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 .
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, 4-6, 9, 12-14 and 16-27 are rejected under 35 U.S.C. 103 as being unpatentable over Jatsch et al (US 2018/0222872) (Jatsch).
In reference to claims 1, 4-6, 16-18, 20-22, 25 and 27, Jatsch teaches compounds of formula (I), specifically formula (XVII) as shown below as a material for an organic electroluminescent device (Jatsch [0063] abstract)
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for example, wherein in the formula XIII, each of X is N, each Z1 is methyl, one Ar1 is phenyl and the other is phenyl substituted with dibenzothiophene or, a compound 4 except wherein the dibenzofuran is a dibenzothiophene as in compound 197 above (Jatsch [0016] [0019] [0065]).
Jatsch discloses the compound of formula (XVII) that encompasses the presently claimed compound of formula (I), including wherein in the formula XIII, each of X is N, each Z1 is methyl, one Ar1 is phenyl and the other is phenyl substituted with dibenzothiophene or, a compound 4 except wherein the dibenzofuran is a dibenzothiophene as in compound 197 above. Each of the disclosed substituents from the substituent groups of Jatsch are considered functionally equivalent and their selection would lead to obvious variants of the compound of formula (XVII).
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 formula (XVII) to provide the compound described above, which is both disclosed by Jatsch and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
For Claim 1: Reads on formula (I) wherein R1 and R1’ are each methyl, n is 1, L is phenylene, m is 1 and R2 is phenyl.
For Claim 4: Reads on wherein R2 is phenyl.
For Claim 5: Reads on wherein L is phenylene.
For Claim 6: Reads on wherein R2 is phenyl.
For Claim 16: Reads on wherein R2 is an unsubstituted C6 aryl group.
For Claim 17: Reads on wherein L is phenylene.
For Claim 18: Reads on wherein R2 is phenyl.
For Claim 20: Reads on wherein R2 is phenyl.
For Claim 21: Reads on wherein R2 is phenyl.
For Claim 22: Reads on wherein R2 is phenyl.
For Claim 25 or 27: Reads on wherein L is unsubstituted phenylene.
In reference to claims 9, 12-14 and 19, Jatsch teaches the compound (82) as described above for claim 1 and further teaches that this material is used in an organic electroluminescent device comprising, among other layers, an anode, cathode, emitting layer, electron transport layer, hole blocking layer (Jatsch [0070]) wherein the compound is included in an electron transport layer or a hole blocking layer (Jatsch abstract) and that electron transport layers can be doped with metals such as alkali metals or alkali metal complexes (Jatsch [0081]). Jatsch also teaches that these devices are used in electronic devices (Jatsch [0001])
While Jatsch does not exemplify a device as taught with this material included, it would have been obvious to the ordinarily skilled artisan before the effective filing date of the instant application to have used the device configuration taught by Jatsch to prepare a device with the anticipation that it would have functionally equivalent results to those devices exemplified therein.
In reference to claims 26, Jatsch teaches the compounds of formula (I) as described above for claim 1 and further teaches that arylene groups can be phenyl or biphenyl (Jatsch [0030]).
It would have been obvious to have selected an alternative aryl group for the compound in the absence of unexpected results.
In reference to claims 23-24, Jatsch teaches compounds of formula (I), specifically formula (XVII) as shown below as a material for an organic electroluminescent device (Jatsch [0063] abstract)
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for example, wherein in the formula XIII, each of X is N, each Z1 is methyl, one Ar1 is phenyl and the other is phenyl substituted with dibenzothiophene or, a compound 197 except wherein Z1 are each methyl that do not form a ring as in compound 4 above (Jatsch [0016] [0019] [0065]).
Jatsch discloses the compound of formula (XVII) that encompasses the presently claimed compound of formula (I), including wherein in the formula XIII, each of X is N, each Z1 is methyl, one Ar1 is phenyl and the other is phenyl substituted with dibenzothiophene or, a compound 197 except wherein Z1 are each methyl that do not form a ring as in compound 4 above. Each of the disclosed substituents from the substituent groups of Jatsch are considered functionally equivalent and their selection would lead to obvious variants of the compound of formula (XVII).
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 formula (XVII) to provide the compound described above, which is both disclosed by Jatsch and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
This compound is a positional isomer of the instantly claimed materials. 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.
