DETAILED ACTION
This Office Action is in response to the Applicant’s Amendment filed 10/27/25.
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 Claim 8 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 as set forth in the Non-Final Rejection filed 07/25/25 is overcome by the cancellation of the claim.
The rejection of Claim 9 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 as set forth in the Non-Final Rejection filed 07/25/25 is overcome by the Applicant’s amendments.
The rejection of Claims 1-6 and 9-14 under 35 U.S.C. 102(a)(1) as being anticipated by Jeon et al. (WO 2017/014546 A1) as set forth in the Non-Final Rejection filed 07/25/25 is overcome by the Applicant’s amendments.
The rejection of Claim 15 under 35 U.S.C. 102(a)(1) as being anticipated by Jeon et al. (WO 2017/014546 A1) as set forth in the Non-Final Rejection filed 07/25/25 is NOT overcome by the Applicant’s amendments.
The rejection of Claims 7 and 8 under 35 U.S.C. 103 as being unpatentable over Jeon et al. (WO 2017/014546 A1) as set forth in the Non-Final Rejection filed 07/25/25 is overcome by the cancellation of the claims.
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 1-6 and 9-16 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, Claim 1, which the other claims are dependent upon, and Claim 16 recites the broad recitation that “L is substituted or unsubstituted C6-C36 arylene,” and the claims also recite that “L is chosen from one of the following moieties A1, A3, A4, A5 or A7” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeon et al. (WO 2017/014546 A1).
Jeon et al. discloses an organic electroluminescent (EL) device comprising a pair of electrodes, interposed therein a hole-injecting layer, hole-transporting layer, at least one light-emitting layer, electron-transporting layer, and electron-injecting layer (among others) ([117]-[118], [160]); the organic EL device is used for the construction of displays due to “a wider viewing angle, a greater contrast ratio, and a faster response time” ([2]). Jeon et al. discloses inventive compounds such as the following:
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(page 30) such that R1 = R4 = unsubstituted C6 aryl (phenyl), R2 = substituted C12 heteroaryl (N-carbazolyl-substituted carbazolylene), and R3 = unsubstituted C5 heteroaryl (pyridyl) of Applicant’s Formula (1) to comprise as dopant material (in presence with excess host material) in a light-emitting layer ([119]-[120]).
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.
14. Claims 1-6 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Jeon et al. (WO 2017/014546 A1).
Regarding Claims 1-5 and 9-14, Jeon et al. discloses an organic electroluminescent (EL) device comprising a pair of electrodes, interposed therein a hole-injecting layer, hole-transporting layer, at least one light-emitting layer, electron-transporting layer, and electron-injecting layer (among others) ([117]-[118], [160]); the organic EL device is used for the construction of displays due to “a wider viewing angle, a greater contrast ratio, and a faster response time” ([2]). Notice that “at least one light-emitting layer” implies the possible existence of a plurality of light-emitting layers; the light-emitting layer comprising Jeon et al.’s inventive compound (as dopant material) can be defined as the “organic semiconductor layer” (inherently a layer of electron and hole transport, as well as charge transport to the adjacent light-emitting layer(s)); alternatively, the upper half of the light-emitting layer (closer to the cathode) comprising Jeon et al.’s inventive compound can be defined as the organic semiconductor layer (which must transport electronic charge to the lower half of the light-emitting layer). Jeon et al. discloses inventive compounds such as the following:
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(page 30) such that R2 = substituted C12 heteroaryl (N-carbazolyl-substituted carbazolylene) and R3 = unsubstituted C5 heteroaryl (pyridyl) of Applicant’s Formula (1) to comprise as dopant material (in presence with excess host material) in a light-emitting layer ([119]-[120]). Jeon et al. discloses that its inventive compounds are encompassed by the following formula:
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([46]) where R1 = R3 = R6 = independently C5-30 aryl such as “phenyl, biphenyl . . .” ([13], [16], [43], [53]). However, Jeon et al. does not explicitly disclose any of the compounds as recited by the Applicant, particularly in regards to the presence of a moiety corresponding to Applicant’s formula (2). Nevertheless, it would have been obvious to modify D-21 as disclosed by Jeon et al. (above) such that at least one of R1 and R4 = Applicant’s formula (2) (with L = unsubstituted C6 arylene (phenylene), n = 1, and Ar = unsubstituted C6 aryl (phenyl)) and the other one of R1 and R4 = unsubstituted C6 aryl (phenyl); L = any one of moieties A1 and A3. The motivation is provided by the fact that the modification merely involves an exchange of one group (phenyl or “Ph” as indicated in D-21) for a functional equivalent (biphenyl) selected from a highly finite list as disclosed by Jeon et al. (as preferred embodiments of aryl groups) and easily envisioned from the scope of its general formula; additional motivation exists, including the fact that the modification merely involves a homologous extension of at least one of its phenyl substituent group (to form biphenyl), producing a compound that can be expected to have highly similar chemical and physical properties, thus rendering the production predictable with a reasonable expectation of success.
