DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 depends from claim 17 which is canceled. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 10-11, 19-20, 22, and 38-39 are rejected under 35 U.S.C. 103 as being unpatentable over Cha et al (US 2018/0090688) (Cha).
In reference to claims 10-20, 22, and 38-39, Cha teaches a compound of chemical formula (1) as shown below for organic light emitting device (Cha [0008] [0017])
PNG
media_image1.png
386
484
media_image1.png
Greyscale
PNG
media_image2.png
388
366
media_image2.png
Greyscale
for example, the compound above except wherein hydrogen atoms in the material are instead substituted for deuterium (Cha [0011]to [0013] [0027] [0047] [0056] [0061] [0066]).
Cha discloses the compound of chemical formula 1 that encompasses the presently claimed compound, including the compound above except wherein hydrogen atoms in the material are instead substituted for deuterium. Each of the disclosed substituents from the substituent groups of Cha are considered functionally equivalent and their selection would lead to obvious variants of the compound of chemical formula 1.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, in the absence of unexpected results, to have selected these substituents among those disclosed for the compound of chemical formula 1 to provide the compound described above, which is both disclosed by Cha and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
For Claim 10: Reads on formula 2 wherein R101 to R108 are each deuterium, R91 to R94 are each deuterium, L4 is a deuterated phenylene, L5 and L6 are each a deuterated phenylene, Ar3 and Ar4 are each deuterated phenyl.
For Claim 19: Reads on deuterium at the claimed positions.
For Claim 20: Reads on up to 100% deuteration.
For Claim 22: Reads on up to 100% deuterium to hydrogen.
For Claim 38: Reads on substituted phenyl.
For Claim 39: Reads on formula 2-11-12.
In reference to claim 11, Cha teaches the compound as described above for claim 10. Cha further teaches that the groups Ar1 and Ar2 can be other substituted aryl groups including, phenyl, biphenyl or terphenyl. In the absence of unexpected results, it would have been obvious to the ordinarily skilled artisan, before the effective filing date of the instant application, to have selected a biphenyl instead of a phenyl for each of the Ar1 and Ar2 as taught by Cha in order prepare a material having similar functional properties to those exemplified by Cha and thereby have arrived at the instantly claimed materials.
Claims 1-2, 6-9, 23, 25, 27, 29 and 34-37 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (WO 2016/072690) (Lee).
In reference to claims 1-2, 6-9, 23, and 34-37, Lee teaches a compound of formula 2 as shown below
PNG
media_image3.png
192
214
media_image3.png
Greyscale
for example, wherein R1 and R2 are each deuterium, L4 and L5 are each substituted arylene groups, L6 is a substituted arylene group and Ar4 and Ar5 are each substituted or unsubstituted phenyl wherein each substituent is deuterium.
Lee discloses the compound of formula 2 that encompasses the presently claimed compound, including wherein R1 and R2 are each deuterium, L4 and L5 are each substituted arylene groups, L6 is a substituted arylene group and Ar4 and Ar5 are each substituted phenyl wherein each substituent is deuterium. Each of the disclosed substituents from the substituent groups of Lee are considered functionally equivalent and their selection would lead to obvious variants of the compound of formula 2.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, in the absence of unexpected results, to have selected these substituents among those disclosed for the compound of formula 2 to provide the compound described above, which is both disclosed by Lee and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
For Claim 1: Reads on formula 2 wherein R21 to R28 are each deuterium, R11 to R14 are each deuterium, L4 is a deuterated phenylene, L5 and L6 are each a bond, Ar3 and Ar4 are each biphenyl and each of Ar3 and Ar4 are each optionally deuterated.
For Claim 2: Reads on substituted phenyl.
For Claim 6: Reads on deuterium at the claimed positions.
For Claim 7-8: Reads on up to 100% deuteration.
For Claim 9: Reads on up to 100% deuterium to hydrogen.
For Claim 23: Reads on a material for an element.
For Claim 34: Reads on Ar1 and Ar2 are each phenyl.
For Claim 35: Reads on Ar1 and Ar2 are each phenyl.
For Claim 36: Reads on phenyl.
For Claim 37: Reads on formula 1-11-1.
In reference to claim 25, Lee teaches the material as described above for claim 1 and further teaches it as used for a mixed composition of formula (2) (Lee [50]).
While Lee does not exemplify the mixture of two of the compounds, it teaches such a use and it would have been obvious to have used them in the taught application.
In reference to claims 27 and 29, Lee teaches the material as described above for claim 1 and further teaches it is used in an organic electroluminescent as a mixed material in a hole transporting layer wherein the device further includes an anode, cathode and emitting layer (Lee [2] [3] [9]).
While Lee does not exemplify the claimed device, it teaches such a use and it would have been obvious to have used them in the taught application.
Response to Arguments
Applicant's arguments filed 01/28/2026 have been fully considered but they are not persuasive.
Concerning the outstanding rejections under 35 USC 112(d), Applicant has failed to overcome the rejection of claim 19 and has not responded to this rejection. The rejection is maintained.
Concerning the rejections under 35 USC 103, Applicant argues that the instantly claimed compounds provide unexpected results in terms of device lifetime in comparison with compounds of the recited prior art as evidenced by data presented in a declaration under 37 CFR 1.132. This argument has been fully considered but not found convincing for at least the following reasons.
