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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/26/2026 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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over of Cao et al (US 2020/0381633).
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 electroluminescent material comprises a solvent such as diethylene glycol monobutyl ether (DGBE) ([0103]) and an organic compound, (disclosed as organic compound A – Abstract, and [0091]).
As the organic compound A, the reference discloses the following compound ([0091 and Page 92 – Compound P275):
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This compound corresponds to recited Formula 1:
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where the integer a1 is zero (0); the integer b1 is one (1); and the integer c1 is two (2). Ar1 is a benzofluorene group substituted by a R10a, where R10a is a C12 carbocyclic group. R1 corresponds to:
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where Q1 and Q2 are phenyl groups, i.e. C6 carbocyclic groups.
While the reference does not explicitly disclose the compound as an electron transporting compound, given that the reference discloses the identical compound recited in the present claims as an electron-transporting compound, the compound disclosed by the reference necessarily functions as an electron transporting compound.
Finally, given that Cao et al discloses a composition comprising the recited compound and solvent, and given that this compound is utilizing in a printing technique to deposit the electroluminescent material composition, it is clear that the above compound is substantially dispersed in the solvent as recited in the present claims.
While the reference fails to exemplify the presently claimed ink composition nor can the claimed ink composition be "clearly envisaged" from the reference as required to meet the standard of anticipation, nevertheless, in light of the overlap between the claimed ink composition and the ink composition disclosed by the reference, absent a showing of criticality for the presently claimed ink composition, it is urged that it would have been within the skill level of one of ordinary skill in the art, to use the compounds which are both disclosed by the reference and encompassed within the scope of the present claims and thereby arrive at the claimed ink composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the references teach an ink composition comprising all of the claimed ingredients and made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties, i.e. the ink composition has an Ohnesorge number of about 0.1 to about 0.2, would naturally arise and be achieved by a composition with all the claimed ingredients. "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 2, Cao et al teaches all the claim limitations as set forth above. As discussed above, the reference discloses the following compound:
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which comprises two (2) phosphine oxide moieties.
Regarding claim 3, Cao et al teaches all the claim limitations as set forth above. As discussed above, the reference discloses the following compound:
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which comprises two (2) diphenyl phosphine oxide moieties.
Regarding claim 4, Cao et al teaches all the claim limitations as set forth above. As discussed above, the reference discloses the following compound:
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corresponding to Compound 2 of the claims.
Regarding claim 5, Cao et al teaches all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches an ink composition comprising all of the claimed ingredients and a composition made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties, i.e. the ink composition has a surface tension from about 20 dyne/cm to about 50 dyne/cm, would naturally arise and be achieved by a composition with all the claimed ingredients. "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, Cao et al teaches all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches an ink composition comprising all of the claimed ingredients and made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties, i.e. the ink composition has a viscosity from about 1 cP to about 12 cP, would naturally arise and be achieved by a composition with all the claimed ingredients. "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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Pan et al (US 2019/0378991, hereafter Pan ‘991).
Regarding claim 1, Pan ‘991 discloses an ink composition comprising an organic mixture and an organic solvent such as 4,4-difluorodiphenylmethane ([0035], [0043], and [0160]). The organic mixture comprises two (2) organic compounds H1 and H2, where H2 is the compound (Abstract, [0110], and Page 28 - Compound 1-60):
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This compound corresponds to recited Formula 1:
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where the integer a1 is zero (0); the integer b1 is one (1); and the integer c1 is two (2). Ar1 is a dibenzothiophene group and R1 corresponds to:
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where Q1 and Q2 are phenyl groups, i.e. C6 carbocyclic groups.
While the reference does not explicitly disclose the compound as an electron transporting compound, given that the reference discloses the identical compound recited in the present claims as an electron-transporting compound, the compound disclosed by the reference necessarily functions as an electron transporting compound. Finally, given that Pan ‘991 discloses an ink composition, it is clear that the above compound is substantially dispersed in a solvent as recited in the present claims.
While the reference fails to exemplify the presently claimed ink composition nor can the claimed ink composition be "clearly envisaged" from the reference as required to meet the standard of anticipation, nevertheless, in light of the overlap between the claimed ink composition and the ink composition disclosed by the reference, absent a showing of criticality for the presently claimed ink composition, it is urged that it would have been within the skill level of one of ordinary skill in the art, to use the compounds which are both disclosed by the reference and encompassed within the scope of the present claims and thereby arrive at the claimed ink composition.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the references teach an ink composition comprising all of the claimed ingredients and made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties, i.e. the ink composition has an Ohnesorge number of about 0.1 to about 0.2, would naturally arise and be achieved by a composition with all the claimed ingredients. "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 2, Pan ‘991 teaches all the claim limitations as set forth above. As discussed above, the reference discloses the following compound:
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which comprises two (2) phosphine oxide moieties.
Regarding claim 3, Pan ‘991 teaches all the claim limitations as set forth above. As discussed above, the reference discloses the following compound:
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which comprises two (2) diphenyl phosphine oxide moieties.
Regarding claim 4, Pan ‘991 teaches all the claim limitations as set forth above. As discussed above, the reference discloses the following compound:
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corresponding to compound 4 of the claims.
Regarding claim 5, Pan ‘991 teaches all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches an ink composition comprising all of the claimed ingredients and a composition made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties, i.e. the ink composition has a surface tension from about 20 dyne/cm to about 50 dyne/cm, would naturally arise and be achieved by a composition with all the claimed ingredients. "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, Pan ‘991 teaches all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches an ink composition comprising all of the claimed ingredients and made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties, i.e. the ink composition has a viscosity from about 1 cP to about 12 cP, would naturally arise and be achieved by a composition with all the claimed ingredients. "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.
