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 .
DETAILED ACTION
SECIFICATION OBJECTION
A parent Application No. 17/405,486 became US Pat. No. 12,369,888 and thus updated information to para. [0001] of the specification would be needed.
EXAMINER’S COMMENT
Applicant’s election without traverse (since applicant failed to traverse) of the species of claim 16 in the reply filed on September 24, 2025 is acknowledged. The examiner failed to find references making the elected species of claim 16 obvious other than ODP rejection.
The examiner further examines other species falling within scope of the recited Formula I of claim 1 as well as species of claim 12. The claim 12 recites 24 generic species and each species encompassing hundreds, if not thousands, of the species.
Thus, the examiner selects a first compound of the claim 12 having the following
substituents for examination under merit at this time.
RA and RB = H,
X = O,
RC = benzene,
RD = alkyl, cycloalkyl, aryl, heteroalkyl and heteroaryl for example,
R1 and R3 = methyl and R2 = H and
X1 to X6 = H.
The generic Formula 1 recited in claims 1-4, 6-8, 11, 12 and 14 would fall within
scope of the above discussed species. Also, claims 17 and 20 reciting the generic
Formula 1 would fall within scope of the above discussed species.
The examiner further addresses the recited generic formula (I) and Formula (II)
of claims 1, 17 and 20 as well as dependent claims reciting different species based on
Lin et al. (US 2019/0207127 A1) as a primary reference.
Thus, all claims are examined although applicant further stated that claims 4 and 11 would be withdrawn.
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.
Claim 13 is 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.
Claim 13 recite “wherein RH1 to R181 have the following structures” below Table, but the R181 does not appear in the Table and thus it would lacs an antecedent basis. Further, a nature of the RH1 to R181 is unclear.
Various species (i.e., RH1 to RH253) are recited following “wherein RH1 to R181 have the following structures” which is confusing.
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 1-4, 6-8, 11, 12, 14, 17 and 20 are rejected under 35 U.S.C. 103 as being
unpatentable over Choi et al. (US 2019/0326527 A1).
Choi et al. teach various organometallic compounds having Formula 1 in [0008-
0033]. Choi et al. teach various species of the organometallic compounds having
Formula 1 in [0141] falling within scope of the instant compound substantially.
For example, compounds 5 and 8 taught at pages 86-87 of Choi et al. differs from the instant first species of claim 12 as well as the Formula I of claim 1 reciting an additional RD substituent.
Choi et al. further teach that R2 of Formula 2 of page 1 would include a hydrogen
as well as the instantly recited substituents for RD of claim 1 such as alkyl, cycloalkyl,
aryl, heteroalkyl and heteroaryl (see [0022)].
Choi et al. further teach an organic light-emitting device comprising an anode,
cathode and an organic layer comprising an emission layer in [0004] and claim 16 which
would make claim 17 obvious.
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention to obtain modified compounds 5 and 8 further comprising the various R2 substituents in lieu of the hydrogen in Choi et al. since Choi et al. teach various substituents for RD and further to obtain the organic light-emitting device thereof absent showing otherwise.
Such modified compound would meet the compound LC1 having -CH3 (RD1) for
R201 and R202 taught in claim 14.
See In re Mills, 477 F2d 649, 176 USPQ 196 (CCPA 1972), In re Lamberti, 545
F.2d 747, 750 (CCPA 1976); Reference must be considered for all that it discloses and
must not be limited to preferred embodiments or working examples. MPEP 2123.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over
Choi et al. (US 2019/0326527 A1) as applied to claims 1-4, 6-8, 11, 12, 14, 17 and 20
above, and further in view of EP 3321258 A1 (May 16, 2018).
Choi et al. further teach employing a host in claim 19.
The instant claims 18 and 19 further recite specific hosts over Choi et al.
EP teaches utilization of the instant additional hosts in [0068].
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention further to utilize the art well known hosts taught by EP in Choi et
al. since Choi et al. further teach employing the host absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima
facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ
297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). MPEP 2141.
