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 .
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 1-9 and 14-19 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.
Independent claim 1 requires “an absolute value of a difference between a wavelength corresponding to a peak of a normalized fluorescence emission spectrum of the exciplex and a wavelength corresponding to a peak of a normalized fluorescence emission spectrum of the n-type material being less than or equal to 5 nm”. The instant description includes a description of some possible genera of materials for each of the n-type material and p-type material that fail to define a specific structural motif required for each of these material groups that would help to predict which materials meet the limitation of the claims. The description only provides five examples of such a combination of materials that meets this requirement. The specification further provides exceptionally broad guidance on what materials that might be useable but provides no further description of which material combinations meet the claimed requirements. The five examples described in the written description do not provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus (see MPEP 2163-II-A-3-a-ii).
Claims 1-9 and 14-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for some combinations of materials as shown in examples of the specification, does not reasonably provide enablement for the entire scope of what is cl aimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise, undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all combinations of an n-type material and a p-type material within the scope of the claims can be used to form an exciplex such that an absolute value of a difference between a wavelength corresponding to a peak of a normalized fluorescence emission spectrum of the exciplex and a wavelength corresponding to a peak of a normalized fluorescence emission spectrum of the n-type material being less than or equal to 5 nm as claimed and whether the claims meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1-20, it is believed that undue experimentation would be required because:
Breadth of the claims: The claim is exceptionally broad with n-type material and p-type material being able to be selected from any material that is either an ‘anthracene compound’ or an ‘aromatic amine compound.’
Nature of the invention: Materials for emitting layers in such devices have exceptionally variable structures and features that effect the emission properties of such materials, further the emission wavelength of the exciples formed from combinations of materials are further variable.
State of the prior art: While some materials used in OLED applications have well reported fluorescent emission peak values, the vast majority of publications on new materials do not recite the fluorescence emission peak values for materials or exciplexes formed therefrom.
The level of one of ordinary skill: While an ordinarily skilled artisan is able to use known tools to experimentally determine emission properties of materials, determination of the properties of every possible material and exciplex combination claimed represents an essentially infinite task.
The level of predictability in the art: While computational methods are available to individually predict emission wavelength values of materials, these values are not immediately recognizable for a given structure and the utility of such methods to predict emission properties of exciplexes formed from combinations of materials is not well known.
Amount of direction provided: Applicant’s specification provides exceptionally broad direction on what sorts of materials can be used as each of the n type and p type materials but provides fluorescence data for only 5 combinations of such materials whereas each component of the two-component layer claimed can be an infinite number of materials leading to a similarly limitless number of potential combinations.
The existence of working examples: Applicant has demonstrated a total of 5 working examples that are representative of only an exceptionally narrow grouping of materials and similar structures.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure: In order to determine the scope of the invention, every possible material for each of the n-type material and p-type material would need to be evaluated for its fluorescence spectrum and every possible combination of materials would also need to be evaluated for the resultant exciplex emission spectrum levels and then determine if such a combination met the claim limitations. As only minimal structural limitations are given for each of the n-type material and p-type material this represents a near infinite amount of experimentation.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-9 and 14-19.
Claim Rejections - 35 USC § 112 (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 and 14-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 1 recites the limitation “an absolute value of a difference between a wavelength corresponding to a peak of a normalized fluorescence emission spectrum of the exciplex and a wavelength corresponding to a peak of a normalized fluorescence emission spectrum of the n-type material being less than or equal to 5 nm”. This limitation is indefinite. The emission spectrum of a given material is dependent upon many variables which are not defined by the specification or the claim such as if the experiment is performed on a solution, a thin film, etc., if the measurement is performed by a fluorescence spectrophotometer from excitation at which wavelengths, if the spectrum is the result of photoluminescence in a device or thin film etc.
Claim 1 further recites that a group Ar# can be “heteroaryl 2 to 20 atoms.” It is unclear how a heteroaryl group can be formed with, e.g. only 2 atoms. Aryl groups necessarily comprise more than 2 atoms as they require a cyclic structure which cannot happen with only 2 atoms.
