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All outstanding objections and rejections, except for those maintained below, are withdrawn in light of applicant's amendment filed on 12/8/2025.
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 12/8/2025. In particular, original Claim 1 has been amended to recite subject matter 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.
Claims 1, 4-5, 9-17, 24, and 26-28 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 A as:
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however, the claim does not define what is encompassed by variable I, thereby reding the scope of the claim indefinite. In the interests of compact prosecution, pending rectification of the above, in the rejection set forth below, the variable I in formula A will be treated as variable L found in formula B and defined by the claim as being a phenylene or a direct bond.
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, 4-5, 9-11, and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (CN 106910831, cited on IDS filed on 8/22/2023, see English language equivalent US 2017/0179395, hereafter Kim ‘395).
Regarding claim 1, Kim ‘395 discloses a compound with the formula ([0050] – Formula 1A):
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where X1 is carbon ([0081]); Y1 and Y2 are single bonds ([0085]-[0086]); E1 is carbon or nitrogen ([0029]); and E2 is nitrogen or carbon ([0029]). Rings A1 to A3 are benzene rings ([0054]). The integers c1, c3, and c4 are zero (0) ([0175]); the integer c2 is one (1) ([0175]); and the integer a1 can be an integer from 0 to 5 ([0128]). L2 can be the following C6 arylene ([0114] – Formulas 3-1 to 3-3):
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,
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where Z1 is hydrogen ([0017]). R2 can be the following triazine (Page 51 – Formula 10-102):
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Accordingly, the reference discloses a compound corresponding to recited Formula (A) or (B):
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or
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where L is a direct bond or the phenylene group:
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and G is the substituted 1,3,5-triazine moiety:
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i.e. a triazine substituted with C6 aryls.
While the reference fails to exemplify the presently claimed compound nor can the claimed compound be "clearly envisaged" from the reference as required to meet the standard of anticipation, nevertheless, in light of the overlap between the claimed compound and the compound 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 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 4, Kim ‘395 teaches all the claim limitations as discussed above. As discussed above, L is a phenylene group.
Regarding claim 5, Kim ‘395 teaches all the claim limitations as discussed above. As discussed above, G is a substituted triazine.
Regarding claim 9, Kim ‘395 teaches all the claim limitations as discussed above. As discussed above, G is a substituted triazine, corresponding to Formula (D42):
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Regarding claim 10, Kim ‘395 teaches all the claim limitations as discussed above. As discussed above, the reference discloses L as:
,
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or
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which correspond to Formulas F1 and F2:
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Regarding claim 11, Kim ‘395 teaches all the claim limitations as discussed above. From the discussion above, the reference discloses Compounds G5, G7, and G8 of the claims:
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Regarding claim 26, Kim ‘395 teaches all the claim limitations as set forth above. As discussed above, the reference discloses L as:
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corresponding to Formula F3 of the claims:
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Regarding claim 27, Kim ‘395 teaches all the claim limitations as set forth above. As discussed above, the reference discloses L as:
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and
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corresponding to Formulas F1, F2, and F3:
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and G corresponds to Formula D42:
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Regarding claim 28, Kim ‘395 teaches all the claim limitations as set forth above. As discussed above, the reference discloses L as a direct bond and G corresponds to Formula D42:
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Claims 12-17 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (CN 106910831, cited on IDS filed on 8/22/2023, see English language equivalent US 2017/0179395, hereafter Kim ‘395) as applied to claims 1, 4-5, 9-11, and 26-28 above and in view of the evidence presented in Hamano et al (US 2015/0129861)
The discussion with respect to Kim ‘395 as set forth in Paragraph 9 above is incorporated here by reference.
Regarding claim 12, Kim ‘395 teaches all the claim limitations as set forth above. Additionally, the reference discloses an organic light emitting device where the light emitting layer, i.e. an organic semiconducting layer, comprises the compound discussed above as a host (disclosed as the first compound) (Abstract, [0016], [0018], and [0197]). As evidenced by Paragraph [0446] of Hamano et al, a host material is a compound that mainly implants and transports charge in the light emitting layer. Accordingly, the light emitting layer in the device disclosed by Kim et al can be considered to correspond to the recited charge transport layer.
