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 .
Double Patenting
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 1-11, 23-30 and 32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-15, and 21-27 of copending Application No. 17/767,866. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant and copending claims are drawn to overlapping subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11, 23-30 and 32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6, 21-28, 32-27, 54-61, 65 and 66 of copending Application No. 17/767,602. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant and copending claims are drawn to overlapping subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-11, 24-30 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Voges et al (US 2017/0331053) (Voges).
In reference to Claims 1, 3-5, 11 and 24, Voges teaches compounds of formula A as shown below for an organic light emitting diode (abstract, [0014]-[0029])
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for example, wherein in the formula A, one group A1 is Ar1-41, and the other two groups A1 are Ar1-74 as shown above (Voges [0036]).
Voges discloses the compound of formula A that encompasses the presently claimed compound of formula (1), including wherein in the formula A, one group A1 is Ar1-41, and the other two groups A1 are Ar1-74 as shown above. Each of the disclosed substituents from the substituent groups of Voges are considered functionally equivalent and their selection would lead to obvious variants of the compound of formula A.
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 A to provide the compound described above, which is both disclosed by Voges and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
For Claim 1: Reads on a compound of formula (1) wherein L is a single bond to R24, R21 to R23 and R25 to R28 are each hydrogen, R31 to R34 are each hydrogen, R41 to R42 and R44 to R45 are each hydrogen, R43 is bonded to R56, R51 to R55 and R57 to R58 are each hydrogen, R61 bonds to Ar, R63 is phenyl, R62 to R66 are each hydrogen, Ar is represented by formula (4) wherein bonded at R77, R71 to R76 and R78 are each hydrogen.
For Claim 3: Reads on formula 1-a.
For Claim 4: Reads on formula 1-a-1.
For Claim 5: Reads on formula 1-a-2.
For Claim 11: Reads on hydrogen.
For Claim 24: Reads on a material.
In reference to claim 2, the claim further limits the formula (7), which is an optional embodiment of claim 1 (i.e. Ar is represented by any of the following formulae (4) to (7)) and therefore not required. As such, claim 2 is rejected based on similar reasons to claim 1.
In reference to claim 6-7, Voges teaches the compound as described above for claim 1 Voges further teaches that the aryl group can alternatively be biphenyl groups such as those claimed (Voges [0021] [0025] [[049]).
Cha discloses the compound of formula 1 that encompasses the presently claimed compounds, including wherein L1 or L2 are biphenyl. 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 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 biphenylene instead of phenylene to provide the claimed compound, which is both disclosed by Voges and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
In reference to claim 8, the claim further limits the substituted or unsubstituted aryl group of various R groups, which is an optional embodiment of claim 1 (i.e. R is selected from a hydrogen atom…) and therefore not required. As such, claim 8 is rejected based on similar reasons to claim 1.
In reference to claim 9, the claim further limits the formula (7), which is an optional embodiment of claim 1 (i.e. Ar is represented by any of the following formulae (4) to (7)) and therefore not required. As such, claim 9 is rejected based on similar reasons to claim 1.
In reference to claim 10, the claim further limits the alkyl groups, which is an optional embodiment of claim 1 (i.e. R# are each independently selected from a hydrogen atom, a substituted or unsubstituted alkyl group…) and therefore not required. As such, claim 10 is rejected based on similar reasons to claim 1.
In reference to claim 25 to 30 and 32, Voges teaches the compound as described above for claim 1. Voges further teaches that this compound is used in an organic light emitting device comprising an anode, a cathode, and an organic material layer between wherein the organic material layer includes a hole injection layer, a hole transport layer, a light emitting layer among others and wherein the compound is included in the hole transport layer (Voges [0083] to [0093]; [0079]) and wherein the emitting layer comprises a fluorescent material and exemplifies several fluorescent dopants (Voges [0110] to [0114]).
While Voges does not exemplify a device with this specific material in the hole transport layer as claimed, it would have been immediately obvious to the ordinarily skilled artisan to have used the material of Voges in the application of Voges with the anticipation of providing a device having similar functionality to that of the devices exemplified therein.
Claim 23 are rejected under 35 U.S.C. 103 as being unpatentable over Voges et al (US 2017/0331053) (Voges) in view of Hwang et al (US 2009/0295274) (Hwang).
In reference to claim 23, Voges teaches the compound as described above for claim 1.
Voges does not expressly teach that the hole transport 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.
Response to Arguments
Applicant’s arguments with respect to 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 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.
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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