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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 29, 2026 has been entered.
This Office action is in response to the amendment filed April 29, 2026, which amends claims 1, 5, 34, 47, and 53, cancels claims 35 and 46, and adds claims 57 and 58. Claims 1, 2, 5, 7, 8, 11-13, 16, 19, 22, 26, 33, 34, 42, 44, 47, 53, 57, and 58 are pending.
Response to Amendment
Applicant’s amendment of the claims, filed April 29, 2026, caused the withdrawal of the rejection of claims 1, 2, 5, 7, 8, 11, 13, 16, 19, 22, 26, 33-35, 42, 44, 47, and 53 under 35 U.S.C. 102(a)(1) as being anticipated by Duan et al. (CN 113788852) as set forth in the Office action mailed January 5, 2026.
Applicant’s amendment of the claims, filed April 29, 2026, caused the withdrawal of the rejection of claims 35 and 46 under 35 U.S.C. 103 as being unpatentable over Wolohan et al. (US 2021/0122765) as set forth in the Office action mailed January 5, 2026. The applicant cancels claimed 35 and 46; therefore, the claims are no longer pending.
Response to Arguments
Applicant's arguments filed April 29, 2026 have been fully considered but they are not persuasive.
Regarding the applicant’s arguments that the applicant’s amendment overcomes the rejection over Duan, the Office points out that the amendment overcome the 102 rejection of record, but the compounds of Duan are positional isomers of the applicant’s claimed formula.
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is a positional isomer of the applicant’s claimed invention and the applicant’s claimed invention would be a prima case of obviousness. The applicant’s argument is not persuasive.
Regarding the applicant’s argument that the amendment overcomes the rejection over Wolohan, the Office points out that Wolohan teaches examples where the fused heterocyclic group is substituted with alkyl groups,
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. Given the general formula of Wolohan it would have been obvious to one of ordinary skill in the art to modify the other compounds of Wolohan to have the alkyl group substitutions or substituted the
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group in
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with other groups, such as
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or
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, to arrive at the applicant’s claimed invention. The applicant’s claimed invention would be obvious to one of ordinary skill in the art given the teachings of Wolohan. Furthermore, the compounds of Wolohan are positional isomers of the claimed invention and if L-SiAr1Ar2Ar3 is not bonded at R2 then L can be a single bond or a carbazole group and the compound does not need further substitution. The applicant’s argument is not persuasive.
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.
Claim(s) 1, 2, 5, 7, 8, 11, 13, 16, 19, 22, 26, 33, 34, 42, 44, 47, 53, and 57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duan et al. (CN 113788852) (hereafter “Duan”), where a machine translation is used as the English equivalent, .
Regarding claims 1, 2, 5, 7, 8, 11, 13, 16, 19, 22, 26, 33, 34, 42, 44, 47, 53, and 57, Duan teaches an electroluminescent device comprising an anode, an organic layer, and a cathode (page 82 of the machine translation). Duan teaches that the organic layer can comprise the following compound,
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(pages 37 and 39 of the machine translation). Duan does not limit how the Si group is attached to the carbazole group (pages 5 and 6 of the machine translation). Duan teaches that the electroluminescent device can be used in a consumer product (page 1 of the machine translation).
Duan does not specifically teach a compound that meets the applicant’s claimed compounds.
The Office points out that sections 2144.09 I and II of the MPEP state " 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) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, paragraph II.A.4.(c).” and “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).
Isomers having the same empirical formula but different structures are not necessarily considered equivalent by chemists skilled in the art and therefore are not necessarily suggestive of each other. Ex parte Mowry, 91 USPQ 219 (Bd. App. 1950) (claimed cyclohexylstyrene not prima facie obvious over prior art isohexylstyrene). Similarly, homologs which are far removed from adjacent homologs may not be expected to have similar properties. In re Mills, 281 F.2d 218, 126 USPQ 513 (CCPA 1960) (prior art disclosure of C8 to C12 alkyl sulfates was not sufficient to render prima facie obvious claimed C1 alkyl sulfate).
