US 2020/0190115, cited on IDS filed on 10/18/2021, hereafter Hatakeyama ‘115).
Regarding claim 1, Hatakeyama ‘115 discloses the following organic light emitting device (Figure 1):
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where layer 102 corresponds to the recited first electrode; layer 108 corresponds to the recited second electrode; layers 103 to 107 correspond to the recited organic layer; and layer 105 corresponds to the recited light emitting layer ([0144]). The positive electrode (102) and negative electrode (108) are formed from a metal such as aluminum (Al) or gold (Au) ([0152] and [0431]).
The light emitting layer (105) comprises the following compound ([0058] and Page 4 – Compound (1-1A):
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This compound corresponds to the compound represented by Formula (1):
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where X1 to X4 are NR8, where R8 is a phenyl group; and R1 to R5 are H. Y1 and Y2 correspond to Formula (2-1) of the claims:
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where R9 and R10 are H; and Z1 and Z2 are H.
In the compound of the reference, recited Formula (2-1) does not satisfy the requirement that Z1 and Z2 are methyl groups as recited in the present claims. However, the compound disclosed by the reference is just one embodiment and attention directed to Paragraph [0041]. This section of the reference discloses that in the recited formula:
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Y1 and Y2, corresponding to the diarylamino groups discussed above, can be substituted by a C1-12 alkyl ([0047]). Accordingly, the disclosure of the reference encompasses an embodiment where in Formulas (2-1) and (2-2) Z1 and Z2 are methyl groups.
While the reference fails to exemplify the presently claimed organic light emitting device nor can the claimed organic light emitting device be "clearly envisaged" from the reference as required to meet the standard of anticipation, nevertheless, in light of the overlap between the claimed organic light emitting device and the organic light emitting device disclosed by the reference, absent a showing of criticality for the presently claimed compound, it is urged that it would have been within the skill level of one of ordinary skill in the art, to use the compound an organic light emitting device which is both disclosed by the reference and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 2, Hatakeyama ‘115 teaches all the claim limitations as set forth above. As discussed above, the reference discloses the following organic light emitting device:
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In this device the organic layer comprises: a hole injection layer (103) and a hole transport layer (104), corresponding to the recited hole transport region, on the first or positive electrode (102); a light emitting layer (105) on the hole transport region; an electron transport layer (106) and electron injection layer (107), corresponding to the recited electron transport region, and located on the light emitting layer (105). As discussed above, the light emitting layer (105) comprises the disclosed compound.
Regarding claim 3, Hatakeyama ‘115 teaches all the claim limitations as set forth above. As discussed above, the light emitting layer comprises the disclosed compound. Given that the reference discloses a light emitting layer comprising a compound encompassed by the present claims, it is the Office’s position that the light emitting layer necessarily emits delayed fluorescence as recited in the present claim.
The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed compound. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a light emitting layer comprising the claimed compound. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 4, Hatakeyama ‘115 teaches all the claim limitations as set forth above. Additionally, the reference discloses that the light emitting layer comprises the compound as a dopant ([0587] – Table 1 – Compound 1-1, and [0465] – synthesis of Compound 1-1) and further comprises a host compound ([0587] – host compound EMH1).
As discussed above, the light emitting layer comprises the disclosed compound. Given that the reference discloses a light emitting layer comprising a compound encompassed by the present claims, it is the Office’s position that the light emitting layer necessarily emits delayed fluorescence as recited in the present claim.
The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed compound. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a light emitting layer comprising the claimed compound. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 7, Hatakeyama ‘115 teaches all the claim limitations as set forth above. From the discussion above, recited Formula 1 corresponds to Formula (4-1) and (4-2):
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and
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where Z1-1 and Z2-1 are methyl groups; R9-1, R10-1, R11-1 and R12-1 are H.
Regarding claim 12, Hatakeyama ‘115 discloses the following organic light emitting device (Figure 1):
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where layer 102 corresponds to the recited first electrode; layer 108 corresponds to the recited second electrode; layers 103 to 107 correspond to the recited organic layer; and layer 105 corresponds to the recited light emitting layer ([0144]). The positive electrode (102) and negative electrode (108) are formed from a metal such as aluminum (Al) or gold (Au) ([0152] and [0431]).
