DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The office acknowledges the receipt of applicants’ response to the restriction requirement.
Elected Species
PNG
media_image1.png
658
632
media_image1.png
Greyscale
PNG
media_image2.png
322
672
media_image2.png
Greyscale
Response to Restriction Traversal
The traversal is on the ground(s) that office has not shown one of three requirements labeled A-C. This is not found persuasive because the office takes the position that the subspecies represent patently distinct inventions which are not obvious variants.
The examiner has simply done an "elected of species" requirement.
Please note the section of the MPEP 808.01(a):808.01(a) IR-51 SpeciesWhere there is no disclosure of a relationship between species (see MPEP §806.04(b)), they are independent inventions. A requirement for restriction is permissible if there is a patentable difference between the species as claimed and there would be a serious burden on the examiner if restriction is not required. See MPEP § 803 and § 808.02.Where there is a relationship disclosed between species, such disclosed relation must be discussed and reasons advanced leading to the conclusion that the disclosed relation does not prevent restriction, in order to establish the propriety of restriction.When a requirement for restriction between either independent or distinct species is made, applicant must elect a Single disclosed species even if applicant disagrees with the examiner's restriction requirement.Election of species should not be required between claimed species that are considered clearly unpatentable (obvious) over each other. In making a requirement for restriction in an application claiming plural species, the office should group together species considered clearly unpatentable over each other.
In applications where only generic claims are presented, restriction cannot be required unless the generic claims recite >or encompass such a multiplicity, of species that an unduly extensive and burdensome search would be necessary to search the entire scopeof the claim. See MPEP § 803.02 >and § 809.02(a). If applicant presents species claims to more than one patentably distinct species of the invention after an office action on only generic claims, with no restriction requirement, the Office may require the applicantto elect a Single species for examination.
In the instant case, there is a disclosed relationship between the species. Thus the species are not independent inventions. The office has done the restriction because the genus is a serious burden to search and the species are patentably distinct. This is evident by the fact that prior art anticipating one species would not necessarily render obvious the other disclosed species. The additional searching required to examine all the claims would be a serious burden. For example prior art reading on applicants’ elected species would not necessarily read on the subject matter of Formula II.
The requirement is still deemed proper and is therefore made FINAL.
Results of Elected Species Search
A search of the prior art did not show the elected species. As no claims where specifically drawn to applicants’ elected species in independent form, no claims have been indicated as allowable. Claims written in independent form which require all the limitations of the elected species along with any dependent claims which require all the limitations of the elected species would be allowable. Under MPEP 803.02, the search was expanded to find an examinable species.
Examinable Species
The examinable species is represented by Compound 1 (page 43):
PNG
media_image3.png
340
394
media_image3.png
Greyscale
Compound 1 reads on applicants’ Formula 1 wherein G = G-1; T = single bond; L1 = phenylene; Ar1 = biphenyl; Ar1 = naphthyl substituted phenyl. The examinable species reads on claim 20, 21, 23-24, 26-28, 31-32, 34-38. Claims, 25, 29-30, 33 are withdrawn from further consideration as not reading on the examinable species.
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.
Claim(s) 20, 21, 23, 26-28, 34-38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Voges (US 2019/0040034 A1).
Regarding Claims 20, 21, 23, 26- 28, 34-35, Voges teaches an organic electroluminescent device (OLED) comprising anode, cathode and at least one emitting layer, characterized in that at least one organic layer, which may be an emitting layer, a hole transport layer or another layer, comprises at least one compound of formula (I) (paragraph 73). Formula(I) can be represented by Compound 1 (page 43):
PNG
media_image3.png
340
394
media_image3.png
Greyscale
Compound 1 reads on applicants’ Formula 1 wherein G = G-1; T = single bond; L1 = phenylene; Ar1 = biphenyl; Ar1 = naphthyl substituted phenyl (per claims 20, 36).
Compound 1 shows :
A monoamine (per claim 21)
G = G1 (per claim 23)
L1 = phenylene (per claim 26
n =0 (per claim 27)
Ar1 = biphenyl; Ar1 = naphthyl substituted phenyl (per claim 28)
Can be in the form of oligomers, polymers or dendrimers (paragraph 65); by polymerization reactions which lead to formation of C—C or C—N bonds are the Suzuki polymerization, the Yamamoto polymerization (paragraph 68) (per claim 34).
Can be made into formulations via a liquid phase, for example by spin-coating or by printing methods with solvents (paragraph 69) (per claim 35).
Regarding Claims 36-37, Voges teaches an organic electroluminescent device comprising substrate/hole injection layer (HIL)/hole transport layer (HTL)/optional second hole transport layer (HTL2)/electron blocker layer (EBL)/emission layer (EML)/electron transport layer (ETL)/electron injection layer (EIL) and finally a cathode (paragraph 122). Compound 1 is hole transport material in a hole transport layer (paragraph 86) (per clams 36-37).
Regarding Claim 38, Voges teaches an organic electroluminescent device method is characterized in that one or more layers are coated by the OVPD (organic vapour phase deposition) method or with the aid of a carrier gas sublimation. In this case, the materials are applied at a pressure between 10.sup.−5 mbar and 1 bar. A special case of this method is the OVJP (organic vapour jet printing) method, in which the materials are applied directly by a nozzle (paragraph 113) (per claim 38).
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.
Claims 24, 31-32 is rejected under 35 U.S.C. 103 as being unpatentable over Voges (US 2019/0040034 A1).
Regarding Claim 32, Voges teaches an organic electroluminescent device containing Compound 1, as discussed above. The compounds of the device are processed by liquid phase, for example by spin-coating or by printing methods to make formulations of the compounds (paragraph 69). The layer(s) containing Compound 1 are applied by vapour deposition in vacuum sublimation systems (paragraph 112).