Response to Arguments
Applicant's arguments filed 08/28/2026 have been fully considered but they are not persuasive.
In reference to the outstanding rejections over Jatsch, Applicant argues Jatsch only exemplifies 3 compounds that comprise dibenzothiophene and that none of the devices exemplified by Jatsch include one of those materials comprising a dibenzothiophene. Therefore, Applicant argues that it is hard to see how the selection of a dibenzothiophene to modify any particular compound of Jatsch could objectively be considered motivated. This argument is not convincing. The compounds of Jatsch include those with dibenzothiophene and no modification is required merely the selection of an unexpected material by combining preferred exemplified features from two preferred examples (either analogous atoms O for S or alternative alkyl substituents).
Applicant argues that the solution in this case is not ‘predictable’ based on the ruling Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd. 533 F.3d 1353, 87 USPQ2d 1452 (Fed. Cir. 2008), a case involving a compound used in a pharmaceutical application. This argument is not convincing. The Office agrees that predictability is a key issue for consideration. However, the predictability of results in a material for use in an OLED and the predictability of results in a material for pharmaceutical use are not similar. While both applications can include small molecular organic materials, the similarities largely end there. In pharmaceutical applications, the effects of structural changes within a chemical compound on results are highly unpredictable as they rely upon the introduction of a synthetic material into a biological system with many unknowns. By contrast, the OLED device uses a combination of purified synthetic materials in a highly controlled matrix. Further the properties of the materials that dictate the resulting properties of an OLED device are predictable with a high degree of accuracy through well known computation methods (e.g. LUMO, HOMO, T1, S1, etc.). In contrast, the properties that can lead to improved results in a biochemical assay (e.g. binding site interaction) are poorly predictable even using computational methods. In fact, the idea of selecting a “lead compound” as referred to by Applicant is nomenclature specific to the medicinal chemistry field wherein broad tests (e.g. high throughput screening) are used to identify one or more materials to be modified (i.e. lead compounds) to identify structural motifs or specific compounds that improve results from various biochemical assays over the ‘lead compounds’ (diversity-oriented synthesis). Such nomenclature is not even contemplated in the art of organic electronics as the properties of materials are highly predictable and it is the selection of materials with coordinated properties that gives rise to improved device properties. Taken together, it would have been obvious to have selected the exemplified group dibenzothiophene instead of dibenzofuran (in the compound 4 of Jatsch) or alternatively to have selected methyl groups instead of fused ethyl groups (in the compound 197 of Jatsch) to have arrived at the instantly claimed materials with the anticipation of providing functionally equivalent materials in the absence of unexpected results.
Applicant argues that in comparison to the compounds of Jatsch, the instantly claimed materials give rise to unexpected results, specifically pointing to current efficiency. This argument is not convincing.
For a finding of unexpected results, the results presented need to be of both statistical and practical significance and be commensurate in scope with the subject matter claimed (See MPEP 716.02).
First, while the inventive examples allegedly show improvements in device efficiency, the specification has provided no information that would allow the analysis of the statistical significance of the results. That is, there is no indication if more than one device was prepared and analyzed for each comparative and exemplary device and there is no information on the reproducibility or precision of the measured parameters presented in the data tables.
This is particular importance here because the differences observed between claimed and comparative devices is very small in magnitude. For example, Appl. Ex. 1 has a current efficiency of 8.03 Cd/A whereas Comp. Appl. Ex. 2 has a current efficiency of 7.99 Cd/A.
Furthermore, the record does not support Applicant’s attestation that this result is unexpected. While Jatsch does not demonstrate the exact compounds claimed used in a device, Jatsch does demonstrate several devices with the compounds described therein including those using such materials in an OLED device’s electron transport layer. These results demonstrate what is expected for the materials of Jatsch. Examples from Jatsch demonstrate current efficiencies with values of 59 or 63 Cd/A depending on the selection of a material of Jatsch from those taught therein. That is, the change from 7.98 to 8.25 Cd/A is not unexpected as Jatsch teaches a larger change is expected when different materials are selected from that genus and it is not clear that Applicant’s claimed selection is an improvement over the materials of Jatsch.
Finally, the improvement in Cd/A is accompanied by a larger decrease in device lifetime and therefore the practical significance of the results is unclear.
For at least these reasons the rejections are maintained.
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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/Sean M DeGuire/Primary Examiner, Art Unit 1786
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