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 1-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/019,438. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant and patented 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 § 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (KR 102076958) (Kim).
In reference to claims 1-6, Kim teaches a compound of formula 4 as shown below (Kim [0153]),
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for example, wherein in the formula 4, X1 and X2 are each hydrogen or deuterium, L1 and L2 are each a direct bond, R1 is a heteroaryl group (e.g. a dibenzofuran), L1 is a direct bond, L2 is a direct bond, L5 is phenylene, L6 is phenylene and R5 to R6 are each phenyl (Kim [0011] to [0020]; [0053]; [0047]).
Kim discloses the compound of formula 4 that encompasses the presently claimed compound, including wherein in the formula 4, X1 and X2 are each hydrogen or deuterium, L1 and L2 are each a direct bond, R1 is a heteroaryl group (e.g. a dibenzofuran), L1 is a direct bond, L2 is a direct bond, L5 is phenylene, L6 is phenylene and R5 to R6 are each phenyl. Each of the disclosed substituents from the substituent groups of Kim are considered functionally equivalent and their selection would lead to obvious variants of the compound of formula 4.
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 the compound of formula 4 to provide the compound described above, which is both disclosed by Kim and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
For Claim 1: Reads on wherein R1 is dibenzofuran and R2 is a biphenyl substituted amine, L1 and L2 are each a direct bond, and X1 and X2 are each hydrogen or deuterium.
For Claim 2: Reads on formula 3.
For Claim 3: Reads on phenyl or dibenzofuran.
For Claim 4: Reads on 10 to 100% deuterium.
For Claim 5: Reads on hydrogen or deuterium.
For Claim 6: Reads on e.g. compound 401.
In reference to claims 7-10, Kim teaches the compound as described above for claim 1 and further teaches that the compound is included in an organic light emitting device comprising an anode, a cathode and a hole injection layer, a hole transport layer, a light emitting layer, an electron transport layer, an electron injection layer, a charge generating layer, and wherein the compound is used in the hole transport layer. Kim further teaches that when the compound is used in a device it results in a device with reduced drive voltage, improved light efficiency and lifetime characteristics (Kim [0020] to [0021]).
While Kim does not exemplify a device with this configuration and material included, it would have been obvious to the ordinarily skilled artisan before the effective filing date of the instant application have prepared a device of Kim with the material of Kim with the anticipation that such a device would have reduced driving voltage, improved light efficiency and lifetime characteristics.
Note that while Kim does not name a layer “hole transport auxiliary layer” the name of the layer does not modify its structure or composition and therefore the layers of Kim meet the limitation of a hole transport auxiliary layer.
Response to Arguments
Applicant's arguments filed 03/10/2026 have been fully considered but they are not persuasive.
Concerning the outstanding rejections under 35 USC 103 over Kim et al, Applicant first argues that the rejection mischaracterizes the disclosure of Kim specifically arguing that in Kim R1 is defined as an unsubstituted aryl group having 6 to 20 carbon atoms and does not include heteroaryl groups such as dibenzofuran as relied upon in the rejection.
This argument has been fully considered but not found convincing. Applicant’s attestation is in direct conflict with the the disclosure of Kim. As pointed to in the previously and as shown below in an excerpt from the translation provided with the non-final office action, Kim discloses that R1 can be substituted or unsubstituted heteroaryl and defines that term to include dibenzofuran specifically. It is noted that the syntax of the machine translation is poor and the USPTO does not currently have a translator of the Korean language. However, an examiner fluent in Korean was consulted who confirmed that the text allows R1 to be a heteroaryl group.
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Applicant next argues that each of the example materials of Kim’s formula 4 include a substituted or unsubstituted aryl group having 6 to 20 carbon atoms as an R1 group whereas the corresponding aryl group from the Markush groups defined in the instant claim 1 lists a substituted or unsubstituted aryl group having 21 to 60 carbon atoms. This argument has been fully considered but not found convincing for at least thee following reasons. The disclosure of Kim is not limited only to the examples set forth therein. That is, this does not negate a finding of obviousness under 35 U.S.C. 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills USPQ 196 (CCPA 1972). Applicant has claimed a subset of the genus disclosed by Kim. For example, Kim teaches that R1 can be a C6 to C60 aryl group whereas the instant claims limit the corresponding group to be a C21 to C60 aryl group, a group completely within the disclosure of Kim. In the absence of unexpected results, the selection of different substituents from among those taught by Kim would have been obvious to the ordinarily skilled artisan before the effective filing date of the instant application.
Applicant also argues that Kim does not disclose, suggest or illustrate a compound in which R1 is a heteroaryl group, an ordinarily skilled person would have had no guidance let alone a specific reason to make the structural modification that would lead to the compounds of the present invention. This argument is not convincing. As pointed to above herein and before, Kim expressly teaches that R1 is heteroaryl. Further, there is no need for “structural modification” of a compound of Kim as Kim specifically teaches wherein R1 is heteroaryl. Instead, selection from Markush groups is necessary to arrive at any material of Kim, just as arriving at any material of the instant formula 1 requires the selection from Markush groups.
Applicant next argues that the instantly claimed materials give rise to unexpected results. However, the data pointed to is not filed in the specification nor is it filed in the form of a declaration under 37 CFR 1.132 and is therefore not convincing.
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.
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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