Homology and isomerism involve close structural similarity which must be considered with all other relevant facts in determining the issue of obviousness. In re Mills, 281 F.2d 218, 126 USPQ 513 (CCPA 1960); In re Wiechert, 370 F.2d 927, 152 USPQ 247 (CCPA 1967). Homology should not be automatically equated with prima facie obviousness because the claimed invention and the prior art must each be viewed “as a whole.” In re Langer, 465 F.2d 896, 175 USPQ 169 (CCPA 1972) (Claims to a polymerization process using a sterically hindered amine were held unobvious over a similar prior art process because the prior art disclosed a large number of unhindered amines and only one sterically hindered amine (which differed from a claimed amine by 3 carbon atoms), and therefore the reference as a whole did not apprise the ordinary artisan of the significance of hindered amines as a class.).”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the attachment position of the Si group in the compounds of Duan. The general formula of Duan does not limit the attachment position of the Si groups; therefore, it would have been a prima facie case of obviousness to move the attachment position of the Si groups. One of ordinary skill in the art would expect the compounds to act in as similar manner as the other compounds of Duan. This would lead to compounds that are the same as applicant’s claimed invention.
Claim(s) 1, 2, 5, 8, 11-13, 16, 22, 26, 33, 34, 42, 44, 47, 53, 57, and 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wolohan et al. (US 2021/0122765) (hereafter “Wolohan”).
Regarding claims 1, 2, 5, 8, 11-13, 16, 22, 26, 33, 34, 42, 44, 47, 53, 57, and 58, Wolohan teaches an electroluminescent device comprising an anode, an organic layer, and a cathode (paragraphs [0069] and [0070]). Wolohan teaches that the organic layer can comprise the following compound,
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(paragraph [0068]). Wolohan teaches that
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is derived from the following formula
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, where the Si group at be attached art R1, R2, or R3 and L2 and L3 can be S or O (paragraph [0053]). Wolohan teaches the following compounds that are derived from the aforementioned formula,
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,
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, and
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are a few examples. Wolohan also teaches that R1 and R2 can be alkyl groups,
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(paragraph [0053]). Wolohan teaches that the electroluminescent device can be used in a consumer product (paragraph [0075]).
Wolohan does not specifically teach a compound that meets the applicant’s claimed compounds.
The Office points out that sections 2144.09 I and II of the MPEP state " 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) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, paragraph II.A.4.(c).” and “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).
Isomers having the same empirical formula but different structures are not necessarily considered equivalent by chemists skilled in the art and therefore are not necessarily suggestive of each other. Ex parte Mowry, 91 USPQ 219 (Bd. App. 1950) (claimed cyclohexylstyrene not prima facie obvious over prior art isohexylstyrene). Similarly, homologs which are far removed from adjacent homologs may not be expected to have similar properties. In re Mills, 281 F.2d 218, 126 USPQ 513 (CCPA 1960) (prior art disclosure of C8 to C12 alkyl sulfates was not sufficient to render prima facie obvious claimed C1 alkyl sulfate).
Homology and isomerism involve close structural similarity which must be considered with all other relevant facts in determining the issue of obviousness. In re Mills, 281 F.2d 218, 126 USPQ 513 (CCPA 1960); In re Wiechert, 370 F.2d 927, 152 USPQ 247 (CCPA 1967). Homology should not be automatically equated with prima facie obviousness because the claimed invention and the prior art must each be viewed “as a whole.” In re Langer, 465 F.2d 896, 175 USPQ 169 (CCPA 1972) (Claims to a polymerization process using a sterically hindered amine were held unobvious over a similar prior art process because the prior art disclosed a large number of unhindered amines and only one sterically hindered amine (which differed from a claimed amine by 3 carbon atoms), and therefore the reference as a whole did not apprise the ordinary artisan of the significance of hindered amines as a class.).”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the attachment position of the Si group in the compounds of Wolohan. The general formula of Wolohan does not limit the attachment position of the Si groups; therefore, it would have been a prima facie case of obviousness to move the attachment position of the Si groups. One of ordinary skill in the art would expect the compounds to act in as similar manner as the other compounds of Wolohan. This would lead to compounds that are the same as applicant’s claims compounds.
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was to substitute the substituents on the compounds of Wolohan,
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,
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, and
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, with alkyl groups as taught by Wolohan,
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. The substitution would have been one taught substituent group for another substituent group. One of ordinary skill in the art would expect the compounds to act in a similar manner as the compounds of Wolohan.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW K BOHATY whose telephone number is (571)270-1148. The examiner can normally be reached Monday-Friday 7am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW K BOHATY/Primary Examiner, Art Unit 1759
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