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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/13/2025 has been entered.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5-8, and 10-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 1 requires the limitation below.
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The instant description includes a description of many possible materials that could be used as potential HTH1, ETH1, HTH2 and ETH2 in the device but does not limit the claims to a finite number of such materials. As amended in the submission of 10/29/2025, the structures are limited such that each of the materials can be selected from 5 or 6 exceptionally broad genre as defined by chemical formulae 311-1 to 311-6 for hole transport hosts, or 312-1 to 312-4 and 313 for electron transport hosts. Each of these structures are so broad as to include an arguably infinite number of candidate structures. For example, in formula 311-1, the formula includes a variable number of R groups such as R303, R302, R311 and R312 inter alia, that each can be selected from an exhaustive list of possible groups as shown below.
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As an example of how this list is so broad, we can examine a single entry on the list, for example of a C1 to C60 alkyl group. The number of possible structural isomers (not accounting for steroisomerisation or for cyclic structures) for an unsubstituted C60 alkyl group is 2.22 x 1022. Applicant’s claim allows these structures to be cyclized or to be further substituted by groups R10a. R10a represents an even larger group of possible groups than the list above and further includes “any combination thereof”. These R groups can be attached at any number of positions to the ring system of Formula 311-1, a ring system that is on its own variable and represents many orders of magnitude of polycyclic groups. That is, each of the formula of claim 1 as amended still define an essentially infinite number of structures and each of the HTH1, HTH2, ETH1 and ETH2 can be selected from 5 or 6 of such broad genera leading to an unfathomable number of claimed combinations.
The description only provides one example of such a combination that meets this requirement. The specification further provides exceptionally broad guidance on what materials that might be useable as host without limiting it to small molecules, polymers, oligomers, organic materials, inorganic materials, or organometallic materials or combinations thereof but provides no further description of which host combinations meet the requirements for electron mobility and hole mobility beyond that one example combination. The one example described in the written description does not provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus (see MPEP 2163-II-A-3-a-ii).
In reference to claim 10, while Applicant has bounded the scope of the HTH1 and HTH2, applicant has placed no limits whatsoever on the ETH1 and ETH2 that might be used to meet the claimed electron mobility relationship and only a single example is provided. The one example described in the written description does not provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus (see MPEP 2163-II-A-3-a-ii).
Similarly, in reference to claim 11, while Applicant has bounded the scope of the ETH1 and ETH2, applicant has placed no limits whatsoever on the HTH1 and HTH2 that might be used to meet the claimed electron mobility relationship and only a single example is provided. The one example described in the written description does not provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus (see MPEP 2163-II-A-3-a-ii).
Claims 1-3, 5-8, and 10-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the combination of materials recited in the specification examples, does not reasonably provide enablement for all claimed combinations of ETH1 ETH2 HTH1 and HTH2 that meet requirements for electron and hole mobility as claimed The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise, undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not the claimed combination of ETH1 ETH2 HTH1 and HTH2 within the scope of the claims can be used to meet the requirements for electron and hole mobility as claimed and whether the claims meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1-20, it is believed that undue experimentation would be required because:
Breadth of the claims: the claims are exceptionally broad allowing for four host materials selected from essentially infinitely large genera so long as they comprise at least one deuterium and have the claimed requirement for electron mobility and hole mobility relative to one another.
Nature of the invention: Host materials in such devices have exceptionally variable structures and features that effect electronic properties such as electron mobility and hole mobility.
State of the prior art: While some materials used in OLED applications have reported electron mobility and hole mobility values, such reporting is relatively rare, even compared to other electronic properties and the vast majority of materials known do not have reported electron mobility and hole mobility values.
The level of one of ordinary skill: While an ordinarily skilled artisan is able to use known tools to experimentally determine electronic properties of materials, determination of the properties of every possible material combination claimed represents an essentially infinite task.
The level of predictability in the art: It is unclear that electron mobility and hole mobility are predictable in the art but rather would need to be measured for each possible combination.
Amount of direction provided: Applicant’s specification proves exceptionally broad direction on what sorts of materials can be used but provides electron mobility and hole mobility values only for 4 materials, one for each claimed material and therefore only a single combination.
The existence of working examples: Applicant has provided only a single example of a material combination that meets the claim limitations.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure: In order to determine the scope of the invention, every possible material for each of the four host materials would need to be evaluated for either hole mobility or electron mobility and then such properties compared to determine which combinations meet the requirements, this represents an essentially infinite amount of experimentation.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-20.
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 1-3, 5-8, and 12-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In reference to claims 1-3, 5-8, and 12-20, Claim 1 and 10 each includes substituents R10a that can be a long list of groups and “any combination thereof”. The inclusion of such language results in an unbounded range of possible structures. That is, the possible structures are infinite. An infinite range is not definite as there is no bounds to the claimed subject matter.
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 1—3, 5-8, and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Seo et al (US 2014/0042469) (Seo) in view of Hwang et al (US 2009/0295274) (Hwang).
