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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/15/2026 has been entered.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 and 15-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 1 requires “the first organic layer has a conductivity ranging from to 3 x 10-5 S/m to 1 x 10-2 S/m” The instant description includes a description of a few compositions that meet this limitation. The description only provides a few examples of such a combination that meets this requirement, each of which include 1 of 2 different combinations of first and second compounds. The specification further provides exceptionally broad guidance on what materials that might be useable as first and second compounds but provides no further description of which specific combinations of all possible materials result in a layer that meets the claimed conductivity requirement. The limited examples described in the written description do not provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus (see MPEP 2163-II-A-3-a-ii).
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 and 15-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “wherein the weight ration of the first organic material of the first organic material to the first organic layer is 0.1% to 90%.” It is unclear what ratio is being limited. For example, this might be referring to the weight % “in” the layer or may be intended to refer to the weight % of the first organic material “to” the second organic material. Claim 6 has the same issue. Clarification on the record is required.
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 and 3-9 and 15-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xia (US 2019/0181349) (Xia) as evidenced by Kim et al (Organic Electronics, 2022, 100, 106394) (Kim).
In reference to claim 1, 3-9, and 15-19, Xia teaches a device example 4 comprising in a hole injection layer between an anode and a cathode, a compound S-44 and a compound HT as shown below. Compound S-44 is taught to have a LUMO value of -4.67 eV as measured by CV (Xia [0152]) and HT is a common material sometimes referred to as BPBPA with a literature reported HOMO value of about -5.5 eV from cyclic voltammetry measurements as evidenced by Kim (Kim Table 1, p. 4).
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While Xia does not expressly state that the resulting layer has the claimed conductivity, the layer meets all structural limitations of the device of the instant claims and the composition of the instant layer and is therefore expected to inherently have the claimed property.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 772. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, 195 USPQ 430.
For Claim 1: Reads on the device with both electrodes and an organic layer wherein HT is the second compound and S-44 is the first compound, HT has a HOMO less than 5.1 eV and the difference between the LUMO and HOMO of the S-44 and the HT is greater than 0.3 eV and the layer has a conductivity in the claimed range and a dopant ration of 3%.
For Claim 3: Reads on the difference is greater than 0.45 eV.
For Claim 4: Reads on greater than 5.2 eV.
For Claim 5: Reads on the claimed conductivity.
For Claim 6: Reads on 3%.
For Claim 7: Reads on 10 to 30 nm.
For Claim 8: Reads on 10 to 20 nm.
For Claim 9: Reads on direct contact with the anode.
For Claim 15: Reads on formula 2 wherein each Q is S, each E is CH, each X is C(CN)2, and each R1 is substituted aryl.
For Claim 16: Reads on each X is C(CN)2.
For Claim 17: Reads on X-1.
For Claim 18: Reads on each Q is S.
For Claim 19: Reads on wherein R1 trifluoromethoxyphenyl.
For Claim 20: Reads on HOMO of second organic material is -5.5 eV and LUMO first material – HOMO second material is 0.83.
For Claim 21: Reads on a conductivity in the claimed range.
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Xia (US 2019/0181349) (Xia) in view of Shin et al (US 2021/0202859) (Shin).
In reference to claim 2, Xia teaches the device as described above for claim 1. Xia does not limit the host of the hole transport or hole injection layer to be the exemplified compound HT but generally teaches it can be other known materials.
With respect to the difference, Shin teaches, in analogous art, organic EL devices with P-doped hole transport or injection layers that can include a variety of amine materials (See Shin [0017] Formula 3) with dopants as described therein and specifically teaches compound D45 that the instant specification describes as having a HOMO energy level of -5.13, and Shin further teaches that when p-doped layers include this material the device has high efficiency or long life (Shin [0171]).
In light of the motivation of using D45 as described above, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the D45 as described by Shin in order to improve efficiency or lifetime and thereby arrive at the claimed invention.
That is, the substitution of the D45 of Shin for the HT of Xia, absent unexpected results, would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application with the predictable result of transporting holes to improve efficiency and lifetime. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (See MPEP § 2143, B).
Claims 1 and 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over Rothe et al (US 2017/0222170) (Rothe).
In reference to claim 1, 3-9 and 21, Rothe teaches an organic EL device comprising an anode, a cathode and an organic layer comprising a hole transport material and a p-dopant. Rothe exemplifies four different hole transport materials, each of which have reported HOMO energy levels that are less than -5.2 eV (see table 2) as measured by cyclic voltammetry ([0061]) that are doped at 3 to 8% with a p dopant in a 10 nm layer with an adjacent electron blocking layer comprising the hole transport material. Rothe further teaches that the p dopant should have a LUMO energy level that is at least 350 meV higher than the highest HOMO energy of the HTM material (Rothe [0022]) and that the resulting layer has a conductivity higher than 1 x 10-6 S/m (Rothe [0018]).
