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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
This action is in reply to the communication filed on March 17, 2026.
Claims 1 and 8 have been amended and are hereby entered.
Claim 11 has been added.
Claims 1 – 11 are currently pending and have been examined.
This action is made FINAL.
Response to Amendments
Applicant's amendments to the claims, filed March 17, 2026, caused the withdrawal of the rejection of claims 1 – 7 under 35 U.S.C. 102(a)(1) as being anticipated by Yang as set forth in the office action filed December 18, 2025.
Applicant’s amendments to the claims, filed March 17, 2026, caused the withdrawal of the rejection of claims 8 – 10 under 35 U.S.C. 103 as being unpatentable over Yang as set forth in the office action filed December 18, 2025.
Applicant’s submission of a certified English language translation of priority documents KR10-2020-0097601 and KR10-2021-0101872 have perfected the priority claim. In light of the English language translations and the declaration submitted by Applicant, establishing the exception under 35 U.S.C. 102(b)(1)(A), the previously cited Suh reference has been disqualified as prior art. The rejections of claim 1 – 7 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Suh have been withdrawn.
Response to Arguments
Applicant's arguments filed March 17, 2026 with respect to the Yang reference have been fully considered but they are not persuasive.
Applicant argues that none of the compounds of Yang include a pendant carbazole moiety at position 8 of the dibenzofuran or dibenzothiophene core including at least four deuterium on the carbazole moiety. Examiner respectfully disagrees. Yang teaches that even if a substituent is not shown, hydrogen and deuterium may be interchanged in the compounds as long as deuterium is not explicitly excluded ([0041 – 0043]). Examiner further notes that the invention of the prior art is not limited to or defined by only those embodiments disclosed in the Examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971).
Applicant argues that Yang does not teach or suggest any effect associated with including deuterium on the pendant carbazole group and that the instant Application determined that the addition of at least four deuterium substituents on the carbazole group improves the device lifetime when the compound is provided in a light emitting layer. Applicant points to the comparison of Example 1 and Example 13 to Comparative Example 3 as evidence of this property. Examiner respectfully disagrees. The data shown in the tables is not commensurate in scope with the claimed invention for at least the reasons that the data is shown for the use of a compound in the light emitting layer of a device, whereas the claim is directed to a compound. The improved properties of lifetime are shown when the compound is used in a light emitting layer of an OLED, with a particular phosphorescent dopant. None of these limitations are required by the claim. No evidence has been provided to show that the unexpected results would be present for the use of the compound in other layers or with other dopant materials. Furthermore, as it relates to the data shown in the Examples cited by Applicant, Examiner notes that while Compound 1 and Compound 13 show improved lifespan as compared to the undeuterated compound CE3, no comparison or results have been shown as to the effect of deuterium on the core structure in other locations, such as compound 1-41 in Yang. Therefore, it is not possible to determine whether the effects on the device lifespan can be ascribed to the inclusion of deuterium generally or are only present for the particularly claimed location of the deuterium substitutions. Finally, the Example compounds show 5 and 6 deuterium substitutions, respectively. No compound has been shown with 4 deuterium substitutions, the minimum required by the claim, nor has a compound with 1 – 3 deuterium substitutions been shown, as evidence that a minimum number of deuterium substitutions as claimed is required for the improved properties.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18 – 32 of copending Application No. 17/632875 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds within the scope of Formula 1 in the instant claim overlap in scope with Formula 1 in claim 18 of the ‘875 application, as evidenced by compound
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in claim 26 of the ‘875 application.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 – 11 are rejected under 35 U.S.C. 103 as being unpatentable over (WO2021091259A1, using US20220396568A1 as the official English language translation).