In reference to claims 1, 3, 12, and 16, Seo teaches a light emitting element comprising a plurality of light emitting layers wherein the first light emitting layer comprises a first host compound and a second host compound wherein the first and second host compounds are hole and electron transport compounds respectively ([0018] [0020]) to and the second light emitting layer comprises a second dopant, a hole transport compound and an electron transport compound wherein the two layers are in contact with each other ([0080]) and exemplifies a device such as example device 1 (Table 1) wherein the host materials in the different layers are different compounds as shown below.
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While Seo does not state what the electron mobility and hole mobility of the host materials are, these properties are inherent to the materials themselves and are expected to meet the claim limitations as they meet all structural requirements of the claims. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 772. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, 195 USPQ 430.
Seo does not expressly teach that the hole transport host compounds should comprise deuterium atoms as claimed.
With respect to the difference, Hwang teaches, in analogous art, that partial or full deuteration of protons of semiconducting organic compounds, high voltage stability of the devices can be increased, turn on voltage can be decreased and therefor a usage lifetime can be prolonged efficiently (Hwang [0025]).
In light of the motivation of using partial deuteration as described above, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the partial deuteration as described by Hwang in order to increase stability, decreased turn on voltage and prolong device lifetime and thereby arrive at the claimed invention.
For Claim 1: Reads on the claimed device configuration wherein 35DCzPPy reads on 312-1, PCCP reads on 311-2, 2mDBTPDBq-II reads on 312-3 and PCBA1BP reads on 311-5.
For Claim 3: Reads on wherein the layers are in direct contact.
For Claim 12: Reads on wherein the compounds are different.
For claim 16: Reads on formula 412.
In reference to claim 2, Seo in view of Hwang teaches the device as described above for claim 1. While Hwang does not point to any specific ratio of hydrogen to deuterium, Hwang describes a range of partial to full deuteration that is a range that overlaps with the instantly claimed range. 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).
In reference to claims 5-8, Seo in view of Hwang teaches the device as described above for claim 1. While Seo in view of Hwang does not teach the LUMO and HOMO values of the materials, these are inherent properties of the materials. As the materials meet all structural requirements of the claimed composition, it is assumed that these compounds inherently meet the claimed requirements. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 772. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, 195 USPQ 430.Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claims 13-15 and 17, Seo in view of Hwang teaches the device as described above for claim 1. While Seo does not teach the emission spectrum of the specific materials demonstrated these are inherent properties of those materials. If such properties are not inherent to those used in examples, the disclosure of Seo teaches a variety of materials that overlap in scope with those claimed including different emission wavelength ranges and structures (Seo [0141] to [0143]) and it would have been obvious to have selected taught functional equivalent dopants from the disclosure of Seo with the anticipation of producing a similarly effective device.
In reference to claims 18-20, Seo in view of Hwang teaches the device as described above for claim 1 and further teaches that it used in a device comprising a TFT connected to an electrode (Seo [0160]).
While Seo does not exemplify such a device, it would have been obvious to have used the device structure taught by Seo in order to have formed such a device as described therein.
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive.
In reference to the outstanding rejections under 35 USC 112(a) for failing to meet the written description requirement, Applicant points to the amendments made to claim 1 to incorporate formulae from 311 and 312 in the specification. Applicant argues that these constitute examples of the claims that are not limited to the single species exemplified but rather represent a broad and representative genus of compounds with varying electron and hole mobility characteristics and that the inclusion of multiple formulae and compound classes demonstrates possession of the claimed invention beyond a single embodiment. This argument is not convincing. The amendment to the claims does not increase the number of species demonstrated nor does it meaningfully decrease the number claimed. While each of the formulae of incorporated into the claim represent near infinite variation in structure, they still do not represent a single example of the claimed combination. As previously pointed out, a species of the invention is not a species of formula 311-1 or a species of formula 312-1. Rather, a species requires the selection of four materials from among those formulae claimed and further that they have the claimed relationships in hole and electron mobility. Applicant appears to have invented a relatively narrow scope of devices with specific materials as hosts that have the claimed relatively properties concerning hole and electron mobility. In contrast, Applicant has claimed an essentially infinite number of possible devices that share that property. The instant specification provides a single species which is not considered sufficient to show that Applicant was in possession of an essentially infinite number of devices that share a property with that species.
Applicant also argues “paragraphs [00342]-[00345] describe a process for measuring a hole mobility of a hole-transporting host and an electron mobility of an electron-transporting host” and that “That is, a person of skill in the art should be to measure the electron mobilities and hole mobilities of the provided example compounds, including, for example, Compounds 1-1 to 1-14 and Compounds 2-1 to 2-20, and determine which of the example compounds have greater electron mobility measurements and hole mobilities than the other example compounds”. This argument is not convincing. First, the claims are not rejected for failing to describe how measurements of hole or electron mobility is measured. Second, Applicant has not claimed compounds 1-1 to 1-14 and compound 2-1 to 2-20 together in any claim. The one example described in the written description does not provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus (see MPEP 2163-II-A-3-a-ii).