While Rothe does not exemplify a device with each of the claimed features, Rothe does teach a preferred range of each of the claimed properties that overlaps with those instantly claimed. It would have been obvious to have selected materials to have arrived at the claimed properties given the direction of Rothe. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Rothe et al (US 2017/0222170) (Rothe) in view of Shin et al (US 2021/0202859) (Shin).
In reference to claim 2, Rothe teaches the device as described above for claim 1. Rote does not limit the host of the hole transport or hole injection layer to be the exemplified compounds but generally teaches it can be other known materials.
With respect to the difference, Shin teaches, in analogous art, organic EL devices with P-doped hole transport or injection layers that can include a variety of amine materials (See Shin [0017] Formula 3) with dopants as described therein and specifically teaches compound D45 that the instant specification describes as having a HOMO energy level of -5.13, and Shin further teaches that when p-doped layers include this material the device has high efficiency or long life (Shin [0171]).
In light of the motivation of using D45 as described above, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the D45 as described by Shin in order to improve efficiency or lifetime and thereby arrive at the claimed invention.
That is, the substitution of the D45 of Shin for the HT of Rothe, absent unexpected results, would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application with the predictable result of transporting holes to improve efficiency and lifetime. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (See MPEP § 2143, B).
Claims 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Rothe et al (US 2017/0222170) (Rothe) in view of Xia (US 2019/0181349) (Xia).
In reference to claim 15-21, Rothe teaches the device as described above for claim 1. Rote does not limit the p-dopant to be the exemplified compound but generally teaches it can be other known materials so long as the p dopant should have a LUMO energy level that is at least 350 meV higher than the highest HOMO energy of the HTM material but does not expressly teach that the p-dopant is one of the materials instantly claimed.
With respect to the difference, Xia teaches, in analogous art, an organic EL device example comprising a p-doped hole injection or transport layer between an anode and a cathode, wherein the p-dopant is a compound S-44 as shown below. Compound S-44 is taught to have a LUMO value of -4.67 eV as measured by CV (Xia [0152])
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Xia further teaches that the compound when used in a device improves device efficiency (Xia [0162]).
In light of the motivation of using S-44 as described above, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the S-44 as described by Xia in order to improve device efficiency and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive.
In reference to the outstanding rejections under 35 USC 112(a) for failing to comply with the written description requirement specifically for failing to provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus, Applicant argues that “The claimed invention is directed to not a specific compound but a combination of the structure of an organic layer in an organic electroluminescent device with its performance characteristic. Thus, the claimed invention concerns the matching between device structure and
material performance.”
This argument is not convincing. Applicant’s claimed invention, for example in claim 1, is drawn to an organic EL device comprising an anode, cathode and a generic layer comprising a composition of two organic materials. The “device structure” portion of the claimed invention is present in every organic EL device in any prior art reference as all of them inherently require an organic layer and an anode and cathode to function. The limitation of the claimed invention that seperates it from all devices of its class is a composition for one layer that is a mixture of two organic materials. Applicant claims these two materials by their properties and not their structure. However, as noted herein and before, Applicant has not demonstrated they were in possession of all of the claimed compositions that have such properties. That is, there are an essentially infinite number of possible combinations of materials that would be expected to meet these property requirements and Applicant has provided evidence of possession of ~4 of those combinations. Four is not considered a representative number of a near infinite genus.
Applicant then points to the description in the specification of how LUMO and HOMO energies can be measured and how conductivity can be measured. Applicant argues that based on this disclosure a person skilled in the art could readily prepare an organic layer having the required conductivity and test its conductivity. This argument is not convincing. The instant claims are not rejected for failing to meet the enablement requirement.
Applicant next describes examples 1-2 and the “gist” or essence of the claimed invention. This argument does not appear related to the issue at hand, Applicant has not provided a representative number of species sufficient to show that Applicant was in possession of the claimed genus. Applicant’s written description describes a desired goal of obtaining devices with certain conductivity and molecular orbital properties. Applicant demonstrates by way of examples that Applicant was in possession of a few devices with such properties but has not demonstrated that Applicant was clearly in possession of all devices that share the claimed properties.
Applicant also argues that the description recites ‘conductivity’ as one of the key performance parameters for achieving the technical effects of the invention and that said conductivity is directly related to the HOMO/LUMO energy of the first and second organic materials establishing clear and unambiguous performance boundaries. Applicant more or less repeats this explanation that matching energy levels achieves target conductivity. This argument has been considered but not found convincing. Neither [0059] nor the specification as a whole provide sufficient evidence that any combination of materials meeting the HOMO/LUMO energy requirements of the first and second materials would inherently meet the conductivity requirement or that compounds falling outside of these requirements would not meet such requirement. That is, there is no clear or unambiguous defined relationship in the specification.
