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 Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites blurry structures of general formulas (1) to (3).
For consistency and ease of reading, it is recommended in claim 1 to replace “R1” and “R2” with “R1” and “R2”, so as to contain subscripts and match the variables recited in the structures of general formulas (1) to (3).
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Seki (English translation of JP 2010062442 A obtained from Espacenet).
Supporting information provided by Xing (Xing X, Wu Z, Sun Y, Liu Y, Dong X, Li S, Wang W. The Optimization of Hole Injection Layer in Organic Light-Emitting Diodes. Nanomaterials (Basel). 2024 Jan 11;14(2):161. doi: 10.3390/nano14020161. PMID: 38251126; PMCID: PMC10819190.); Tomsic (Tomsic, Joan L.. (2000). <i>Dictionary of Materials and Testing (2nd Edition) - polymer. SAE International.).
Regarding claims 1-4 and 6-11, Seki teaches an organic light-emitting device having high efficiency and luminance and an extremely long lifetime by comprising an anode, a cathode, and an organic compound layer between the anode and cathode, wherein at least one layer of the organic compound layer contains an arylamine polymer represented by general formula (1) and (2) (¶ [0008]-[0011]). In particular, the arylamine polymer is contained in a hole injection layer or a light-emitting layer (¶ [0075]) (claims 9-10). As evidenced by Xing, a hole injection layer promotes charge (hole) injection from the electrode to the emissive layer while preventing excitons (electrons) from being quenched by the electrodes (second paragraph of Introduction on pg. 1). Accordingly, the hole injection layer may also be considered a hole transport layer and an electron-blocking layer (claims 7-8).
As the arylamine polymer represented by general formula (1) and (2) is a polymer, it is a high molecular weight compound (see definition of polymer on pg. 310 of Tomsic).
general formula (1):
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Seki teaches examples of organic light-emitting devices including the device of Example 1 which includes an anode, a hole injection layer comprising compound 1-5, a light-emitting layer, and a cathode (¶ [0130]-[0139]).
Compound 1-5 is reproduced below in comparison to the claimed general formula (3) (see structure on pg. 30).
1-5:
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(3):
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Compound 1-5 reads on the claimed general formula (3) (claim 1) wherein:
Each R1 is not required to be present;
R2 each represent an alkyl group having 5 carbon atoms (claim 3);
X represents hydrogen (claim 4);
L is not required to be present; and
n, a, and b each represent 0 (claim 2).
Seki is silent as to compound 1-5 having a weight average molecular weight of 10,000 or more and less than 1,000,000 in terms of polystyrene. However, Seki does teach n in general formula (1) represents 10 to 500 (¶ [0010]-[0011]). Accordingly, the weight average molecular weight of compound 1-5 is expected to overlap with the claimed range. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Seki (English translation of JP 2010062442 A obtained from Espacenet) as applied to claim 1 above, and further in view of Swager (US 2004/0170775 A1).
Regarding claim 5, Seki teaches the organic light-emitting device including compound 1-5, as described above with respect to claim 1.
Compound 1-5 fails to include an aryl or heteroaryl group in the location of the claimed X. However, Seki does teach Ar3 in general formula (1) may represent a substituted divalent aryl group, wherein examples of the substituent include phenyl (¶ [0010] and [0030]).
Swager teaches conjugated polymers may be used to fabricate light emitting diodes, and the solubility of the conjugated polymers may be increased by attaching pendant groups such as alkoxy, alkyl, alkylsilyl, or phenyl groups to the main chain (¶ [0108] and [0110]).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to substitute a pendant group of alkoxy, alkyl, alkylsilyl, or phenyl to the repeating unit of compound 1-5, based on the teaching of Swager. The motivation for doing so would have been to increase the solubility of the polymer, as taught by Swager.
In particular, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to substitute a phenyl group on the divalent phenyl of Ar3 in the location of the claimed X, because it would have been choosing a specific pendant group taught by Swager and because it would have been choosing a specific location in which to place the pendant group, and these would have been choices from a finite number of identified, predictable solutions of a polymer useful in the device of Seki and possessing the benefits taught by Swager. One of ordinary skill in the art would have been motivated to produce additional polymers represented by Seki’s general formula (1) having the benefits taught by Seki and Swager in order to pursue the known options within his or her technical grasp with a reasonable expectation of success. See MPEP 2143.I.(E).
The modified compound 1-5 reads on the claimed general formula (3) wherein X is a phenyl group.
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 8-12 of U.S. Patent No. US 11,999,818 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘818 recites a high molecular weight compound comprising a repeating unit represented by a general formula (3) that is identical to the general formula (3) of ‘755 in claim 1. Additionally, claims 3-5 and 8-12 of ‘818 correspond to claims 3-11 of ‘755, as shown in the table below.
US 11,999,818 B2
17/796,755
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143
443
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733
420
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142
442
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526
423
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201
423
media_image8.png
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62
434
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59
440
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45
439
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42
436
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128
443
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62
440
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62
440
media_image15.png
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100
441
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2
439
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2
439
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2
442
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2
439
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2
442
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2
439
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2
442
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2
439
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2
442
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2
439
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Additionally, claim 2 of ‘818 recites R1 is a hydrogen atom in general formula (3). This corresponds to claim 2 of ‘755, which recites in general formula (3), a and b are 0. In the case that a and b are 0 in ‘755, R1 is necessarily hydrogen.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, and 7-11 of copending Application No. 18/289,286 (US PGPUB 2024/0260288 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 3 of ‘286 recites a high molecular weight compound comprising a repeating unit represented by general formula (1) which is nearly identical to the general formula (3) in claims 1 and 3 of ‘755.
18/289,286
17/796,755
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65
439
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43
438
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337
357
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494
426
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60
404
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142
442
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526
423
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201
423
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58
445
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59
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While the definitions for the variables R1 to R3 and X of ‘286 are not identical to the variables R1 to R3 and X of ‘755, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to select variables of general formula (1) to arrive at the instant general formula (3) comprising the limitations of claims 1 and 3 of ‘755, because it would have been choosing from a list of variables specifically taught, which would have been a choice from a finite number of identified, predictable solutions of a repeating unit possessing the benefits taught by ‘286. One of ordinary skill in the art would have been motivated to produce additional repeating units represented by general formula (1) having the benefits taught by ‘286 in order to pursue the known options within his or her technical grasp with a reasonable expectation of success. See MPEP 2143.I.(E).
Additionally, claims 2, 4, and 7-11 of ‘286 correspond to claims 2 and 4-11 of ‘755, as shown in the table below.
18/289,286
17/796,755
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58
438
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41
437
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139
444
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42
436
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62
440
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62
440
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31
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2
439
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2
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31
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2
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5
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2
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5
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2
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRAELYN R WATSON whose telephone number is (571)272-1822. The examiner can normally be reached M-F 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer 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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/BRAELYN R WATSON/Examiner, Art Unit 1786