The office views vacuum sublimation systems as a purification process which is fully capable of producing a highly pure material wherein it would have been obvious to one of ordinary skill in the art before the filing date of the invention to have expected a material purity at or above 90%, absent unexpected results (per claim 32).
Regarding Claims 24, 31, Voges teaches Compound 1 which reads on applicants’ Formula (I), as discussed above. Compound 1 is positional isomer to G-1-1-1 based on the point of attachment of the G1 group, shown below:
PNG
media_image4.png
337
545
media_image4.png
Greyscale
Compound 1 is derived from Generic Formula 1 (GF1) (page 1):
PNG
media_image5.png
320
448
media_image5.png
Greyscale
The office notes that GF1 encompasses multiple points of attachment where the phenylene group is attached to the bi-fluorene ring system which includes the point of attachment exemplified in G-1-1-1 and Formula (I-1-1).
Position isomers are a basic form of close “structural isomers.” MPEP 2144.09, second paragraph, states, “Compounds which are position isomers … are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” It is well established that position isomers are prima facie structurally obvious even in the absence of a teaching to modify. The isomer is expected to be preparable by the same method and to have generally the same properties. This expectation is then deemed the motivation for preparing the position isomers. This circumstance has arisen many times. See: Ex parte Englehardt, 208 USPQ 343, 349 (Bd. Pat. App. & Int. 1980); In re Mehta, 146 USPQ 284, 287 (C.C.P.A. 1965); In re Surrey, 138 USPQ 67 (C.C.P.A. 1963); Ex Parte Ullyot, 103 USPQ 185 (Bd. Pat. App. & Int. 1952); In re Norris, 84 USPQ 458 (C.C.P.A. 1950); Ex Parte Naito, 168 USPQ 437, 439 (Bd. Pat. App. & Int. 1969); Ex parte Allais, 152 USPQ 66 (Bd. Pat. App. & Int. 1965); In re Wilder, 166 USPQ 545, 548 (C.C.P.A. 1970); Ex parte Henkel, 130 USPQ 474 (Bd. Pat. App. & Int. 1960); Ex parte Biel, 124 USPQ 109 (Bd. Pat. App. & Int. 1958); In re Petrzilka, 165 USPQ 327 (C.C.P.A. 1970); In re Crounse, 150 USPQ 554 (C.C.P.A. 1966); In re Fouche, 169 USPQ 429 (C.C.P.A. 1971); Ex parte Ruddy, 121 USPQ 427 (Bd. Pat. App. & Int. 1955); In re Wiechert, 152 USPQ 247 (C.C.P.A. 1967), In re Shetty, 195 USPQ 753 (C.C.P.A. 1977); In re Jones, 74 USPQ 152, 154 (C.C.P.A. 1947); and In re Mayne, 41 USPQ2d 1451 (Fed. Cir. 1997) {in which the Court took notice of the extreme similarity between the amino acids Leucine and isoleucine: “In fact, Leu is an isomer of Ile -- an identical chemical formula with differences only in the chemical bonding of the atoms. The side chains…of Leu and Ile have the same number of hydrogen and carbon atoms…The structure of Leu and Ile alone suggest their functional equivalency” (at pages 1454-1455)}.
For example, “Position isomerism has been used as a tool to obtain new and useful drugs” (Englehardt) and “Position isomerism is a fact of close structural similarity” (Mehta, emphasis in the original). Note also In re Jones, 21 USPQ2d 1941 (Fed. Cir. 1992), which states at 1943 “Particular types or categories of structural similarity without more, have, in past cases, given rise to prima facie obviousness”; one of those listed is “adjacent homologues and structural isomers”. Position isomers are the basic form of close “structural isomers.” Similar is In re Schechter and LaForge, 98 USPQ 144, 150 (C.C.P.A. 1953), which states “a novel useful chemical compound which is homologous or isomeric with compounds of the prior art is unpatentable unless it possesses some unobvious or unexpected beneficial property not possessed by the prior art compounds.” Note also In re Deuel 34 USPQ2d 1210, 1214 (Fed. Cir. 1995) which states, “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds … a known compound may suggest its analogs or isomers, either geometric isomers (cis v. trans) or position isomers (e.g., ortho v. para).” See also MPEP 2144.09, second paragraph.
Therefore, nothing unobvious is seen in substituting the known Compound 1 isomer for the structurally similar G-1-1-1 isomer, as taught by Voges, since such structurally related compounds suggest one another and would be expected to share common properties absent a showing of unexpected results. In re Norris, 84 USPQ 458 (C.C.P.A. 1950).
The office notes that materials containing G-1-1-1 such as Formula (I-1-1) are not the preferred embodiment of Voges; however, non-preferred embodiments can be indicative of obviousness (see In re Lamberti, 192 USPQ 278 (CCPA1976); In re Boe, 148 USPQ 507 (CCPA 1976); In re Kohler, 177 USPQ 399 (CCPA 1973)), and a reference is not limited to working examples (see In re Fracalossi, 215 USPQ 569 (CCPA1982)). In addition, "[A] reference disclosure must be evaluated for all that it fairly teaches (Generic Formula 1) and not only for what is indicated as preferred." In re Bozek, 416 F.2d 1385 (CCPA 1969) (per claims 24, 31).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY D CLARK whose telephone number is (571)270-7087. The examiner can normally be reached on 8AM-4PM M-F.
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 Chriss can be reached on 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GREGORY D CLARK/Primary Examiner, Art Unit 1786