Regarding claim 13, Kim ‘395 as evidenced by Hamano et al teaches all the claim limitations as set forth above. Additionally, Kim ‘395 discloses that the light emitting layer further comprises a dopant ([0201]).
Regarding claim 14, Kim ‘395 as evidenced by Hamano et al teaches all the claim limitations as set forth above. As discussed above, Kim ‘395 discloses that the light emitting layer comprises the compound discussed above as a host, i.e. a first component. The light emitting layer further comprises an organometallic complex as a dopant, i.e. a second component that is different from the host compound ([0201]).
Regarding claim 15, Kim ‘395 as evidenced by Hamano et al teaches all the claim limitations as set forth above. As discussed above, Kim ‘395 discloses an organic light emitting device, i.e. an organic electronic device, comprising a light emitting layer, i.e. an organic semiconducting layer.
Regarding claim 16, Kim ‘395 as evidenced by Hamano et al teaches all the claim limitations as set forth above. Additionally, Kim ‘395 discloses that the organic light emitting device comprises an anode ([0206]-[0207]) and a cathode ([0402]-[0403]).
Regarding claim 17, Kim ‘395 as evidenced by Hamano et al teaches all the claim limitations as set forth above. As discussed above, Kim ‘395 discloses an organic light emitting device, i.e. a lighting device.
Regarding claim 24, Kim ‘395 as evidenced by Hamano et al teaches all the claim limitations as set forth above. As discussed above, Kim ‘395 discloses that the light emitting layer comprises an organometallic complex, i.e. a metal complex which is different from the discloses host compound.
Response to Arguments
Applicant's arguments filed 12/8/2025 have been fully considered but they are not persuasive.
In light of the amendments to the claims, the 35 U.S.C. 112 (b) rejection set forth in the previous Office Action is withdrawn. Furthermore, in light of the claim amendments, the 35 U.S.C. 102 rejections of the claims as anticipated by Kim ‘395 and Yang et al set forth in the previous Office Action are withdraw. Finally, it light of the claim amendments, the 35 U.S.C. 103 rejection of the claims over Kim ‘808 as set forth in the previous Office Action are withdrawn.
Applicants argue that the Examiner has not explained any reason why one of ordinary skill in the art would have made - with predictability or a reasonable expectation of success - the numerous selections necessary to derive any of the compounds recited by amended claim 1 from the generic formulas disclosed by Kim. However, it is noted that while the reference discloses a generic formula, as discussed in the rejections above, the reference explicitly discloses the claimed linking groups, i.e. a direct bond, or a phenylene group, as well as the claimed substituted triazine substituent. In light of this disclosure, it is the Office’s position, absent evidence to the contrary, that it would have been obvious to one of ordinary skill in the art to select any of the linking and substituent groups disclosed by the reference, including those claimed, and thereby, arrive at the claimed compound with a reasonable expectation of success.
Applicants argue that the formulas in Kim are generic, and numerous possible selections are disclosed for each variable and Kim's usefulness as a reference may depend only on its disclosure of specific "lead compounds". However, firstly, as discussed above, while the reference does disclose a generic formula for the compound, the reference explicitly discloses the claimed linking groups, i.e. a direct bond, or a phenylene group, as well as the claimed substituted triazine substituent.
Secondly, regarding “lead compounds” it is noted that this analysis is drawn to modification of a disclosed compound, see MPEP 2143 B. As set forth in the previous Office Action and maintained in the rejection above, the compound disclosed by Kim et al was not modified, but rather obtained explicitly for the disclosure of the reference itself. Specific attention is directed to MPEP 2143 B which discusses “lead compound” and this section, c.f. Example 8, discusses that a “lead compound” is drawn to a proposed modification of a compound disclosed in the prior art. In the instant case no such modification is required given that Kim discloses the claimed compound.
Applicants argue that when a "lead compound" is cited to support a theory of prima facie obviousness, the reference must satisfy the guidance of MPEP 2143, i.e.