Concerning the outstanding rejections under 35 USC 112(a) for failing to meet the enablement requirement for the scope of the claimed invention, Applicant argues that the Office has not cited any reference art or technical evidence to support the assertion that measuring the electron mobilities and hole mobilities of the example compounds requires undue experimentation. This argument is not convincing. Initially, the claimed scope is not just the “example compounds” but to an essentially infinite number of materials. It is not required that the Office point to any such technical evidence for this rejection. Applicant’s claims are drawn to an essentially infinite number of possible combinations of materials. To make and use the scope of the claimed invention would require an essentially infinite number of experiments, which is undue experimentation. Infinite experimentation is clearly undue without any technical evidence. Applicant points to paragraphs defining some example materials. However, Applicant’s claims are not drawn to those materials and therefore this is not convincing.
Applicant further argues that the specification provides guidance on measuring protocols. The fact that the specification provides guidance on measuring protocols is not disputed but it is also not sufficient to meet the scope of enablement requirement.
Applicant argues that enablement does not require exhaustive disclosure of measurements using routine techniques such as measuring electron mobility and hole mobility. Applicant argues that the Office’s interpretation imposes an unrealistic and legally unsupported burden on the Applicant to describe every known combination of compounds that satisfy the recited electron mobility and hole mobility measurements, which is not required under 112(a). This argument is not convincing. Applicant has, from the instant disclosure, prepared one combination of materials that meets an electron mobility and hole mobility measurement relationship but claims an essentially infinite number of possible combinations of known or prophetic compounds that satisfy that recited electron mobility and hole mobility measurement and exceptionally broad chemical formulae, none of which could reasonably be defined by a single structural feature and each having an infinite or near infinite number of materials. The scope of enablement requirement is not met as Applicant has not enabled an ordinarily skilled artisan to make and use the scope of the claimed invention without essentially infinite experimentation. The measurement of electron and hole mobilities may be within the ambit of the ordinarily skilled artisan. However, performing an infinite number of such experiments is considered undue experimentation.
Applicant has argued that the Wands factors are misapplied and instead offers their own application of the Wands factors. This argument is not convincing. The Wands factors are applied in the previous office actions thoroughly and Applicant has pointed to no specific issues therein except to provide their own interpretation. Applicant misrepresents the breadth of the claimed invention, predictability of the art, amount of direction provided, working examples and quantity of experimentation in this analysis. Further the Wands factors are an Examiner’s analysis tool and are provided to show that such a finding was not made arbitrarily without weighing the evidence. Such a showing is clearly met.
In reference to the outstanding rejections under 35 USC 103, Applicants argues that the amendments overcome the rejections of record. However, Applicant has incorporated the subject matter of claim 9 into claim 1. Claim 9 and 1 were rejected under the same embodiment and therefore the amendments do not overcome the rejections.
Applicant also argues that the inherency rationale fails concerning the rejections of claims 1 and 9 and argues that the property of the electron and hole mobilities as claimed is not necessarily present. However, these materials meet all structural requirements of those claimed. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 772. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, 195 USPQ 430. As Applicant argues that such experiments are so simple that doing an infinite number of them is not undue experimentation, doing four such experiments to demonstrate that the materials of the prior art do not meet the limitations should therefore be trivial for an ordinarily skilled artisan.
Applicant argues that the claims as amended give rise to unexpected results with respect to having both hole transport hosts being deuterated and points to example devices and comparative devices in the instant specification as evidence.
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 efficiency, lifespan and less decrease in efficiency due to the roll off phenomenon 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.
Applicant responds to the Office action pointing out that 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 of the measured parameters presented in the data tables by arguing that the different devices in the table are multiple devices. It appears Applicant has misunderstood the requirement. As noted clearly in the Final Office action mailed 09/26/2025, the issue is that Applicant has failed to provide evidence of statistical significance of results. An ordinarily skilled artisan in the fields of science and engineering would necessarily understand this basic statistical requirement. The multiple examples in the table correspond to different experiments with different parameters (apparently dopant selection or ratios of materials in a given layer) and not duplicate experiments demonstrating statistical significance of each result. These experiments do not provide evidence of statistical significance.
Second, only device lifetime appears to have a practically significant difference between examples as claimed, See e.g. example 1 vs comparative example 5 which differ by the claimed difference in deuteration.
Third, none of the comparative devices correspond to a device of the prior art of record (e.g. devices of Seo such as example 1).
Fourth, 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 hole transport hosts and electron transport hosts can be any material whatsoever so long as the hole transport hosts comprise deuterium and the materials have relative hole and electron mobilities as claimed. These examples are not intended to be interpreted as the only points in which the data is 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 devices. As Applicant is attesting that the claimed devices have properties that would not be expected based on the genus as a whole, for example devices taught by Seo, support for the unexpected results must be provided that covers the scope of what is claimed.
Applicant argues that the data should be commensurate in scope with the amended claims as “the tested compound are representative of the claimed genus because they span different combinations of hosts within the recited electron mobility and hole mobility framework.”. This argument is not convincing. Applicants’ inventive examples all use the exact same combination of host materials while claiming an essentially limitless number of combinations. They do not “span” any combination of structures or mobilities as they are a single combination.
Conclusion
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 at (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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/Sean M DeGuire/Primary Examiner, Art Unit 1786