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 .
Terminal Disclaimer
The terminal disclaimer filed on 12/22/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application 17/771,743 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Amendment
The amendment of 12/22/2025 has been entered.
Disposition of claims:
Claim 5 has been canceled.
Claims 1-4 and 6-10 are pending.
Claim 1 has been amended.
The cancellation of claim 5 obviates the rejections of claim 5 set forth in the last Office Action.
The Terminal Disclaimer approved on 12/22/2025 obviates the provisional rejections of claims 1-10 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 11, and 13 of copending Application No. 17/771,743.
The amendments of claim 1 has overcome:
the rejections of claims 1-4 and 7-10 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Lee et al. (US 2016/0111657 A1, hereafter Lee),
the rejections of claims 1-4 and 6-10 under 35 U.S.C. 103 as being unpatentable over Mun et al. (US 2019/0296248 A1, hereafter Mun) in view of Hyun et al. (KR 2018/0063707 A, the original document is referred to for figures and tables, the English translation is referred to for the remainder body of the patent, hereafter Hyun) set forth in the last Office Action.
The rejections have been withdrawn.
Response to Arguments
Applicant’s arguments see page 23-28 of the reply filed 12/22/2025 regarding the rejections of claims 1-4 and 7-10 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Lee et al. (US 2016/0111657 A1, hereafter Lee) set forth in the Office Action of 09/26/2025 have been considered.
Applicant argues that the cited rejections should be withdrawn in light of the amendment.
The cited rejections refer to Compound 1 of Lee (see section 6 of the last Office Action) which does not read on the limitation of Chemical Formula 1 of the amended claims; thus, the rejections are withdrawn.
Applicant’s arguments see page 23-28 of the reply filed 12/22/2025 regarding the rejections of claims 1-4 and 6-10 under 35 U.S.C. 103 as being unpatentable over Mun et al. (US 2019/0296248 A1, hereafter Mun) in view of Hyun et al. (KR 2018/0063707 A, the original document is referred to for figures and tables, the English translation is referred to for the remainder body of the patent, hereafter Hyun) set forth in the Office Action of 09/26/2025 have been considered.
Applicant argues that the claimed subject matter is distinct from the cited art and it is not obvious to one skilled in the art to obtain the technical solution of the subject application based on the cited references of Mun and Hyun.
Respectfully, the Examiner does not agree.
Applicant argues that each reference of Hyun and Mun differs from the instant claim; however, the rejections are based on combination of Mun and Hyun.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The cited rejections refer to the Compound of Mun as modified by Hyun (see section 24 of the last Office Action. Note that there was a typographical error in the section 24. The “Compound of Lee as modified by Hyun” should be “Compound of Mun as modified by Hyun”).
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The compound still reads on all the limitations of the Chemical Formula 1 of the amended claims; thus, the rejections are maintained.
The Office Action additionally made an alternative ground of rejection using Mun alone (see section 25-30 of the last Office Action). The resultant compound of the rejection has same structure as the Compound of Mun as modified by Hyun, which reads on all the limitations of the Chemical Formula 1 of the amended claims; thus, the ground of rejections are still proper.
For at least this reason, the argument is not found to be persuasive.
Applicant’s arguments see page 28 of the reply filed 12/22/2025 regarding the rejections of claims 1-4 and 6-10 under 35 U.S.C. 103 as being unpatentable over Mun in view of Hyun set forth in the Office Action of 09/26/2025 and the Declaration under 37 C.F.R. 1.132 (hereafter the Declaration) have been considered.
Applicant argues that the OLED comprising the compounds of the subject application has unexpected results (i.e. higher efficiency and lifetime, and lower driving voltage than the cited references).
Applicant argues that the inventive OLED devices (Examples 1 to 40 in Table 8 of the instant specification) each comprising the inventive compound provides unexpected results as compared to the comparative OLED device comprising the comparative compound (Comparative Examples 1-6 in Table 8 of the instant specification and Comparative 7-12 of the Declaration).