Obviousness based on structural similarity thus can be proved by identification of some motivation that would have led one of ordinary skill in the art to select and then modify a known compound (i.e. a lead compound) in a particular way to achieve the claimed compound ... In keeping with the flexible nature of the obviousness inquiry, the requisite motivation can come from any number of sources and need not necessarily be explicit in the art. Rather "it is sufficient to show that the claimed and prior art compounds possess a 'sufficiently close relationship ... to create an expectation, 'in light of the totality of the prior art, that the new compound will have 'similar properties' to the old" Id at 1357, 87 USPQ2d at 1455. (citations omitted). (Emphasis added).
Applicants further argue that a proper "lead compound" analysis must explain two
elements: first, why a person of ordinary skill in the art would have selected the "lead compound" of Kim "on the basis of the facts gleaned from the prior art", and second, why and how this selected compound would have been modified in view of Kim. However, as discussed above, the compound disclosed by Kim was not modified, but rather obtained from the explicit disclosure of the reference itself.
Applicant point to the examples in in Tables 5-8 of Kim and argue that Compound 1-57 preformed best overall, producing the greatest efficiency and the second smallest driving voltage and that these results may have prompted a person of ordinary skill in the art to select compound 1-57 as a "lead compound", but compound 1-57 does not include a triazinyl moiety or a pyridinyl moiety in the "core" of the compound, as recited by the Applicant's amended claim 1. However, it is noted that prior art is prior art for all that it teaches, see MPEP 2121.01 II. Thus, the disclosure of Kim is not limited to the exemplified compounds. As discussed above, the reference discloses a formula for the core of the compound and further explicitly discloses the claimed linking groups, i.e. a direct bond, or a phenylene group, as well as the claimed substituted triazine substituent. To that end it is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicants further points to Compound 1-20 presented in Table 6 and argue that this compound performed best overall, producing the greatest efficiency and that these results may have prompted a person of ordinary skill in the art to select Compound 1-20 as a "lead compound", but Compound 1-20 does not include a triazinyl moiety or a pyridinyl moiety in the "core" of the compound, as recited by the Applicant's amended claim. However, as discussed above, prior art is prior art for all that it teaches, see MPEP 2121.01 II. Thus, the disclosure of Kim is not only limited to the exemplified compounds. As discussed above, the reference discloses a formula for the core of the compound and further explicitly discloses the claimed linking groups, i.e. a direct bond, or a phenylene group, as well as the claimed substituted triazine substituent. To that end it is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicants further point to a 50:50 mixture of Compounds 1-16 and 1-46, presented in Table 7 and argue that while this mixture produces favorable results, Kim does not mention or suggest whether the compounds are capable of functioning similarly when used independently of each other, or whether one of the compounds contributed more than the other, thereby obscuring which, if any, of the compounds of Table 7 could or might be selected as a "lead compound", and how or whether either compound can or should be modified in order to achieve predictable results or with a reasonable expectation of success when modified and then recombined with the other compound, or used individually, which is not taught or suggested by Table 7. However, as discussed above, prior art is prior art for all that it teaches, see MPEP 2121.01 II. Thus, the disclosure of Kim is not only limited to the exemplified compounds. As discussed above, the reference discloses a formula for the core of the compound and further explicitly discloses the claimed linking groups, i.e. a direct bond, or a phenylene group, as well as the claimed substituted triazine substituent. To that end it is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant further point to Compound 1-164, presented in Table 8, and argue that while this compound presents the best results, the Applicant is unable to identify this compound in Kim, because the reference only includes Compounds 1-1 to 1-160 and this compound should read Compound 1-64 or 2-164; however, Compound 1-64, lacks a triazinyl moiety and a pyridinyl moiety, and Compound 2-164 lacks a triazine moiety and a pyridinyl moiety in the core of the compound, therefore, even if Compound 1-64 or 2-164 had been selected as a "lead compound", the disclosure of Kim would not have provided any reason or motivation for a person of ordinary skill in the art to modify the selected compound in a manner that would have placed it within the scope of the Applicant's amended claim. However, as discussed above, prior art is prior art for all that it teaches, see MPEP 2121.01 II. Thus, the disclosure of Kim is not only limited to the exemplified compounds. As discussed above, the reference discloses a formula for the core of the compound and further explicitly discloses the claimed linking groups, i.e. a direct bond, or a phenylene group, as well as the claimed substituted triazine substituent. To that end it is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
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