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 1-5, 7, 13, 15, 18, 25, 27-30 and 32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 10-12, 15-32, and 36 of copending Application No. 17/759,947 the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are drawn to devices comprising all of the limitations of the instant applications but requiring an additional material as a host material in a different layer of the device.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 3 is objected to because of the following informalities. The word anthracenylene appears to be misspelled ‘anthrasenylene’ Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-5, 12-13, 15 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticiapted by Yamamoto et al (US 2013/03060963) (Yamamoto).
In reference to claims 1, 3-5, 12-13, 15 and 18, Yamamoto teaches a compound of formula A117 as shown below that reads on the instant claims.
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For Claim 1: Reads on a compound of formula (1) with a MW of 764, Y1 is N, L1 and L2 are each a single bond, Ar1 and Ar2 are each an unsubstituted phenyl, R Y2 is CR wherein R is hydrogen, R1 to R6 are each hydrogen, L4 is a single bond, L3 is a single bond, n is 1, Cz is a group of formula 1-b, R33 is a substituted heterocyclic group having 13 ring atoms, each of R31 to to R32 and R34 to R38 are hydrogen.
For Claim 3: Reads on wherein L3 and L4 are single bonds.
For Claim 4: Reads on wherein R33 is a substituent.
For Claim 5: Reads on a substituted aryl group having 12 carbon ring atoms.
For Claim 12: Reads on wherein L1 and L2 are a single bond.
For Claim 13 Reads on wherein R1 and AR2 are each phenyl.
For Claim 15: Reads on wherein formula 1-b is present, not formula 1-a.
For Claim 18: Reads on wherein R and R1 to R6 are hydrogen.
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, 7-13, 15, 18, 25, 27-30 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al (WO 2018/056645) (Cho).
In reference to claims 1-3, 7, 10, 12-13, 15, 18, 25, 27-30 and 32, Cho teaches an organic electroluminescent device comprising two electrodes, an electron transport and an electron buffer layer between one of the two electrodes and the light emitting layer that can comprise a fluorescent dopant wherein the buffer layer comprises a compound of formula (1) that is more specifically selected from a compound of formula 11 as shown below (Cho [12]-[24])
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for example, wherein in the formula 11, one of Ar3 is biphenyl and Ar4 is substituted phenyl wherein a substituent is deuterium, n is 3, one of L is naphthalene group, and the others are phenylene groups.
Cho discloses the compound of formula 1 that encompasses the presently claimed compound, including wherein in the formula 11, one of Ar3 is biphenyl and Ar4 is substituted phenyl wherein a substituent is deuterium, n is 3, one of L is naphthalene group, and the others are phenylene groups. Each of the disclosed substituents from the substituent groups of Cho 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 substituents among those disclosed for the compound of formula 1 to provide the compound described above, which is both disclosed by Cho 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) with a MW of greater than 650, Y2 is N, L1 is phenylene and L2 is a single bond, Ar1 and Ar2 are each an unsubstituted phenyl, R Y1 is CR wherein R is hydrogen, R1 to R6 are each hydrogen, L4 is a phenylene, L3 is phenylene, n is 1, Cz is a group of formula 1-b and each of R31 to R38 are hydrogen.
For Claim 2: Reads on phenylene.
For Claim 3: Reads on phenylene.
For Claim 7: Reads on 1-b-2.
For Claim 10: Reads on wherein L1 is phenylene and L2 is a single bond.
For Claim 12: Reads on phenylene.
For Claim 13: Reads on phenyl.
For Claim 15: Reads on wherein formula 1-b is present, not formula 1-a.
For Claim 18: Reads on wherein R and R1 to R6 are hydrogen.
For Claim 25: Reads on deuterium.
For Claim 27: Reads on a device with the layers claimed.
For Claim 28 to 30: Reads on the claimed device structure wherein the layers is an a layer as claimed.
For Claim 32: Reads on a fluorescent dopant.
In reference to claim 8-9 and 11, Cho teaches an organic electroluminescent device comprising two electrodes, an electron transport and an electron buffer layer between one of the two electrodes and the light emitting layer that can comprise a fluorescent dopant wherein the buffer layer comprises a compound of formula (1) that is more specifically selected from a compound of formula 11 as shown below (Cho [12]-[24])
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for example, wherein in the formula 11, one of Ar3 is biphenyl and Ar4 is biphenyl, n is 2, one of L is naphthalene group, and the other is phenylene groups.
Cho discloses the compound of formula 1 that encompasses the presently claimed compound, including wherein in the formula 11, one of Ar3 is biphenyl and Ar4 is substituted phenyl wherein a substituent is deuterium, n is 2, one of L is naphthalene group, and the other is phenylene groups. Each of the disclosed substituents from the substituent groups of Cho 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 substituents among those disclosed for the compound of formula 1 to provide the compound described above, which is both disclosed by Cho and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Cho teaches the compounds as described above which are positional isomers of those instantly claimed. Furthermore, it is noted that compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) 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). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). In light of the case law cited above, it therefore would have been obvious to one of ordinary skill in the art that the compound disclosed in the present claims is but an obvious variant of the compound presently claimed, and thereby one of ordinary skill in the art would have arrived at the claimed invention.”
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.
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/Sean M DeGuire/Primary Examiner, Art Unit 1786