Claims 1-3, 5-6, and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Pan et al (US 2018/0230321, hereafter Pan ‘321) in view of Tobise et al (US 2008/0238307).
Regarding claim 1, Pan ‘321 discloses a printing ink composition for organic electroluminescent devices (Abstract), where the printing ink composition comprises an aromatic organic solvent such as 4,4-difluorodiphenylmethane ([0009], [0022], and [0063]) and an organic functional material such as an electron transport material (ETM) ([0030] and [0135]).
While the reference discloses that the ink composition comprises an organic functional material, the reference does not disclose a compound represented by Formula 1 of the claims.
Tobise et al discloses an organic light emitting device, where the light emitting layer comprises a phosphine oxide compound represented by Formula II (Abstract and [0017]):
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Specific examples of compounds encompassed by the above formula include ([0050] and Page 7 – Compound 22):
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This compound corresponds to recited Formula 1:
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where the integer a1 is zero (0); the integer b1 is one (1); and the integer c1 is two (2). Ar1 is a fluorene group substituted with two (2) groups R10a, where R10a is a methyl group, i.e. a C1 alkyl. Each R1 corresponds to:
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where Q1 and Q2 are phenyl groups, i.e. C6 carbocyclic groups. From the discussion above, this compound meets the proviso in the claim requiring that Ar1 is a fluorene group substituted with at least one R10a.
The reference does not explicitly disclose the compound as an electron transporting compound; however, given that the reference discloses a compound encompassed by the present claims, it is the Office’s position that the compound disclosed by the reference is necessarily an electron transporting material as recited in the present claims.
The reference discloses that the presence of the phosphine oxide compound in the light emitting layer results in extremely large effects in terms of drive voltage, external quantum efficiency, and drive durability ([0056]).
Given that both Pan ‘321 and Tobise et al are drawn to organic light emitting devices, and given that Pan ‘321 does not explicitly prohibit other ingredients, in light of the particular advantages provided by the use and control of the phosphine oxide compound in the light emitting layer as taught by Tobise et al, it would therefore have been obvious to one of ordinary skill in the art to include such compounds in the ink composition disclosed by Pan ‘321 in with a reasonable expectation of success.
Given that the combined disclosures of Pan ‘321 and Tobise et al disclose an ink composition comprising the disclosed compounds, it is clear that the above compounds are substantially dispersed in a solvent as recited in the present claims.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach an ink composition all of the claimed ingredients and made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties, i.e. the ink composition has an Ohnesorge number of about 0.1 to about 0.2, would naturally arise and be achieved by a composition with all the claimed ingredients. "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 2, the combined disclosures of Pan ‘321 and Tobise et al teach all the claim limitations as set forth above. As discussed above, Tobise et al discloses the following compound:
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which comprises two (2) phosphine oxide moieties.
Regarding claim 3, the combined disclosures of Pan ‘321 and Tobise et al teach all the claim limitations as set forth above. As discussed above, Tobise et al discloses the following compound:
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which comprises two (2) diphenyl phosphine oxide moieties.
Regarding claim 5, the combined disclosures of Pan ‘321 and Tobise et al teach all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients and made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed component. Therefore, the claimed effects and physical properties, i.e. the ink composition has a surface tension from about 20 dyne/cm to about 50 dyne/cm, would naturally arise and be achieved by a composition with all the claimed ingredients. "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 Pan ‘321 and Tobise et al teach all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients and made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties, i.e. the ink composition has a viscosity from about 1 cP to about 12 cP, would naturally arise and be achieved by a composition with all the claimed ingredients. "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 Pan ‘321 and Tobise et al teach all the claim limitations as set forth above. Additionally, Pan ‘321 discloses that the ink composition comprises an inorganic nano-material such as a quantum dot (Abstract) or a metal oxide such as TiO2 ([0029] and [0132]) or NiOx ([0029] and [0133]).
The size of the quantum dot is from about 5 to about 15 nm ([0103]). It is recognized that the present claims recite the nanoparticle in terms of diameter, while the reference discloses the quantum dot in terms of size. However, given the breadth of the range disclosed by the reference, i.e. about 5 to about 15 nm, it is the Examiner’s position, absent evidence to the contrary, that the size disclosed by the reference overlaps or is within the recited diameter range of less than 20 nm.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 9, the combined disclosures of Pan ‘321 and Tobise et al teach all the claim limitations as set forth above. Additionally, Pan ‘321 discloses that amount of quantum dots is from 0.3 to 70 % based on the ink composition, overlapping the recited range of about 10 wt. % or less ([0031]).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claim 10, the combined disclosures of Pan ‘321 and Tobise et al teach all the claim limitations as set forth above. As discussed above, Pan ‘321 discloses NiOx and TiO2, i.e. transition metal oxides.
Regarding claim 11, the combined disclosures of Pan ‘321 and Tobise et al teach all the claim limitations as set forth above. Additionally, Pan ‘321 discloses that the quantum dot comprises a semiconductor compound of Groups II-VI ([0026]).
Response to Arguments
Applicant's arguments filed 1/6/2026 have been fully considered but they are not persuasive.
Applicants argue that as amended Pan ‘991 and Pan ‘321 in view of Tobise do not disclose the claimed ink composition. However, as discussed in the rejections above Pan ‘991 and Pan ‘321 remain applicable against the present claims given that both reference disclose solvent compositions comprising 4,4’-difluorodiphenylmethanem currently recited as one of the solvents in claim 1.
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