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All outstanding objections and rejections, except for those maintained below, are withdrawn in light of applicant's amendment filed on 6/3/2026.
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 6/3/2026. In particular, original Claim 1 has been amended to recite limitations not previously presented. 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.
Claim 8 is 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 8 recites the limitation “wherein R1 to R3 in Formula 1 are the same” which renders the scope of the claim indefinite for the following reasons. Claim 8 depends from claim 1, and claim 1 requires that in Formula 1 the difference between the chain length of an alkyl group in the first solvent and an alkyl group in the second solvent is two to six carbon atoms. Thus, claim 1 necessarily requires that in Formula 1 the solvents have different alkyl chain lengths, while claim 8 requires that R1 to R3 for the first and second solvents are the same. In the interests of compact prosecution, pending rectification/clarification of the above, in the rejections set forth below, claim 8 is interpreted as reciting “wherein the R1 to R3 for the first solvent are the same, and wherein R1 to R3 for the second solvent are the same”.
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 1-11 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over of Cao et al (US 2020/0381633) in view of Pan et al (US 2020/0291251, hereafter Pan ‘251).
Regarding claim 1, Cao et al discloses a method of manufacturing an organic electroluminescent device, where an organic electroluminescent material is deposited by a solution means such as printing, e.g. inkjet printing (Abstract, [0100], and [0102]-[0103]). Given that the reference discloses inkjet printing, it is clear that the reference discloses an ink composition as recited in the present claims. The organic electroluminescent material comprises a solvent ([0103]) and the following compound (Abstract – disclosed as organic compound A, [0091], and Page 92 – Compound P275):
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which is identical to Compound 102 recited in the present claims.
The reference does not explicitly disclose the compound as an electron transporting compound; however, given that the reference discloses the identical compound recited in the present claims, it is the Office’s position that the compound disclosed by the reference necessarily functions as an electron transporting compound.
While the reference discloses that the organic electroluminescent material comprises solvents ([0103]), the reference does not disclose that the electroluminescent material composition comprises a mixed solvent represented by Formula 1 as recited in the present claims.
Pan ‘251 discloses a printing formulation, i.e. an ink composition, for organic photovoltaic cells (Abstract and [0025]), where the formulation comprises organic functional materials such as electron transport materials ([0020]-[0021]) and at least one ester solvent with the formula ([0007]):
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In the above formula, R1, R2, and R3 are each independently hydrogen (H), deuterium (D), or a linear alkyl having 1 to 20 carbon atoms ([0008]). Given that disclosure of “at least one solvent”, the disclosure of the reference encompasses a mixed solvent comprising first and second solvents, where the first and second solvents are represented by Formula 1 of the claims:
(P=O)(OR1)(OR2)(OR3).
In Formula 1 of the claims, R1 to R3 are each independently a linear C1-20 alkyl group, hydrogen (H), or deuterium (D). Given that the reference discloses a C1-20 alkyl chain and given that the reference encompasses multiple solvents, it is clear that for the first solvent R1 and R2 can be hydrogen and R3 can be a C1 alkyl, while for the second solvent, R1 and R2 can be hydrogen and R3 can be a C3 to C7 alkyl, such that the difference between the alkyl chain lengths is two (2) to six (6) atoms as recited in the present claims.
The reference discloses that the printing formulation comprising the phosphate ester can have its viscosity and surface tension adjusted to a suitable range according to a specific printing method to form a high-quality functional layer having a uniform surface and thickness ([0027] and [0043]).
Given that both Cao et al and Pan ‘251 are drawn to ink compositions comprising solvents and functional organic materials, and given that Cao et al does not explicitly prohibit other ingredients, in light of the particular advantages provided by the use and control of the phosphate solvent as taught by Pan ‘251, it would therefore have been obvious to one of ordinary skill in the art to include such solvents in the electroluminescent material composition disclosed by Cao et al with a reasonable expectation of success.
