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 .
Response to Arguments
Applicant's arguments filed 01/13/2026 have been fully considered but they are not persuasive.
Applicant argues that Kwon et al (US 20220185834 A1) cannot anticipate or make obvious the claims because the claimed tert-butyl group is only one of many alkyl substituents listed and ADN is one of only many hosts listed and Examiner is cherry picking from a vast number of options. Applicant cites MPEP 2131.02 subheading III. This argument is not convincing. The amended rejection below cites a specific Compound 7 that anticipates the claimed formula 1 with an R11 as a tert-pentyl group. The t-butyl group is a straightforward disclosure of an alternative substituent that read on the dependent claims. ADN is listed as a host, and is just one example of many host compounds that are hydrocarbons, like TBADN and the hosts of Formula 301 and 302 [p76]. Each compound is straightforwardly disclosed and used exactly the way it is the claims. Furthermore, the broad genus of “hydrocarbon compound” for the second compound of the claims is anticipated by the narrow disclosure of Kwon. The section of the MPEP cited by Applicant generally discusses when a claimed species can be anticipated by the disclosed genus. On the contrary, the rejection cites species explicitly disclosed in Kwon for the structural formula genus and species in the claims. If the Office was citing a generic structural formula with a generic R group that could be many options beyond alkyl, then the rejection might only be a 103-obviousness rejection. Nevertheless, in response to the amendment, the rejection is now concurrently under 102 and 103 obviousness, see below, because anticipation is the epitome of obviousness.
Applicant cites the specification to show that replacing benzylic hydrogen increases stability in the claimed compounds and the bulky tertiary alkyl groups also exhibit excellent sublimity and superior color purity over both Tsai and Kwon. This argument is not convincing. The information cited in the specification is from a 2003 reference, so was apparently known, and the steric interaction of bulky substituents on intermolecular stacking is also known. Applicant has also not argued why these advantages would not be present in the disclosed compounds of Kwon and Tsai. And in fact, Kwon does disclose that the compounds with bulky alkyl substituents have improved stability [0326] and narrow FWHM (i.e. high color purity) [0325-0326] among other advantages.
Applicant argues that Nishide et al (US 20230322691 A1) is/are commonly owned by Canon Kabushiki Kaisha and are therefore an exception under 35 U.S.C. 102(b)(2)(c). This argument is not convincing. In order for applicant to properly invoke common ownership to disqualify a U.S. patent document as prior art under 35 U.S.C. 102(a)(2), applicant must submit the required statement that the subject matter in the U.S. patent document and the claimed invention were, not later than the effective filing date of the claimed invention, owned by, or subject to an obligation of assignment, to the same person. See 37 CFR 1.104(c)(4)(i). The statement concerning common ownership should be clear and conspicuous (e.g., on a separate piece of paper or in a separately labeled section). The statement must be signed in accordance with 37 CFR 1.33(b).
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.
Claim(s) 1-22 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nishide et al (US 20230322691 A1).
The applied reference has a common Inventor and Applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Nishide discloses OLEDs used in the same apparatuses [0184 et seq] and including the same dopant compounds, example structure below, and hydrocarbon host materials such EM 16 [p81, Table 9, Embodiments 54-55] as well as additional hosts that read on the claimed third compound such as B14 and others [p98]:
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[p27].
Claim Rejections - 35 USC § 102/103
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.
Claim(s) 1,4-5,7,10-11,13-14 and 16 is/are rejected under 35 U.S.C. 102(a1) and 102(a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kwon et al (US 20220185834 A1).
Kwon discloses an OLED comprising a light emitting layer comprising a dopant such as the embodiment below as well as hydrocarbons as host material such as ADN below:
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[p37]
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[p75]
Wherein the claimed R11 is a tert-pentyl group. The deuterated tert-pentyl group may alternatively be a tert-butyl group [0174, p36]. Other hosts may include a pyridine group [H50, p75] or may be other hydrocarbons such as those of Formula 302 and 303 below:
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[p76].
This rejection is made under both 35 USC 102 anticipation and 35 USC 103 obviousness. Examiner holds the opinion that the limited number of disclosed dopant substituents and host compounds would allow the ordinarily skilled artisan to readily envisage the claimed combination of tert-alkyl substituted dopant and hydrocarbon compound, therefore the claims are anticipated, especially given the breadth of the claimed second compound as any hydrocarbon compound.
In the alternative, the claims are certainly obvious over the combination of elements disclosed. It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have prepared the claimed combination of elements from the disclosure of Kwon because each of the claimed elements is disclosed and used in the same capacity, and the skilled artisan would only need to choose between the disclosed options without any modification to the teaches on Kwon.
Case law confirms that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Claim(s) 11 and 13 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tsai et al (US 20190252619 A1).
This rejection is made under both 35 USC 102 anticipation and 35 USC 103 obviousness. Examiner holds the opinion that the limited number of disclosed hosts compounds along with the exemplified first compound of the claims would allow the ordinarily skilled artisan to readily envisage the claimed combination of first compound and hydrocarbon as host (second compound) as well as a host reading and the claimed the third compound, therefore the claims are anticipated.
In the alternative, the claims are certainly obvious over the combination of elements disclosed. and the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
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.
Claim(s) 1,4, 8-10 and 17-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsai et al (US 20190252619 A1).
Tsai discloses OLEDs including an iridium dopant having the generic formula Ir(LA)(LB)(LC) [p21] wherein the only exemplified dopant is an Ir(LA)(LB) [p152] and wherein the ligand LA includes
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[p14]
The OLED light emitting material includes the compound above as well as two host materials [0201, p152] wherein the host materials can include hydrocarbons with a triphenylene group:
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[p92] as well as compounds that read on the claimed third compound in the host, for example:
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[p93]. The OLEDs are useful in various devices, including digital cameras, vehicles and mobile devices, displays with RGB pixels arrangements or color filters, lights, transistors and other consumer products and applications [0038-0039, 0005, 0125].
As discussed above, Tsai discloses the claimed R31 groups including branched t-pentyl groups, which is similar enough to t-butyl that one of ordinary skill in the art would expect them to have similar properties, and therefore it would have been obvious at the effective filing date to ordinarily skilled artisan to use the claimed t-butyl group in place of the t-pentyl group of Tsai. Tsai also discloses that the alkyl substituents may be branched butyl groups [0050].
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).
Regarding the Ligands X of the claims, the LB of Tsai also includes the phenyl pyridine ligand of the claims:
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[p23].
If Applicant argues that the claimed embodiments are not disclosed with sufficient specificity and that examiner is picking and choosing with improper hindsight, Examiner notes that the rejection is made under 35 USC 103 obviousness. Examiner holds the opinion that there a finite number of disclosed alkyl substituents and host materials that would allow the ordinarily skilled artisan to prepare the claimed compounds. The claims are obvious over the combination of elements disclosed, and the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
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 MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm 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, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/Primary Examiner, Art Unit 1766
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