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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/11/2026 has been entered.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-11 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).
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 solvent represented by Formula 1 as recited in the present claims.
Pan et al 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 an 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]). Accordingly, the reference discloses a solvent encompassed by Formula 1 of the claims:
(P=O)(OR1)(OR2)(OR3),
where R1 to R3 are each independently a C1-20 alkyl group, hydrogen (H), or deuterium (D).
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 et al 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 et al, 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 et al 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 et al 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 et al teach all the claim limitations as set forth above. Pan et al does not explicitly disclose that the 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 et al teach all the claim limitations as set forth above. Pan et al does not explicitly disclose that the 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 et al 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 et al 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 et al teach all the claim limitations as set forth above. Pan et al does not explicitly disclose that the 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 et al teach all the claim limitations as set forth above. Pan et al does not explicitly disclose that the 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 et al teach all the claim limitations as set forth above. As discussed above, Pan et al discloses that R1 to R3 are C1-20 alkyls, i.e. 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 et al teach all the claim limitations as set forth above. As discussed above, Pan et al discloses that R1 to R3 are C1-20 alkyls.
Regarding claim 10, the combined disclosures of Cao et al and Pan et al teach all the claim limitations as set forth above. As discussed above, Pan et al 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 et al teach all the claim limitations as set forth above. As discussed above, Pan et al 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 et al teach all the claim limitations as set forth above. As discussed above, Pan et al discloses that independently R1 to R3 are hydrogen, deuterium or a C1-20 alkyl. Accordingly, the disclosure of the reference encompasses at least Compounds 1, 2, and 3 of the claims:
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Response to Arguments
Applicant's arguments filed 1/23/2026 have been fully considered but are moot in light of the new grounds of rejection set forth above.
In light of the amendments to the claims, the 35 U.S.C. 103 rejection of the claims as set forth in the previous Office Action is withdrawn.
Conclusion
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, 8:00 AM – 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
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