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 .
DETAILED ACTION
SPECIFICATION OBJECTION
Naphthalene groups of compounds B-66 and B70 taught at page 58 of specification are incomplete due to a missing bond to close the ring.
CLAIM OBJECTION
Naphthalene groups of compounds B-66 and B70 of claim 20 are incomplete due to a missing bond to close the ring.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
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 1-6, 9-11, 13, 15-17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US 2019/0140177 A1).
Lee et al. teach amine-substituted naphthalene derivatives and organic light emitting diodes thereof in abstract. Lee et al. teach that the amine-substituted naphthalene derivatives is employed in a hole auxiliary layer interposed between a hole transport layer and a light emitting layer in [0002] and utilization of a cathode and an anode in [0003].
A layer comprising the hole auxiliary layer and hole transport layer would meet the recited hole transport region of claim 1 comprising multiple layers.
Lee et al. teach a compound 10 at page 5 meeting the instant compound having the following parameters.
FG1 is Formula A with m is 1, Ra being phenyl, Rb1 and Rb2 being each hydrogen.
FG 2 is Formula B with n is 1, L1 being phenyl, Rc being phenyl.
FG3 is Formula C with p being 0 and X being Formula D-2 with q2 being 0.
Thus, utilization of the compound 10 in the hole auxiliary layer present between the cathode and anode would meet claim 1.
Regarding claim 2, the compound 10 would meet the recited Formula AA-1.
Regarding claim 3, the compound 10 would meet the recited Formula BB-1.
Regarding claim 4, the recited Formula BB-3 would be optional when the claim 4 is combined with the claim 3.
Regarding claim 5, the compound 10 would meet the recited Formula CC-1.
Regarding claim 6, Lee et al. teach blue organic light emitting diodes in [0144} and the blue light is known to have a wavelength of 380 nm and 500 nm inherently. Thus, the blue organic light emitting diodes taught by Lee et al. would be expected to meet the recited center wavelength of 450 nm to 470 nm, especially in view of the fact the Lee et al. teach the same compound claimed (e.g., the compound 10). The court held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315 F.2d 381, 137 USPQ 42, 51 (CCPA 1963). See MPEP 2112.
Regarding claims 9-11, 15-17 and 19, the compound 10 taught by Lee et al. discussed above would meet the claims 9-11, 15-17 and 19.
Regarding claim 13, the recited L2 would be optional when p of Formula F-3 of claim 9 is 0.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyake et al. (US 2020/0235297 A1).
Miyake et al. would be a valid intervening reference at this time. The Miyake et al. reference is applicable under 102(a)(1) and is not excepted as prior art under 102(b)(1). The reference qualifies under 102(a)(1) with a publication date of July 23, 2020. No certified English translation showing support to the foreign priority date of February 1, 2021 for the instant application is present in the record, thus the instant application currently has an effective filing date of 08/08/2022. Therefore, the Miyake et al. reference is an intervening reference and does not fall within a one-year grace period of the effective filing date of the claimed invention.
Miyake et al. teach monoamine compounds and organic light emitting diodes thereof in abstract. Miyake et al. teach that the monoamine compound is employed in a hole transport region in abstract, Fig. 3 and [0004]. Miyake et al. teach that the hole transport region comprises a hole transport layer in [0072].
Miyake et al. teach compounds A67 at page 14, D67 at page 63, E67 at page 81, F67 at page 98 and G67 at page 114meeting the instant compound having the following parameters.
For example, regarding the compound A67:
FG1 is Formula A with m is 1, Ra being phenyl, Rb1 and Rb2 being each hydrogen.
FG 2 is Formula B with n is 1, L1 being phenyl, Rc being phenyl.
FG3 is Formula C with p being 0, X being Formula D-1 with q1 being 0 and Y1 being S.
The same reasonings would be applied to the compound D67, E67, F67 and G67.
Thus, utilization of the compound A67, D67, E67, F67 or G67 in the hole transport region present between the cathode and anode would meet claim 1.
Regarding claim 2, the compound A67, D67, E67, F67 and G67 would meet the recited Formula AA-1.
Regarding claim 3, the compound A67, D67, E67, F67 and G67 would meet the recited Formula BB-1.
Regarding claim 4, the recited Formula BB-3 would be optional when the claim 4 is combined with the claim 3.
Regarding claim 5, the compounds A67, D67, E67, F67 and G67 with the instant Formula CC-3 comprising Formula D-1 of claim 1 as X would meet the recited Formula CC-1.
Regarding claim 6, Miyake et al. teach organic light emitting diodes comprising the same compound claimed. Thus, the blue organic light emitting diodes taught by Miyake et al. would be expected to meet the recited center wavelength of 450 nm to 470 nm. The court held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315 F.2d 381, 137 USPQ 42, 51 (CCPA 1963). See MPEP 2112.
Regarding claim 7, Miyake et al. teach that the hole transport region comprises a hole transport layer in [0072].
Regarding claim 8, the recited A-2, B-4 and C-3, the compound A67 would meet the claim 8.
Regarding claims 9-20, the compounds A67, D67, E67, F67 and G67 taught by Miyake et al. discussed above would meet the claim 9-20.
Claims 1-6, 9-11, 13, 15-17 and 19 rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2019/0140177 A1).
Regarding claim 14, a compound 56 taught at page 12 pf Lee et al. would meet the recited B-15 and C-70. The instant C-71 is different from a biphenyl group of the compound 56.
Lee et al. teach a compound 10 comprising the C-71 at page 5 and Ar1 and Ar2 being a substituted or unsubstituted C6-C50 aromatic hydrocarbon ring in [0019]. The C-71 would fall within scope of the substituted C6-C50 aromatic hydrocarbon ring.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the C-71 taught for the compound in lieu of a biphenyl taught for the compound 56 of Lee et al. since Lee et al. teach different substituents for the Ar1 and Ar2 absent showing otherwise.
In re Mills, 477 F2d 649, 176 USPQ 196 (CCPA 1972), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976); Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 8-11, 13-17 and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 15-25 of copending Application No. 16/842,556 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 15 and 25 of the copending Application No. 16/842,556 (published as US20200235297A1) recite a compound A67 comprising the recited A-2, B-4 and C-3 of the instant claim 14. In other words, claims of the copending Application No. 16/842,556 recite utilization of the same compound claimed
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAE H YOON/Primary Examiner, Art Unit 1762