As per claims 1 – 7, Yang teaches:
A compound of Chemical Formula 1
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(Yang teaches heterocyclic compounds of Chemical Formula 1
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([0010]). A particular compound taught by Yang is compound 1-41
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([0129]). Compound 1-41 does not teach that the carbazole group contains at least four deuterium atoms as currently claimed. However, Yang teaches that since deuterium is an isotope of hydrogen, some hydrogen atoms may be deuterium and that even though a substituent is not shown in the compound structure, hydrogen and deuterium may be mixed as long as deuterium is not explicitly excluded ([0041 – 0043]). Therefore, the compound 1-41 of Yang can be interpreted as containing any number of deuterium substitutions, including the particularly claimed pattern of deuterium substitution claimed. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the deuterium atoms in the claimed locations and arrive at the claimed compound, because Yang teaches that even though a substituent is not explicitly shown, it may still be deuterium ([0041 – 0043]). When modified in this way, the modified compound reads on the claimed Formula wherein each X is independently N; Y is O; L1 is a direct bond; L2 is a direct bond; Ar1 and Ar2 are both an unsubstituted C6 aryl, namely a phenyl as required by claim 6; R1 is a substituted C6 aryl, namely a phenyl as required by claim 7, wherein R1 is substituted with deuterium.)
Yang includes each element claimed, with the only difference between the claimed invention and Yang being a lack of the aforementioned combination being explicity stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of improved efficiency, lower driving voltage and/or improved lifetime ([0021]), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
As per claim 8, the only difference between another compound taught by Yang, namely compound 1-1 of Yang
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and claimed compound
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is the deuterium substitution on the carbazole ring. However, Yang teaches that since deuterium is an isotope of hydrogen, some hydrogen atoms may be deuterium and that even though a substituent is not shown in the compound structure, hydrogen and deuterium may be mixed as long as deuterium is not explicitly excluded ([0041 – 0043]). Therefore, the compound 1-1 of Yang can be interpreted as containing any number of deuterium substitutions, including the particularly claimed pattern of deuterium substitution claimed. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the deuterium atoms in the claimed locations and arrive at the claimed compound, because Yang teaches that even though a substituent is not explicitly shown, it may still be deuterium ([0041 – 0043]).
Yang includes each element claimed, with the only difference between the claimed invention and Yang being a lack of the aforementioned combination being explicitly stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of improved efficiency, lower driving voltage and/or improved lifetime ([0021]), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
As per claim 9, Yang teaches:
An organic light emitting device comprising a first electrode, a second electrode that is provided opposite to the first electrode, and one or more organic material layers that are provided between the first electrode and the second electrode, wherein one or more layers of the organic material layers comprise the compound of claim 1 ([0019]: “In addition, one embodiment of embodiment of the present application provides an organic light emitting device comprising a first electrode; a second electrode provided opposite to the first electrode; and one or more organic material layers provided between the first electrode and the second electrode, wherein one or more layers of the organic material layers comprise the heterocyclic compound represented by Chemical Formula 1.”)
Yang teaches an anode, a cathode, and an organic layer and that the compound is in the organic layer as discussed above. It would have been obvious to use the compound in the organic layer with the device structure of Yang as Yang demonstrates this device structure was known prior to the effective filing date of the claimed invention.
As per claim 10, Yang teaches:
Wherein the organic material layer comprising the compound is a light emitting layer ([0026]: “Particularly, the compound can be used as a light emitting material of the organic light emitting device. For example, the compound can be used alone as a light emitting material, or two of the compounds can be used together as a light emitting material, and can be used as a host material of a light emitting layer.”)
As per claim 11, the only difference between compound 1-41 of Yang shown above and claimed compound
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is the deuterium substitution on the carbazole and phenyl rings. However, Yang teaches that since deuterium is an isotope of hydrogen, some hydrogen atoms may be deuterium and that even though a substituent is not shown in the compound structure, hydrogen and deuterium may be mixed as long as deuterium is not explicitly excluded ([0041 – 0043]). Therefore, the compound 1-41 of Yang can be interpreted as containing any number of deuterium substitutions, including the particularly claimed pattern of deuterium substitution claimed. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the deuterium atoms in the claimed locations and arrive at the claimed compound, because Yang teaches that even though a substituent is not explicitly shown, it may still be deuterium ([0041 – 0043]).
Yang includes each element claimed, with the only difference between the claimed invention and Yang being a lack of the aforementioned combination being explicity stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of improved efficiency, lower driving voltage and/or improved lifetime ([0021]), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
Conclusion
Applicant's amendment necessitated any 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA N CHANDHOK whose telephone number is (571)272-5780. The examiner can normally be reached on Monday through Friday from 6:30 - 3:30.
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, Marla McConnell can be reached on (571) 270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNA N CHANDHOK/Primary Examiner, Art Unit 1789