Applicant argues that the “gist” of the invention lies not in the structures of the compounds themselves but in the synergistic matching between the energy level relationship of the first and second organic materials and the conductivity of the organic layer. This argument is not convincing. The properties in question are the effect of the structures of the compounds. The desired synergistic matching requires selecting specific combinations of structures that lead to such properties. Applicant has demonstrated possession of only a few such combinations.
It appears that the goal of the instant invention is to provide a device with an organic layer with certain HOMO and LUMO and conductivity properties. Applicant has identified a few solutions to that goal and then claimed all solutions.
For at least these reasons the rejections under 35 USC 112(a) are maintained.
In reference to the outstanding rejections under 35 USC 102 over Xia as evidence by Kim, Applicant argues that the material HT of Xia does not have a HOMO value of < -5.1 eV as instantly claimed by pointing to the value in the instant specification and argues that the value difference is due to differences in solvent selection and reference electrode selection. This argument is not convincing. Initially, there is no clear evidence that Applicant’s HOMO value is more correct than the literature reported value. Further, the claim requires that the HOMO value be within the claimed range and does not require that it be only the value as reported by Applicant. If this were the case, then only materials wherein the HOMO and LUMO values are reported in the instant specification could possibly be within the bounds of the claims. The instant specification defines that the HOMO and LUMO energy are measured by an electrochemical cyclic voltammetry method (see [0034]). The value obtained for the HOMO energy by Kim is obtained using an electrochemical cyclic voltammetry method and therefore the HOMO energy of the material meets all claimed limitations. Applicant also argues that this difference in HOMO values is because Kim used a different method. Initially, the differences in the method are very minimal, acetonitrile instead of DCM and Ag/AgCl instead of Ag/AgNO3 reference electrode. Nevertheless, the specifics of the method used are not claimed and the claims are not limited to HOMO values obtained through such a specific method.
Furthermore, the difference of 0.01 eV is likely well within the experimental variability for the cyclic voltammetry experiments used to determine the HOMO energy. That is, -5.09 eV is essentially equal to -5.1 eV when we limit the reported measurement to the same number of significant figures. Such experimental variability is clear considering that very slightly different measurement conditions result in a measured value difference of 0.41 eV for an identical material.
For at least these reasons the rejections under 35 USC 102 are maintained.
Concerning the outstanding rejections under 35 USC 103 of claim 2 over Xia in view of Shin, Applicant first describes the results of examples in the instant specification. This does not on its own argue against the rejection so no response to this description is presented herein.
Applicant then describes the disclosure of Xia and states that Xia does not ‘focus’ on the HOMO energy of the material that is doped with the dopants of Xia, nor on the conductivity of the layer. Applicant similarly describes Shin and argues that it fails to provide motivation to select materials based on the instantly claimed HOMO and conductivity values. This argument is not convincing. The motivation to combine materials of the prior art does not need to be the same motivation as instantly recited. Xia describes devices that meet all of the claimed features save that the selection of the host material for the hole transport or hole injection layer does not fall within the scope of the claimed formula H but does teach that such a material can be selected from other known materials. Shin provides alternative materials for the same purpose and motivation to have selected them. The ordinarily skilled artisan would arrive at the claimed invention by those motivations without need to select the materials based on hole conductivity or HOMO energy values.
In reference to the outstanding rejections under 35 USC 103 over Rothe, Applicant argues that Rothe does not disclose a technical solution that simultaneously satisfies all of the requirements I to III in amended claim 1. This argument is not convincing. Rothe specifically teaches ranges overlapping with or point examples of each of the claimed features I to III in question. Applicant argues that Rothe does not disclose an example with these features. This argument is not convincing either. This rejection is under 35 USC 103 and not under 35 USC 102. That is, this does not negate a finding of obviousness under 35 U.S.C. 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills USPQ 196 (CCPA 1972).
Applicant further argues that the claimed materials give rise to unexpected results in comparison to a device with a similar configuration to an example described in Rothe as presented in a declaration under 37 CFR 1.1.32 filed 12/10/2025. This argument has been fully considered and 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 device properties, the specification and declaration have 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 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, the instant claims allow for any “second organic material” with no structural limitations so long as the material meets specific HOMO energy level limitations but only a single material is represented by the examples (HT-7). 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 devices is much larger than that set forth in the examples, these variables resulting in claiming a nearly infinite number of devices. As Applicant is attesting that the claimed devices have properties that would not be expected based on the genus as a whole, for example devices taught by Rothe, support for the unexpected results must be provided that covers the scope of what is claimed.
Conclusion
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
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