DETAILED ACTION
This Office Action is in response to the Applicant’s Amendment filed 04/13/26.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The rejection of Claims 4, 5, and 7 under 35 U.S.C. 103 as being unpatentable over Nishimae et al. (WO 2017/221999 A1) as set forth in the Non-Final Rejection filed 01/15/26 is overcome by the cancellation of the claims.
The rejection of Claims 1, 6, and 8-13 under 35 U.S.C. 103 as being unpatentable over Nishimae et al. (WO 2017/221999 A1) as set forth in the Non-Final Rejection filed 01/15/26 is NOT withdrawn in view of the Applicant’s arguments.
Claim Objections
Claims 1, 6, and 8-13 are objected to because of the following informalities:
Claim 1, which the other claims are dependent upon, recite “one of Y1 to Y9 is N” (page 2) which must be replaced by “one of Y1 to Y9 is N” for consistency with Chemical Formula 1.
Appropriate correction is required.
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, 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 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.
8. Claims 1, 6, and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimae et al. (WO 2017/221999 A1).
Examiner’s Note: The Office has relied on national phase publication US 2019/0161497 A1 as the English equivalent of WIPO publication WO 2017/221999 A1 (herein referred to as “Nishimae et al.”). Unless otherwise indicated, all figure, page, and paragraph numbers refer to numbers found in the national phase publication.
Nishimae et al. discloses compounds of the following form:
PNG
media_image1.png
130
342
media_image1.png
Greyscale
([0025]) where A1 = N or CRA1, A2 = N or CRA2 (at least one of A1-2 being N), B2 = CH or N, and B1 = B3-8 = CR3-8 or N; RA1 = RA2 = R1 = R3-8 = H or substituent, with at least one being -(A1)o-(A2)p-(A3)q-(A4)r-R20 (where o, p, q, r = 0-1 and R20 = H or C1-60 heteroaryl group which can be further substituted, among others) ([0026]-[0027]). Embodiments are disclosed:
PNG
media_image2.png
222
414
media_image2.png
Greyscale
(page 68)
PNG
media_image3.png
358
368
media_image3.png
Greyscale
(page 123). However, Nishimae et al. does not explicitly disclose an embodiment that fully reads on the Applicant’s Chemical Formula 1, particularly in regards to the connection point of the L group. Nevertheless, it would have been obvious to modify compound on page 123 as disclosed by Nishimae et al. (above) such that Y1-5 = Y7-9 = CH, Y6 = N, L = phenylene, L1-2 = single bond, and Ar1-2 = phenyl or biphenyl of Applicant’s Chemical Formula 1; f = 0; Q6 = N and Q1-5 = Q7-9 = CH of Applicant’s Chemical Formula 1-1; corresponds to the following compound:
PNG
media_image4.png
172
184
media_image4.png
Greyscale
. The motivation is provided by the fact that modification merely involves change in the position of the substituted phenylene group on the core condensed heterocyclic ring, producing a positional isomer that can be expected to have highly similar chemical and physical properties; further motivation is provided by the fact that the modification merely involves the selection of one possible isomer selected from a highly finite list as envisioned from the scope of Nishimae et al.’s general formula (in regards possible connection point of the non-hydrogen substituent group -(A1)o-(A2)p-(A3)q-(A4)r-R20), thus rendering the production predictable with a reasonable expectation of success.
Nishimae et al. further discloses an organic electroluminescent (EL) device (light-emitting device) comprising the following layers: substrate, anode, hole-injecting/transporting layer, light-emitting layer, electron-transporting layer, electron-injecting layer, and cathode (Fig. 1); its inventive compounds can serve as host materials in the light-emitting layer ([0023]).
Response to Arguments
9. The Applicant has argued on pages 100-109 for unexpected results in order to overcome the 35 U.S.C. 103 rejection as set forth above based on Nishimae et al. The Applicant further argues on pages 106-108 for reasonable extrapolation from the Applicant’s data to the full scope of the claims based on a series of pairs of experimental data (wherein the data is purported to show that “the position of the N atom in the core compound . . . do not negatively impact the improved properties” of the device). Applicant's arguments have been fully considered but they are not persuasive.
Firstly, after careful review of the Applicant’s data presented on Table 1 of the present Specification and the Declaration, as well as the submission of new data based on Example A (inventive and comparative), the Office finds the still data unpersuasive as it is not commensurate with the scope of the claims. Notice the rather broad scope of Applicant’s Chemical Formula 1, wherein any one of Y1-9 = N, one of Y1-9 can be C-L’-R, with the rest being C-H or C-D, with R encompassing a large variety of chemically distinct aryl and heteroaryl groups (benzene and its homologs, naphthyl, and dibenzothiophenyl or dibenzofuranyl), each of which is present in the tested compounds for only certain combinations of Y1-9 (i.e., position of N within the core heterocyclic structure), L, L1-Ar1, and L2-Ar2 of Applicant’s Chemical Formula 1. Secondly, the Office does not find the Applicant’s general conclusion that “the position of the N atom in the core compound . . . do not negatively impact the improved properties” of the device as the pairs of data as shown on pages 106-107 is true for only certain combination of Y1-9, L, L1-Ar1, and L2-Ar2 each of which produces or encompasses groups with chemically and physically distinct properties (such as benzene v. dibenzothiophene). It is thus the position of the Office that the full scope of the Applicant’s invention recites compounds (including Claim 11 which recites compounds such as the following:
PNG
media_image5.png
128
164
media_image5.png
Greyscale
comprising a specific combination of L, L1-2, and Ar1-2 with nitrogen at the distinct location corresponding to Y6) with properties which cannot be reasonably extrapolated from the Applicant’s data.
Furthermore, notice that the data as discussed on page 18 by the Applicant utilizing Compound 18 is not commensurate with the scope of the compound as shown above due to 1) location of the nitrogen atom within the core heterocyclic structure, 2) existence of a phenyl substituent group on the core heterocyclic structure, and 3) the existence of a chemically distinct L group (phenylene v. naphthylene).
Conclusion
10. THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY L YANG whose telephone number is (571)270-1137. The examiner can normally be reached Mon-Fri, 6am-3pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer A Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAY YANG/Primary Examiner, Art Unit 1786
Prosecution Insights