The recitation in the claims of “wherein the ink composition is an ink composition for forming an electron transport layer of a light-emitting device of a display device” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the Office’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that the combined disclosures of Cao et al and Pan ‘251 disclose an ink composition as presently claimed, it is clear that the ink composition obtained from the combined disclosures of Cao et al and Pan ‘251 would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 2, the combined disclosures of Cao et al and Pan ‘251 teach all the claim limitations as set forth above. Pan ‘251 does not explicitly disclose that the mixed solvent has a dP value Hansen parameter value of about 9 or more. However, the reference discloses the identical solvents recited in the present claims, and therefore the solvents disclosed by the reference necessarily possess the recited dP value of about 9 or more. "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 3, the combined disclosures of Cao et al and Pan ‘251 teach all the claim limitations as set forth above. Pan ‘251 does not explicitly disclose that the mixed solvent has a dH value Hansen parameter value of about 9 or more. However, the reference discloses the identical solvents recited in the present claims, and therefore the solvents disclosed by the reference necessarily possess the recited dH value of about 9 or more. "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, the combined disclosures of Cao et al and Pan ‘251 teach all the claim limitations as set forth above. Cao et al does not explicitly disclose that the compounds discussed above possess a dP value of about 9 or more as recited in the present claims. However, the reference discloses the claimed phosphine oxide compounds and the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed compounds. Therefore, the claimed effects and physical properties, would naturally arise and be achieved by the compounds disclosed by the reference. "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 5, the combined disclosures of Cao et al and Pan ‘251 teach all the claim limitations as set forth above. Cao et al does not explicitly disclose that the compounds discussed above possess a dH value of about 5 or more as recited in the present claims. However, the reference discloses the claimed phosphine oxide compounds and the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed compounds. Therefore, the claimed effects and physical properties, would naturally arise and be achieved by the compounds disclosed by the reference. "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 6, the combined disclosures of Cao et al and Pan ‘251 teach all the claim limitations as set forth above. Pan ‘251 does not explicitly disclose that the mixed solvent has a viscosity of about 10 cP or less at room temperature. However, the reference discloses the identical solvents recited in the present claims, and therefore the solvents disclosed by the reference necessarily possess the recited viscosity. "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, the combined disclosures of Cao et al and Pan ‘251 teach all the claim limitations as set forth above. Pan ‘251 does not explicitly disclose that the mixed solvent has a surface tension of about 30 dyn/cm to about 35 dyn/cm. However, the reference discloses the identical solvents recited in the present claims, and therefore the solvents disclosed by the reference necessarily possess the recited surface tension. "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 8, the combined disclosures of Cao et al and Pan ‘251 teach all the claim limitations as set forth above. As discussed above, Pan ‘251 discloses that R1 to R3 are C1-20 alkyls, i.e. for the first solvent R1 to R3 can each be the same alkyl group and for the second solvent R1 to R3 can each be the same alkyl group as required by the present claim.
Regarding claim 9, the combined disclosures of Cao et al and Pan ‘251 teach all the claim limitations as set forth above. As discussed above, Pan ‘251 discloses that R1 to R3 are linear C1-20 alkyls.
Regarding claim 10, the combined disclosures of Cao et al and Pan ‘251 teach all the claim limitations as set forth above. As discussed above, Pan ‘251 discloses that independently R1 to R3 are hydrogen (H), deuterium (D), or a C1-20 alkyl. Accordingly, the disclosure of the reference encompasses an embodiment where R1 is hydrogen or deuterium, R2 is hydrogen or deuterium, or R3 is hydrogen or deuterium.
Regarding claim 11, the combined disclosures of Cao et al and Pan ‘251 teach all the claim limitations as set forth above. As discussed above, Pan ‘251 discloses that independently R1 to R3 are hydrogen (H), deuterium (D), or a C1-20 alkyl. Accordingly, the disclosure of the reference encompasses an embodiment where R1 and R2 are hydrogen or deuterium, R2 and R3 are hydrogen or deuterium, or R1 and R3 are each hydrogen or deuterium.
Regarding claim 21, the combined disclosures of Cao et al and Pan ‘251 teach all the claim limitations as set forth above. As discussed above, Pan ‘251 discloses that independently R1 to R3 are hydrogen, deuterium or a C1-20 alkyl. Accordingly, the disclosure of the reference encompasses Compounds 1 and 2 for the first solvent, and Compound 3 for the second solvent, i.e.
first solvent:
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second solvent:
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Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over of Cao et al (US 2020/0381633) in view of Pan et al (US 2019/0375956, hereafter Pan ‘956).
Regarding claim 1, Cao et al discloses a method of manufacturing an organic electroluminescent device, where an organic electroluminescent material is deposited by a solution means such as printing, e.g. inkjet printing (Abstract, [0100], and [0102]-[0103]). Given that the reference discloses inkjet printing, it is clear that the reference discloses an ink composition as recited in the present claims. The organic electroluminescent material comprises a solvent ([0103]) and the following compound (Abstract – disclosed as organic compound A, [0091], and Page 92 – Compound P275):
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which is identical to Compound 102 recited in the present claims.