It is unclear whether the instant invention has unexpected results as compared to the prior arts (Mun in view of Hyun) for at least the following reasons.
First, none of the comparative Examples is the closest prior art.
An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential). See MPEP 716.02(e).
Each comparative device comprises a light emitting layer consisting of a single host compound (the compound of Chemical Formula 1 of the instant claims) and a dopant ((piq)2Ir(acac)) (see page 87 of the instant specification). On the other hand the closest prior art, Mun requires the light emitting device to comprises a first host of Formula (1) of Mun and a second host of Formula (2) of Mun. None of the comparative device comprises the second host of Formula (2) of Mun in the light emitting layer; thus, the comparative device is not directed to the device of Mun and the comparison was not made to the closest prior art.
Mun teaches that by using the mixture of the host compounds, it is possible to achieve high luminous efficiency, low driving voltage, and improved life span ([0022]); thus, in Applicant’s experiment, the reason why the comparative device has lower luminous efficiency, higher driving voltage, and shorter life span than the inventive device may be because the comparative device did not follow the teaching of the closest prior art, Mun.
Second, the rejections over Mun in view of Hyun are based on the teaching and motivation by Hyun.
Hyun teaches that the compound of Hyun provides the organic light emitting device comprising the compound with excellent luminescent efficiency and quantum efficiency ([0005]).
In response to applicant's argument as described above, the fact that applicant has recognized another advantage (i.e. higher efficiency and lifetime, and lower driving voltage) which would flow naturally from following the suggestion of the prior art (i.e. excellent luminescent efficiency and quantum efficiency ([0005] by Hyun and see section 19 of the last Office Action)) cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
For at least the reason, the argument is not found persuasive. The rejections are maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Mun et al. (US 2019/0296248 A1, hereafter Mun) in view of Hyun et al. (KR 2018/0063707 A, the original document is referred to for figures and tables, the English translation is referred to for the remainder body of the patent, hereafter Hyun).
Regarding claims 1-4 and 6, Mun discloses an organic light emitting device comprising a light emitting layer containing a first host of Formula (1) and a second host of Formula (2) ([0020]).
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Compound 1-44 of Mun has similar structure as Applicant’s Chemical Formula 1. The only difference is that the substitution positions of the carbazolyl group and the bis(biphenyl)amine group. The Compound 1-44 of Mun has the carbazolyl group substituted to the position 1 and the bis(biphenyl)amine group substituted to the position 4 of the dibenzofuran group (see the annotated numbers in the figure above), while Applicant’s Chemical Formula 1 requires the carbazolyl group substituted to the position 3 and the bis(biphenyl)amine group substituted to the position 1.
However, Mun does teach that the substituent groups corresponding to the (Ar1-L1)(Ar2-L2)N- and (Ar3-L3)(Ar4-L4)N- can be substituted to any substitutable positions of the dibenzofuran group corresponding to the L5 of Formula (1) ([0067]).
Hyun discloses a compound (Formula I) used as the organic material layer of an organic light emitting device ([0011]). Hyun teaches that the compound of Hyun can be used to make any organic layer including the light emitting layer of the organic light emitting device ([0005]-[0011], [0058]-[0059]).
The compound of Hyun has a dibenzofuran core wherein the position 1 of the dibenzofuran is substituted by an amine group and the position 3 of the dibenzofuran can be substituted by a heteroaryl group ([0006]-[0009], [0017]-[0020]).
Hyun teaches that the compound of Hyun provides the organic light emitting device comprising the compound with excellent luminescent efficiency and quantum efficiency ([0005]).
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the Compound 1-44 of Mun by substituting the substitution position of the carbazolyl group from position 1 to position 3 and the substitution position of the bis(biphenyl)amine group from position 4 to position 1 of the dibenzofuran group, as taught by Mun and Hyun.
The motivation of doing so would have been to provide the organic light emitting device comprising the compound with excellent luminescent efficiency and quantum efficiency based on the teaching of Hyun.