Claims 1-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over
Lin et al. (US 2019/0207127 A1) in view of Huang et al. (US 2013/0033171 A1).
This rejection would address the recited generic claim 1 comprising other species
and Lin et al. discussed below teach the instant compounds of the claims 1-17 and 20 at least partially.
Lin et al. teach organometallic compounds of Formula (I) or Formula (II)
comprising L and an organic light-emitting device thereof in abstract, [0004] and claims.
Lin et al. teach various substituents of R1 to R6 in [0006] encompassing the
instantly recited RA, RB, RC and RD as well as X2 being N. For example, two adjacent R5
and R6 forming a ring taught in the [0022] would make the recited fifth species of claim
12 obvious. Also, the two adjacent R5 and R6 forming a ring and R4 being C1-8 alkyl and
R7, R9 and R11 being methyl taught in the [0022] would make the recited LAi-9 and LAi-10
with G4 of claims 13 and 15 and a second species of claim 16 obvious. See In re Mills,
477 F2d 649, 176 USPQ 196 (CCPA 1972), In re Lamberti, 545 F.2d 747, 750 (CCPA
1976); Reference must be considered for all that it discloses and must not be limited to
preferred embodiments or working examples. MPEP 2123.
Lin et al. teach an organic light-emitting device in [0062] and claim 21 which
would make the instant claims 17 and 20 obvious.
The instant invention further recites a different L over Lin et al.
Huang et al. teach organometallic compounds in [0022]. Huang et al. teach and
equate the L of the organometallic compounds comprising those taught by Lin et al.
(Formula (II)) and the instant L (Formula (IV)) in the [0022] which would make the
instant claim 14 reciting R201 and R202 being RD1 obvious.
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention further to utilize the art well known L taught by Huang et al. in Lin
et al. since Huang et al. teach and equate the organometallic compounds comprising
those taught by Lin et al. (Formula (II)) and the instant L (Formula (IV)) absent showing
otherwise.
Selection of a known material based on its suitability for its intended use is prima
facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ
297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). MPEP 2141.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over
Lin et al. (US 2019/0207127 A1) in view of Huang et al. (US 2013/0033171 A1) as
applied to claims 1-17 and 20 above, and further in view of EP 3321258 A1 (May 16,
2018).
Lin et al. teach employing a host in [0064].
The instant claims 18 and 19 further recite specific hosts over Lin et al.
EP teaches utilization of the instant additional hosts in [0068].
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention further to utilize the art well known hosts taught by EP in Lin et al.
since Lin et al. further teach employing the host absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima
facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ
297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). MPEP 2141.
Double Patenting
Claim s 1-12 and 16-20 directed to the same invention as that of claim 1-12 and 16-20 of commonly assigned 18/181,378. Under 35 U.S.C. 101, more than one patent may not be issued on the same invention.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). The applicant should amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention.
Claims 1-12 and 16-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-12 and 16-20 of copending Application No. 18/181,378 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,369,488. Although the claims at issue are not identical, they are not patentably distinct from each other because scope of the instant claim 1 would encompass the recited “(i) two adjacent RB are joined to form a fused 5-memebered or 6-membered ring or (ii) one of X and X3 to X6 is N” in claim 1 of the U.S. Patent No. 12,369,488 as evidenced by the instant claim 9 and claim 5, respectively.
Claims 1-14 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 8, 9, 15, 17-20, 23, 26, 28, 29 and 31-34 of copending Application No.17/404,311 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of claims 1, 8, 15, 17, 23 and 34 recited in the copending application would overlap the instantly recited Formula I of claim 1 as evidenced by overlapping definition for X1-X6, X, RA, RB, R1, R2, R3, RC and RD of Formula I The OLED recited in the claims 17-20 of the copending application would meet
the instant claims 17-20.
This is a provisional nonstatutory double patenting rejection because the
patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAE H YOON/Primary Examiner, Art Unit 1762