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 .
This Office action is in response to the amendment filed November 7, 2025, which amends claims 1, 33, 35, 47, and 53. Claims 1, 2, 5, 7, 8, 11-13, 16, 19, 22, 26, 33-35, 42, 44, 46, 47, and 53 are pending.
Response to Amendment
Applicant’s amendment of the claims, filed November 7, 2025, caused the withdrawal of the rejection of claims 1, 2, 8, 11, 13, 22, 26, 33-35, 42, 44, 47, and 53 under 35 U.S.C. 102(a)(1) as being anticipated by Wolohan et al. (US 2021/0122765) as set forth in the Office action mailed August 12, 2025.
Response to Arguments
Applicant's arguments filed November 7, 2025 have been fully considered but they are not persuasive.
Regarding the applicant’s argument that the amendment overcomes the rejection of Duan, the Office points out that Duan also teaches that following compounds,
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and
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(pages 37 and 39 of the machine translation). These compounds still read on the applicant’s amendment claims and the applicant’s arguments are not persuasive.
Regarding the applicant’s argument that the amendment overcomes the 103 rejection of record, the Office points out that Wolohan teaches compounds,
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, and
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, that are positional isomers of the applicant’s claimed compounds and formulas. The positional isomers are obvious to one of ordinary skill in the art and one would expect the positional isomers to act similar to the compounds taught by Wolohan. The applicant’s has not provided any evidence that the compounds do not act in a similar manner and the applicant’s argument is not persuasive
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, 2, 5, 7, 8, 11, 13, 16, 19, 22, 26, 33-35, 42, 44, 47, and 53 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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, 33-35, 42, 44, 47, and 53, 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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or
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(pages 37 and 39 of the machine translation). Duan teaches that the electroluminescent device can be used in a consumer product (page 1 of the machine translation).
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, 8, 11-13, 16, 22, 26, 33-35, 42, 44, 46, 47, and 53 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, 33-35, 42, 44, 46, 47, and 53, 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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are a few examples. 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 at the time the invention was effectively filed 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.
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 ANDREW K BOHATY whose telephone number is (571)270-1148. The examiner can normally be reached Monday-Friday 7am-4pm.
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, 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