The reference does not explicitly disclose the compound as an electron transporting compound; however, given that the reference discloses the identical compound recited in the present claims, it is the Office’s position that the compound disclosed by the reference necessarily functions as an electron transporting compound.
While the reference discloses that the organic electroluminescent material comprises solvents ([0103]), the reference does not disclose that the electroluminescent material composition comprises a mixed solvent represented by Formula 1 as recited in the present claims.
Pan ‘956 discloses a printing formulation, i.e. an ink composition, for organic photovoltaic cells (Abstract and [0280]), where the formulation comprises organic functional materials such as electron transport materials ([0126]) and two organic solvents including a first solvent and a second solvent (Abstract).
In one embodiment at least one of the two organic solvents is an inorganic ester solvent such as trimethyl phosphate, triethyl phosphate, tributyl phosphate, diethyl phosphate, dibutyl phosphate, and di(2-ethylhexyl)phosphate ([0106]-[0107]). Given the disclosure of “at least one”, the reference encompasses a mixed solvent comprising first and second solvents, where the first and second solvents are inorganic ester solvents represented by Formula 1 of the claims:
(P=O)(OR1)(OR2)(OR3).
In Formula 1 of the claims, R1 to R3 are each independently are linear C1 to C3 alkyls, or R1 and R2 are C2 and C3 alkyls and R3 is hydrogen.
Given the disclosure of trimethyl phosphate and tributyl phosphate, it is clear that the difference between the alkyl chain lengths is two (2), within the recited range of two (2) or six (6) carbon atoms as recited in the present claims.
The reference discloses that compared to conventional solvents such as toluene, xylene, chloroform, etc., for dissolving functional materials, the disclosed solvent system can more effectively dissolve the functional materials without adding an additive and prevents the occurrence of a “coffee ring effect”, so that a film having uniform thickness and a strong electron transmission capability can be obtained ([0107]).
Given that both Cao et al and Pan ‘956 are drawn to ink compositions comprising solvents and functional organic materials, and given that Cao et al does not explicitly prohibit other ingredients, in light of the particular advantages provided by the use and control of the phosphate solvent as taught by Pan ‘956, it would therefore have been obvious to one of ordinary skill in the art to include such solvents in the electroluminescent material composition disclosed by Cao et al with a reasonable expectation of success.
The recitation in the claims of “wherein the ink composition is an ink composition for forming an electron transport layer of a light-emitting device of a display device” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the Office’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that the combined disclosures of Cao et al and Pan ‘956 disclose an ink composition as presently claimed, it is clear that the ink composition obtained from the combined disclosures of Cao et al and Pan ‘956 would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 2, the combined disclosures of Cao et al and Pan ‘956 teach all the claim limitations as set forth above. Pan ‘956 does not explicitly disclose that the mixed solvent has a dP value Hansen parameter value of about 9 or more. However, the reference discloses the identical solvents recited in the present claims, and therefore the solvents disclosed by the reference necessarily possess the recited dP value of about 9 or more. "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 3, the combined disclosures of Cao et al and Pan ‘956 teach all the claim limitations as set forth above. Pan ‘956 does not explicitly disclose that the mixed solvent has a dH value Hansen parameter value of about 9 or more. However, the reference discloses the identical solvents recited in the present claims, and therefore the solvents disclosed by the reference necessarily possess the recited dH value of about 9 or more. "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, the combined disclosures of Cao et al and Pan ‘956 teach all the claim limitations as set forth above. Cao et al does not explicitly disclose that the compounds discussed above possess a dP value of about 9 or more as recited in the present claims. However, the reference discloses the claimed phosphine oxide compounds and the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed compounds. Therefore, the claimed effects and physical properties, would naturally arise and be achieved by the compounds disclosed by the reference. "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 5, the combined disclosures of Cao et al and Pan ‘956 teach all the claim limitations as set forth above. Cao et al does not explicitly disclose that the compounds discussed above possess a dH value of about 5 or more as recited in the present claims. However, the reference discloses the claimed phosphine oxide compounds and the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed compounds. Therefore, the claimed effects and physical properties, would naturally arise and be achieved by the compounds disclosed by the reference. "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 6, the combined disclosures of Cao et al and Pan ‘956 teach all the claim limitations as set forth above. Pan ‘956 does not explicitly disclose that the mixed solvent has a viscosity of about 10 cP or less at room temperature. However, the reference discloses the identical solvents recited in the present claims, and therefore the solvents disclosed by the reference necessarily possess the recited viscosity. "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, the combined disclosures of Cao et al and Pan ‘956 teach all the claim limitations as set forth above. Pan ‘956 does not explicitly disclose that the mixed solvent has a surface tension of about 30 dyn/cm to about 35 dyn/cm. However, the reference discloses the identical solvents recited in the present claims, and therefore the solvents disclosed by the reference necessarily possess the recited surface tension. "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 8, the combined disclosures of Cao et al and Pan ‘956 teach all the claim limitations as set forth above. As discussed above, Pan ‘956 discloses trimethyl phosphate and tributyl phosphate. Thus, for trimethyl phosphate R1 to R3 are C1 alkyls and for tributyl phosphate R1 to R3 are C3 alkyls.
