DETAILED ACTION
Response to Amendment
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is responsive to the amendment received June 9, 2026. Claims 1 and 8 were amended. Claims 2-7 are canceled claims. Claims 1 and 8-20 are pending.
The previous rejection of claims 1 and 9-20 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in response to the amended claims filed on June 9, 2026.
The previous rejection of claims 1 and 8-20 under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al. (US 2018/0069182 A1) is withdrawn in response to the amended claims filed on June 9, 2026.
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.
Claims 1 and 8-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al. (US 2019/0058124 A1).
Hatakeyama et al. teaches polycyclic aromatic compounds for an organic EL device (see abstract). Hatakeyama et al. formula (I) is the following (see par. 19 and see also formula 2 in par. 34):
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126
268
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174
278
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.
Each of rings A, B and C may be aryl ring as benzene (see par. 21, 34). Y1 may be selected as boron (see par. 22). X1 and X2 may be selected independently as N-R where the R may be aryl or heteroaryl (see par. 23). Further, the R of the moiety N-R may be bonded to the ring A, B and/or C via a linking group or a single bond or by fusing (see par. 23). The Hatakeyama et al. formula (I) reads upon compounds of instant formula 1 of instant claim 1 and of at least compound #116 of instant claim 8 when Hatakeyama Y1 is selected as boron, Hatakeyama X2 is selected as N-R where R is aryl phenyl and Hatakeyama X1 is selected as N-R where R is heteroaryl dibenzofuran (see par. 80) where the R further bonds to the ring “B” benzene (see par. 23).
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108
160
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146
162
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Instant claim 1 formula 1 Instant claim 8 compound #116
While it is not seen where a compound the same as instant compound #116 is shown as an example Formula 1 compound in Hatakeyama et al., given the teachings of the reference, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to form Formula 1 compounds according to the definitions with selected groups as described above, wherein the resultant compound would also meet the limitations of the instant claims. One would expect to achieve functional compounds for light emitting devices within the disclosure of Hatakeyama et al. with a predictable result and a reasonable expectation of success.
With respect to properties and capabilities of a compound recited in claims 9 to 13 and device claims having the compound(s), Hatakeyama et al. renders obvious compound structures the same as recited within claim 1 as discussed above. As a same chemical structure, properties and capabilities of the chemical structure are presumed to be inherent to the structure (see MPEP 2112.01). Further, the Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office's inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Regarding device claims 14-19, the formula (1) material may be used as a material in a light emitting layer such as dopant material in a light emitting layer (see par. 144; per instant claims 14 and see devices full description at par. 126-315). Additionally, host material(s) may be used in combination (see par. 145; per claims 15, 18, 19) and further light emitting dopant(s) may be used in the light emitting layer (see par. 145, 146). Compositions/combinations of recited materials for layers of a device are taught (par. 126-315). Properties and capabilities of the recited materials are also discussed above in this rejection. Regarding claim 20, the device is part of a lighting apparatus (see par. 320-323). While a device having a compound the same as discussed above is not exemplified, given the teachings of the reference, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to select Formula 1 compounds for light emitting layers of a device as described above, wherein the resultant device structure would also meet the limitations of the instant claims. One would expect to achieve operational light emitting devices within the disclosure of Hatakeyama et al. with a predictable result and a reasonable expectation of success.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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 Dawn Garrett whose telephone number is (571)272-1523. The examiner can normally be reached Monday through Thursday (Eastern Time).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer 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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/DAWN L GARRETT/Primary Examiner, Art Unit 1786
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