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 .
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/073,368. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are drawn to overlapping subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-20 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.
Applicant has amended independent claims 1 and 15 to include the following limitation:
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There does not appear to be support for this limitation in the originally filed disclosure. While alkyl groups can be generally limited to include or exclude positively recited groups, there is no support for the “if/then” limitation as amended.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Geum et al (US 2021/0277026) (Geum).
In reference to claims 1-8, 10-12, and 14-20, Geum teaches an organic light emitting device comprising a first and second electrode, organic material layers between the electrode including a hole transport layer including a compound of formula HT-A (Geum [0319] [0392]) light emitting layer that includes a compound of formula 1 as a dopant with hosts such as carbazole derivatives and pyrimidine derivatives and additional phosphorescent dopants such as PtOEP (e.g. Geum [0022], abstract, [0191] [0324] [0325] [0394] etc.).
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For example, wherein in the formula 1, Cy1 and Cy2 are each a substituted benzene ring wherein the substituent is a phenyl group, n1 and n2 are each 2, Z1 and Z2 are each C, m1, m2 and m3 are each 1, R1 is t-butyl and each of R2 and R3 are phenyl (Geum [0041]-[0058]).
Geum discloses the compound of formula 1 that encompasses the presently claimed compound of formula 1, including wherein in the formula 1, Cy1 and Cy2 are each a substituted benzene ring wherein the substituent is a phenyl group, n1 and n2 are each 2, Z1 and Z2 are each C, m1, m2 and m3 are each 1, R1 is t-butyl and each of R2 and R3 are phenyl. Each of the disclosed substituents from the substituent groups of Geum are considered functionally equivalent and their selection would lead to obvious variants of the compound of formula 1.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, in the absence of unexpected results, to have selected these substituents among those disclosed for compound of formula 1 to provide the compound described above, which is both disclosed by Geum and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
For Claim 1: Reads on a device as claimed with the claimed layers and wherein the compound o formula 1 reads on the first compound wherein Y1 and Y2 are each phenyl, Y3 is t-butyl, X1 and X2 are each NR4, each of R4 is a group of formula 2, wherein z1 and z2 are each hydrogen and each of R5, R6 and R7 are hydrogen, the carbazole derivative reads on a formula of HT wherein Ar1 is a substituted phenyl, a pyrimidine derivative reads on formula ET wherein two of Za, Zb, and Zc, and PtOEP reads on formula D-1 wherein C1, C2, C3 and C4 are each substituted heterocycles of 4 ring forming carbon atoms, each of b1, b2, and b3 are each 0, R21, R22, R23, and R24 are each linked to form a ring with adjacent groups or are alkyl groups.
For Claim 2: Reads on formula 2-1.
For Claim 3 and 5: Reads on wherein formula 3 is optionally not present.
For Claim 4: Reads on formula 4-1.
For Claims 6: Reads on wherein Y1 and Y2 are each phenyl, Y3 is t-butyl.
For Claim 7: Reads on wherein z1 and z2 are each hydrogen and each of R5, R6 and R7 are hydrogen.
For Claim 8: Reads on wherein X3 and X4 are optionally not present.
For Claim 10: Reads on delayed fluorescence.
For Claim 11: Reads on the first, second and third compound.
For Claim 12: Reads on the first, second, third and fourth compound.
For Claim 14: Reads on compound 2.
For Claim 15: Reads on a hole transport layer comprising H-1 wherein Ar13 is an aryl group, L11 is phenylene, Ar11 is substituted heteroaryl, L12 is phenylene, Ar12 is phenyl.
For Claim 16: Reads on formula 2-1.
For Claim 17 and 19: Reads on wherein formula 3 is optionally not present.
For Claim 18: Reads on formula 4-1.
For Claim 20: Reads on compound 2.
In reference to claim 9, Geum teaches the device as described above for claim 1. While Geum does not state the emission wavelength of the first compound, as the compound disclosed is the same as those instantly claimed it is considered to inherently meet the claim requirements. 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.
In reference to claim 13, Geum does not specifically teach a ratio of hole and electron transporting host materials but does teach that they are optionally both included. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969) (See MPEP 2143).
Response to Arguments
Applicant's arguments filed 02/13/2026 have been fully considered but they are not persuasive.
Applicant argues that the office action does not disclose a specific compound disclosed in Geum that meets the limitations of formula 1 but instead relies upon selection of substituents from a general formula 1. This argument is not convincing for at least the following reasons. Both the formula of Geum and the formula of the instant claims require the selection of substituents to arrive at any single material. Applicant has claimed a genus and not a species. The genus claimed is a subset of that disclosed by Geum. In the absence of a showing of unexpected results that is commensurate in scope with the claimed subject matter that arise from the selection of specific substituents from among those disclosed by the prior art, the instantly claimed genus is considered obvious in view of that of the prior art.
Applicant argues that the rejection relies upon inadmissible hindsight reconstruction of the claims. This argument is not found convincing for at least the following reasons. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Further, all of the limitations of the instant claims are disclosed by a single reference and did not rely upon the cobbling together of multiple references. That is, Geum provides all of the teachings of substituent options in just the same way as the instant application provides each of those substituent options.
Applicant argues that the amendments overcome the rejections of record. This argument is not convincing. Initially, the prior art teaches compounds that still read on the instant claims. Further, there is not support in the specification for the amendment in question.
Applicant argues that the host ratio recited in claim 13 is not routine. However, Applicant has provided no evidence that the selection of specific ratios in this invention gives rise to unexpected results or why, faced with the possibility of mixing two host materials without specific direction as to the ratio thereof, it would have not been obvious to the ordinarily skilled artisan to select a 1:1 ratio. Indeed, a 1:1 ratio is the most obvious solution to the taught mixture and it is within the claimed range.
Conclusion
THIS ACTION IS MADE FINAL. 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 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