Furthermore, the modification would have been a combination of prior art elements according to known material to achieve predictable results. See MPEP 2143(I)(A). Each substitution of the substitution positions of the carbazolyl group and the bis(biphenyl)amine group would have been one known element for another known element and would have led to predictable results. See MPEP 2143(I)(B).
The modification provides Compound of Mun as modified by Hyun which has identical structure as Applicant’s Chemical Formula 1 and the embodiment 199 of claim 6, meeting all the limitations of claims 1-4 and 6.
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As an alternative ground of rejection, the modification of the Compound 1-44 of Mun is obvious over the teaching of Mun alone, because Mun teaches that the substituent groups corresponding to the (Ar1-L1)(Ar2-L2)N- and (Ar3-L3)(Ar4-L4)N- can be substituted to any substitutable positions of the dibenzofuran group corresponding to the L5 of Formula 1 ([0067]).
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the Compound 1-44 of Mun by substituting the substitution position of the carbazolyl group from position 1 to position 3 and the substitution position of the bis(biphenyl)amine group from position 4 to position 1 of the dibenzofuran group, as taught by Mun.
The modification would have been a combination of prior art elements according to known material to achieve predictable results. See MPEP 2143(I)(A). Each substitution of the substitution positions of the carbazolyl group and the bis(biphenyl)amine group would have been one known element for another known element and would have led to predictable results. See MPEP 2143(I)(B).
Additionally, a compound having a dibenzofuran core structure substituted by a carbazolyl group at position 3 and a bis(biphenyl)amine group at position 1 is a position isomer of the Compound 1-44 of Mun.
With respect to position isomers, the examiner points to the MPEP which states: 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). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. 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). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). See MPEP 2144.09 I and 2144.09 II.
Therefore, at the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to modify Compound 1-44 of Mun such that the carbazolyl group is substituted to the position 3 and the bis(biphenyl)amine group is substituted to the position 1 of the dibenzofuran group. A compound in which the carbazolyl group is substituted to the position 3 and the bis(biphenyl)amine group is substituted to the position 1 of the dibenzofuran group would represent a position isomer of the Compound 1-44 of Mun. One of ordinary skill in the art would expect that the position isomers having each respective structure would act in similar manner.
Regarding claims 7-10, the Compound of Mun as modified by Hyun reads on all the features of claim 1 as outlined above.
Mun in view of Hyun does not disclose a specific organic light emitting device comprising the Compound of Mun as modified by Hyun, however, Mun does teach that the compound of Mun represented by Formula (1) of Mun can be used as the host of the light emitting layer of an organic light emitting device ([0020]).
Mun teaches the structure of an organic light emitting device comprising a first electrode, a hole injection layer, a light emitting layer (a compound of Formula (1) of Mun as a first host, a compound of Formula (2) of Mun as a second host, and a light emitting dopant), an electron injection layer, and a second electrode ([0364]-[0367]).
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the Compound of Mun as modified by Hyun by incorporating it as the host compound of an organic light emitting device, as taught by Mun.
The modification would have been a combination of prior art elements according to known material to achieve predictable results. See MPEP 2143(I)(A). The substitution of the host compounds of Mun in an organic light emitting device of Mun would have been one known element for another known element and would have led to predictable results. See MPEP 2143(I)(B).
The modification provides Organic light emitting device of Mun as modified by Hyun comprising a first electrode, a hole injection layer, a light emitting layer (Compound of Mun as modified by Hyun as a first host, a compound of Formula (2) of Mun as a second host, and a light emitting dopant), an electron injection layer, and a second electrode ([0364]-[0367]).
Conclusion
THIS ACTION IS MADE FINAL. 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 SEOKMIN JEON whose telephone number is (571)272-4599. The examiner can normally be reached Monday - Friday 8:30am to 5:00pm EST.
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/SEOKMIN JEON/Primary Examiner, Art Unit 1786