Regarding claim 9, the combined disclosures of Cao et al and Pan ‘956 teach all the claim limitations as set forth above. As discussed above, Pan ‘956 discloses that R1 to R3 are linear C1-3 alkyls.
Regarding claim 10, the combined disclosures of Cao et al and Pan ‘956 teach all the claim limitations as set forth above. As discussed above, Pan ‘956 discloses diethyl phosphate and di(2-ethylhexyl)phosphate, i.e. R3 is hydrogen
Response to Arguments
Applicant's arguments filed 6/3/2026 have been fully considered but they are not persuasive.
Applicants argue that although Pan describes "a printing formulation comprising ... at least one inorganic ester solvent", such disclosure does not constitute a teaching or suggestion of
the specific combination of a first solvent and a second solvent as now recited in the claims. However, it is Office’s position, absent evidence to the contrary, given that the reference discloses that the ink composition comprises at least one solvent, and given that the reference discloses the solvent formula as:
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where R1, R2, and R3 are each independently hydrogen (H), deuterium (D), or a linear alkyl having 1 to 20 carbon atoms as well as the explicit disclosure of solvents such as trimethyl phosphate and tributyl phosphate, one of ordinary skill in the art would be able to select different solvent compositions, including a mixed solvent where the difference between the chain length of an alkyl group in the first solvent and an alkyl group in the second solvent is two to six carbon atoms with a reasonable expectation of success.
Applicants argue that Pan's disclosure encompasses embodiments with a single solvent as well as an indeterminate number of possible multi-solvent systems, and the reference provides no disclosure identifying the claimed first and second solvents as a defined pair and the reference provides for a broad, undirected genus, and fails to teach the specific, coordinated dual-solvent system recited in the claims. However, firstly, as discussed above, it is Office’s position, absent evidence to the contrary, given that the reference discloses that the ink composition comprises at least one solvent and given that the reference discloses the solvent formula as:
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where R1, R2, and R3 are each independently hydrogen (H), deuterium (D), or a linear alkyl having 1 to 20 carbon atoms, one of ordinary skill in the art would be able to select different solvent compositions, including a mixed solvent where the difference between the chain length of an alkyl group in the first solvent and an alkyl group in the second solvent is two to six carbon atoms with a reasonable expectation of success. Secondly, it is the Office’s position that the reference does not disclose a genus, but rather discloses that multiple solvents can be present in the compositions and further explicitly discloses that types of the solvents that can be present in the composition.
Applicants argue that the recited mixed solvent is distinct from the prior art, which discloses only a broad class of solvents defined by a general formula, and provides no guidance as to which specific chain lengths should be selected, much less that two different chain-length variants should be used together. However, it is the Office’s position, absent evidence to the contrary that one of ordinary skill in the art would be able to select different solvent compositions, including a mixed solvent where the difference between the chain length of an alkyl group in the first solvent and an alkyl group in the second solvent is two to six carbon atoms with a reasonable expectation of success
Applicants argue that there is no teaching or suggestion in the cited references that would lead a person of ordinary skill in the art to select two specific solvents differing in alkyl chain length and combine them in a single composition. However, as discussed above, it is the Office’s position that one of ordinary skill in the art would be able to select different solvent compositions, including a mixed solvent where the difference between the chain length of an alkyl group in the first solvent and an alkyl group in the second solvent is two to six carbon atoms with a reasonable expectation of success
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
Prosecution Insights