For a finding of unexpected results, the results presented need to be of both statistical and practical significance and be commensurate in scope with the subject matter claimed (See MPEP 716.02).
First, while the inventive examples allegedly show improvements in device lifetime, the specification has provided no information that would allow the analysis of the statistical significance of the results. That is, there is no indication if more than one device was prepared and analyzed for each comparative and exemplary device and there is no information on the reproducibility or precision of the measured parameters presented in the data tables.
Second, the showing of the results of a few examples is not commensurate in scope with the very large number of compounds encompassed by the instant claims. For example, the instantly claimed materials include Ar1 and Ar2 groups that can be “each independently a substituted or unsubstituted aryl group having 6 to 16 ring carbon atoms or a substituted or unsubstituted monovalent heterocyclic group having 5 to 30 ring atoms” wherein substituents can be “each independently selected from the group consisting of a deuterium atom, a halogen atom; a nitro group; a cyano group; an unsubstituted alkyl group having 1 to 50 carbon atoms; an unsubstituted alkenyl group having 2 to 50 carbon atoms; an unsubstituted alkynyl group having 2 to 50 carbon atoms; an unsubstituted cycloalkyl group having 3 to 50 ring carbon atoms; an unsubstituted haloalkyl group having 1 to 50 carbon atoms; an unsubstituted alkoxy group having 1 to 50 carbon atoms; an unsubstituted haloalkoxy group having 1 to 50 carbon atoms; an unsubstituted alkylthio group having 1 to 50 carbon atoms; an unsubstituted aryl group having 6 to 50 ring carbon atoms; an unsubstituted aryloxy group having 6 to 50 ring carbon atoms; an unsubstituted arylthio group having 6 to 50 ring carbon atoms; an unsubstituted aralkyl group having 7 to 50 carbon atoms; an unsubstituted monovalent heterocyclic group having 5 to 50 ring atoms; or a mono-, di-, or tri-substituted silyl group having a substituent selected from an unsubstituted alkyl group having 1 to 50 carbon atoms, an unsubstituted cycloalkyl group having 3 to 50 ring carbon atoms, an unsubstituted aryl group having 6 to 50 ring carbon atoms, and an unsubstituted monovalent heterocyclic group having 5 to 50 ring atoms” whereas the few example materials all only include unsubstituted phenyl, naphthyl or dibenzofuran or deuterated phenyl. Applicant has claimed such extensive Markush groups that is not reasonable to assume that the resulting compounds share similar properties to those demonstrated in the examples and that there would be a similar effect expected over the scope of the claims. These examples are not intended to be interpreted as the only points in which the data in not commensurate in scope with the claims but merely to illustrate how the breadth of the claimed compounds is much larger than that set forth in the examples, these variables resulting in claiming countless more compounds and even more devices. As Applicant is attesting that the claimed compounds have properties that would not be expected based on the genus as a whole, for example compounds taught by Cha or Lee, support for the unexpected results must be provided that covers the scope of what is claimed.
Concerning the rejection of claims 10-20, 22 and 38-39 under 35 USC 103, Applicant argues that as amended, Cha fails to disclose a specific compound as instantly claimed and points to examples from Cha that differ in the selection of one or more substituents. However, this does not negate a finding of obviousness under 35 U.S.C. 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills USPQ 196 (CCPA 1972). Cha teaches the compound as described herein above that fall within the claimed scope. Both the prior art and the instant claims are drawn to broad genera of compounds with optional substituents that comprise significant overlap. In the absence of criticality from the selection of specific claimed substituents such as unexpected results, it would have been obvious to have selected from among taught substituents to arrive at the instantly claimed materials.
Applicant argues that the substituent groups disclosed in Cha encompass a broad range of groups that differ significantly in reactivity, electronic properties, and steric effects, and therefore cannot be regarded as functionally equivalent. This argument is not convincing. Initially, Applicant similarly claims broad ranges of substituent groups (see above). Further, the difference between the examples of Cha and the embodiment relied upon for rejection is a difference of an isotope of the same atom (deuterium vs protium, isotopes of hydrogen). Deuterium is not known to have significantly different electronic properties or steric effects than protium as they have identical stereo-electronic structures. Deuterium is also known to have exceptionally similar reactivity with the exception of the well-known kinetic isotope effect that reduces reactivity of deuterated materials towards certain types of reactions in comparison to protium (see Dictionary of Science attached). It is noted that the application of Lee or Cha do not rely upon reactivity of hydrogen atoms for the use of the materials described therein. Applicant has not reasonably articulated why taught equivalent isotopes are not functionally equivalent.
Concerning the rejection of claims 1, 2, 4-9, 23, 25, 27, 29, and 34-37 under 35 USC 103, Applicant argues that as amended, Lee fails to disclose a specific compound as instantly claimed. However, this does not negate a finding of obviousness under 35 U.S.C. 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills USPQ 196 (CCPA 1972). Lee teaches the compound as described herein above that fall within the claimed scope. Both the prior art and the instant claims are drawn to broad genera of compounds with optional substituents that comprise significant overlap. In the absence of criticality from the selection of specific claimed substituents such as unexpected results, it would have been obvious to have selected from among taught substituents to arrive at the instantly claimed materials.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean M DeGuire whose telephone number is (571)270-1027. The examiner can normally be reached Monday to Friday, 7:00 AM - 5:00 PM.
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 on (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.
/Sean M DeGuire/Primary Examiner, Art Unit 1786