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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-14 of U.S. Patent No. 11434228. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed materials and devices are also claimed within the scope of the patented claims.
Claims 1-5 and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 17/781,291. 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 § 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 1-2, 4-5 and 7 to 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al (WO 2014/112728).
In reference to claims 1-2 and 4-5, Kim teaches a compound 509 as shown below (Kim p 39 [203]) that reads on the instant claims.
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For Claim 1: Reads on a compound of formula 1 wherein R1 is an alkyl group having 1 carbon atoms, R2 to R3 are each an aryl group having 6 carbon atoms, R4 to R6 and R8 are each hydrogen, R7 is a group of formula 2, L1 and L2 are each a bond, Ar1 is an aryl group with 12 carbon atoms, Ar2 is a substituted aryl group with 13 carbon atoms, and the substituents are methyl groups.
For Claim 2: Reads on formula 1-3.
For Claim 4: Reads on a direct bond.
For Claim 5: Reads on wherein Ar1 is an aryl group with 12 carbon atoms, and Ar2 is a substituted aryl group with 13 carbon atoms.
In reference to claims 7 to 10, Kim teaches a device comprising the compound 539 in an organic layer of the device that reads on the claims (Kim Table 17 [539]).
It is noted while Kim may not name the layer(s) of the device the same name, the naming of a layer does not alter its structure or composition. As the device of Kim includes the required composition of layers between electrodes comprising the claimed material, the device meets the claim requirements.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (WO 2014/112728).
In reference to claim 6, Kim teaches a compound of formula 1a as shown below (Kim [0009]),
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for example a compound such as compound 301 except wherein the arylamine is a bis biphenyl amino group as in compound 443.
Kim discloses the compound of formula 1a that encompasses the presently claimed compound, including a compound such as compound 301 except wherein the arylamine is a bis biphenyl amino group as in compound 443. Each of the disclosed substituents from the substituent groups of Kim are considered functionally equivalent and their selection would lead to obvious variants of the compound of formula 1a.
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 1a to provide the compound described above, which is both disclosed by Kim and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 11/04/2025 have been fully considered but they are not persuasive.
Concerning the outstanding rejections under 35 USC 102 of claims 1-2, 4-5 and 7-10, Applicant argues that the amendments to the claims overcome the prior art of record. This argument is not convincing as example compounds and devices disclosed by Kim still read on the claims, for example the compound and device pointed to above herein.
Concerning the outstanding rejection of claim 6 under 35 USC 103, Applicant argues that the examples in the prior art differ from the claims and points to several examples from the prior art that do not read on the instant claim. These arguments are not convincing as the claim is rejected under 35 USC 103 and an example is not necessary. Indeed, the compounds of claims 6 lie within the disclosure of the prior art as pointed to herein again and in the outstanding rejection. The selection of one or more specific aryl groups from among those exemplified by the art is considered obvious in the absence of unexpected results.
Applicant argues that the examples in the instant specification provide evidence of unexpected results. Additionally, Applicant mentions additional comparative examples in the remarks. However, the data for these additional examples are not submitted in the form of a declaration or affidavit under 37 CFR 1.132 and as such will not be considered.
Concerning the data in the specification, Applicant argues that the selection of specific substituents from among those disclosed by the prior art gives rise to unexpected improvements in terms of device performance in an organic electronic device, specifically lifetime, efficiency and driving voltage. This argument is not convincing for at least the following reasons.
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 driving voltage, efficiency and device lifetime, 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.
Second, the results do not appear to correspond to an unexpected improvement in comparison to the prior art. Kim teaches, by way of numerous examples, that the devices of Kim are expected to produce similar improvements in device lifetime, efficiency and driving voltage and that the selection of specific substituents results in variability that is greater than what Applicant argues is unexpected. For example, in table 3, examples of the prior art materials demonstrate that selection from within the genus of Kim results in up to 83%, 19.5%, and 12.5 % improvements in lifetime, efficiency and driving voltage respectively while the instant data shows improvements as small as 17.5%, 6.6% and 9.6% in comparison to compounds of Kim for lifetrime, efficiency and driving voltage. That is, the data presented appears to suggest that the examples show results that fall within those expected for materials of the prior art and not unexpected improvements. Additionally, Both the instant specification and the prior art compare the devices vs a control hole transport material NPB. In the prior art, the prior art devices show improvements in lifetime and efficiency 83% and 29% in comparison to NPB while the instant specification shows improvements of only up to 60% and 14% in comparison to the same material.
That is, the data actually demonstrates that the claimed materials perform in the same way that an ordinarily skilled artisan would expect for materials of the genus of Kim.
Third, the showing of the results of a few examples is not commensurate in scope with the very large number of compounds encompassed by the instant claims. For example, none of the aryl groups Ar1, or Ar2 in the examples are selected as heteroaryl groups instead. These examples are not intended to be interpreted as the only points in which the data in not commensurate in scope with the claims but merely to illustrate how the breadth of the claimed compounds is much larger than that set forth in the examples, these variables resulting in claiming thousands of more compounds and even more devices. As Applicant is attesting that the claimed compounds have properties that would not be expected based on the genus as a whole, for example compounds taught by Kim, support for the unexpected results must be provided that covers the scope of what is claimed.
Concerning the outstanding double patenting and provisional double patenting rejections, Applicant argues that the amended claims distinguish the instant claims from the copending and patented claims. This argument has been fully considered but not found convincing. The copending and patented claims still claim the instantly claimed compounds. The differences in selection of substants have not been established as non-obvious.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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