Regarding Claim 6, Jeon et al. discloses additional embodiment:
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(page 30) which can be modified in a similar manner as proposed by the Office above (i.e., exchange of phenyl for biphenyl) to produce a compound such that R2 = substituted C12 heteroaryl (N-carbazolyl-substituted carbazolylene), R3 = Applicant’s formula (2) (with L = unsubstituted C6 arylene (phenylene), n = 1, and Ar = unsubstituted C6 aryl (phenyl)), and R1 = R4 = unsubstituted C6 aryl (phenyl) of Applicant’s Formula (1).
15. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Jeon et al. (WO 2017/014546 A1).
Jeon et al. discloses the organic electroluminescent (EL) device (organic electronic device) of Claim 15 as shown above in the 35 U.S.C. 102(a)(1) rejection. The compound of Applicant’s Formula (1) is again shown below:
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(page 30). Jeon et al. discloses that its inventive compounds are encompassed by the following formula:
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([46]) where R3 = R6 = independently C5-30 aryl such as “phenyl, biphenyl . . .” ([16], [43], [53]). However, Jeon et al. does not explicitly disclose any of the compounds as recited by the Applicant, particularly in regards to the presence of a moiety corresponding to Applicant’s formula (2). Nevertheless, it would have been obvious to modify D-21 as disclosed by Jeon et al. (above) such that at least one of R1 and R4 = Applicant’s formula (2) (with L = unsubstituted C6 arylene (phenylene), n = 1, and Ar = unsubstituted C6 aryl (phenyl)); L = any one of moieties A1 and A3. The motivation is provided by the fact that the modification merely involves an exchange of one group (phenyl or “Ph” as indicated in D-21) for a functional equivalent (biphenyl) selected from a highly finite list as disclosed by Jeon et al. (as preferred embodiments of aryl groups) and easily envisioned from the scope of its general formula; additional motivation exists, including the fact that the modification merely involves a homologous extension of at least one of its phenyl substituent group (to form biphenyl), producing a compound that can be expected to have highly similar chemical and physical properties, thus rendering the production predictable with a reasonable expectation of success.
Response to Arguments
16. The Applicant argues on pages 10-13 the lack of motivation to select and modify D-21 of Jeon et al.; the Applicant further argues on page 14 that “Jeon does not recognize that phenyl and biphenyl are equivalents, because the reference merely discloses the phenyl and biphenyl are examples of ‘(C5-C30)aryl(lene).’” Applicant's arguments have been fully considered but they are not persuasive. Firstly, it should be noted that the selection of D-21 is chosen from a highly finite list of embodiments as shown on pages 13-14, and thus can be easily chosen for modification during the normal course of experimentation; the disclosed embodiments are taught to be encompassed by its general formula as shown below:
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([46]) containing chemical groups which can be modified ([135]-[141]; “not limited thereto,” [143]). Jeon et al., for example, discloses that R1, R3, and R6 each independently equals C5-30 aryl groups such as “phenyl, biphenyl . . .” ([13], [16], [43], [53]), and thus show that such groups can equally serve as viable aryl substituent groups for R1, R3, and R6. Hence, it is the position of the Office that clear motivations to modify D-21 exist, particularly in view of the scope of Jeon et al.’s general formula, as the modification merely involves an exchange of one group (phenyl) for a functional equivalent (biphenyl) selected from a highly finite list as disclosed by Jeon et al. (which are recognized as equally viable aryl groups for R1, R3, and R6). Furthermore, the Applicant has not addressed the additional motivation to modify D-21 as stated by the Office in the previous Office Action, wherein the modification merely involves a homologous extension of at least one of its phenyl substituent groups (to form biphenyl), producing a compound that can be expected to have highly similar chemical and physical properties, thus rendering the production predictable with a reasonable expectation of success. Notice that MPEP 2144.09(I)-(II) states the following:
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Hence, it is the position of the Office that the production of the homologous variant of D-21 (that differs only in the presence of an additional phenyl group) is of such close structural similarity that it would have had similar properties, providing sufficient motivation to one of ordinary skill the art to make the claimed compound.
Conclusion
17. 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.
18. 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.
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/JAY YANG/Primary Examiner, Art Unit 1786