The light emitting layer (105) comprises the following compound ([0058] and Page 4 – Compound (1-1A):
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Paragraph [0041] discloses that the diarylamino groups can be substituted by a C1-12 alkyl ([0047]). Accordingly, the disclosure of the reference encompasses Compound 61 of the claims:
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While the reference fails to exemplify the presently claimed organic light emitting device nor can the claimed organic light emitting device be "clearly envisaged" from the reference as required to meet the standard of anticipation, nevertheless, in light of the overlap between the claimed organic light emitting device and the organic light emitting device disclosed by the reference, absent a showing of criticality for the presently claimed compound, it is urged that it would have been within the skill level of one of ordinary skill in the art, to use the compound an organic light emitting device which is both disclosed by the reference and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al (US 2020/0190115, cited on IDS filed on 10/18/2021, hereafter Hatakeyama ‘115) as applied to claims 1-4, 7, and 12 above, and in view of Hatakeyama et al (US 2015/0236274, hereafter Hatakeyama ‘274).
The discussion with respect to Hatakeyama ‘115 as set forth in Paragraph 19 above is incorporated here by reference.
Regarding claim 5, Hatakeyama ‘115 teaches all the claim limitations as set forth above. Additionally, the reference discloses that the compound discussed above (Page 38 - Compound 1-1):
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has a high triplet excitation energy ([0570]). However, the reference does not disclose that the electron transport layer comprises the disclosed compound.
Hatakeyama ‘274 discloses a polycyclic aromatic compound in which aromatic rings are linked via a heteroelement such as boron, phosphorus, oxygen, nitrogen or sulfur, has a large HOMO-LUMO gap (band gap Eg in a thin film) and high triplet excitation energy (ET) ([0046]). Compounds with high triplet excitation energy are also useful in an electron transport layer in an organic light emitting device using thermally activated delayed fluorescence ([0046]).
Given that both Hatakeyama ‘115 and Hatakeyama ‘274 are drawn to organic light emitting devices containing polycyclic aromatic compound in which aromatic rings are linked via a heteroelement such as boron, phosphorus, oxygen, nitrogen or sulfur, and given that Hatakeyama ‘274 discloses that such compounds can be utilized in electron transport layers, it would have been obvious to one of ordinary skill in the art to utilize the compound disclosed by Hatakeyama ‘115 in an electron transport layer with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
In light of the amendments to the claims, the 35 U.S.C. 112 (b) rejections set forth in the previous Office Action are withdrawn.
Regarding unexpected results, Applicants point the comparison of Example 1, i.e. Compound 1:
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to Comparative Example 2, i.e. Compound C2:
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and argue that this comparison provides evidence that the presently recited specific positioning of Z1 and Z2 is desirable and critical over other substitution positions in these compounds, see Table 1 presented on Pages 98-99 of the as-filed Specification. However, while the comparison pointed to by Applicants is a proper side-by-side comparison, Applicants’ arguments are not found to be persuasive for the reasons set forth below.
Regarding claims 1 and 14, it is noted that these claims are drawn to an organic light emitting device, where the compound is found in the organic layer of the device, and where the first and second electrodes are Ag, Mg, Cu, etc., as well as mixtures and oxides thereof. In the organic light emitting device presented in Table 1 of the instant Specification, the compound is found in a specific organic layer of the device, i.e. the emission layer, and where the first electrode is formed from ITO and the second electrode is formed form aluminum (Al). Given that the inventive organic light emitting device utilizes the compound in a specific organic layer in combination with specific first and second electrodes, it is unclear if the obtained results are indicative of all possible devices encompassed by the present claims, or only for the one particular exemplified device.
Furthermore, it is noted with respect to claim 12, this claim recites Compounds 3 – 80, while the inventive example in the Specification is drawn to Compound 1, and this inventive compound is not recited in the claim. Accordingly, the inventive example is outside the scope of claim 12.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER C. KOLLIAS whose telephone number is (571)-270-3869. The examiner can normally be reached on Monday-Friday, 8:00AM – 5:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached on (571)-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER C KOLLIAS/Primary Examiner, Art Unit 1786