Claims 2-9 and 14-19 depend from claim 1 and are therefore rejected for the same reasons.
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 1-9 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue et al (US 2016/0028027) (Inoue) in view of Wang et al (US 2007/0212568) (Wang) and Chun et al (US 2014/0061626) (Chun).
In reference to Claims 1—9 and 14-19, Inoue teaches an organic electroluminescent device comprising an anode, cathode, substrate, hole injection layer, a hole transport layer, a carrier blocking layer, an electron transport layer and an electron injection layer and a light emitting layer comprising a dopant and a mixed host of a material comprising an electron transport property (n-type material) and a material having a hole-transport property (p-type material) at a ratio of 1:9 to 9:1 and that these hosts can be selected to form an exciplex (Inoue [0089] [0092] [0114] [0115]).
Inoue teaches that the electron transport material can be an anthracene derivative but does not require specific materials for such (Inoue [0117] [0110]).
With respect to the difference, Wang teaches the anthracene compound 56 as shown below that are useful as host materials for organic electroluminescent devices and further teaches that its use gives rise to a device with high emission efficiency, low driving voltage and excellent heat resistance and long life (Wang [0001] [0054]).
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In light of the motivation of using compound 56 as described above, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the compound 56 as described by Wang in order to give rise to a device with high emission efficiency, low driving voltage and excellent heat resistance and long life and thereby arrive at the claimed invention.
Inoue also teaches that the hole transport material can be an aromatic amine derivative but does not require specific materials for such (Inoue [0113]).
With respect to the difference, Chun teaches the amine compound of formula 1 shown below for use as a mixed host in an electroluminescent device and further teaches that the use thereof gives rise to improvements in efficiency and service life (Chun abstract, [0023]).
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for example, wherein R1 to R10 are hydrogen, Ar1 is a carbazole, and Ar2 is a terphenyl (Chun [0006] [0008] [0009] [0039] [0040]).
Chun discloses the compound of formula 1 that encompasses the presently claimed compound, including wherein R1 to R10 are hydrogen, Ar1 is a carbazole, and Ar2 is a terphenyl. Each of the disclosed substituents from the substituent groups of Chun are considered functionally equivalent and their selection would lead to obvious variants of the compound.
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 Chun and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
In light of the motivation of using the compound of formula 1 as described above, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the compound as described by Chun in order to give rise to improvements in efficiency and service life and thereby arrive at the claimed invention.
While Inoue in view of Wang and Chun do not detail the emission wavelength of the compound 56, compound of formula 1 of Chun or the resulting exciplex, nor do they detail singlet or triplet energies, hole or electron mobilities, HOMO, LUMO values as instantly claimed, such properties are inherent to the composition which is the same as the compositions described in the instant specification. 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.
With respect to claims 9 and 19, Inoue teaches a range of electron transport to hole transport materials that overlaps with that instantly claimed. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed 06/05/2026 have been fully considered but they are not persuasive.
In response to the outstanding rejections under 35 USC 112(a) as failing to comply with the written description requirement, Applicant argues that as amended the claims are fully supported. This argument has been fully considered but not found convincing for at least the following reasons. The five examples described in the written description do not provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus. The genus now as amended further requires that the n-type material is any ‘anthracene compound’ and that the p-type material is any ‘aromatic amine compound’. It is noted that as written, the claims do not require that the ‘anthracene compound’ or the ‘aromatic amine compound’ are members of the general formulae disclosed in the claims. Even if these formulae were required, they set forth an immense number of combinations of materials many of which have very little structural similarities with the 5 combinations described in the specification that Applicant has identified to meet the spectral overlap requirements of the claims. For example, the selections of Ar3 and Ar4 can be substituted or unsubstituted aryl groups having 6 to 60 carbon atoms and a substituted or unsubstituted heterocyclic group having 2 to 60 carbon atoms together define many orders of magnitude of possible combinations with no clear end as the groups themselves are immense and the substituents are not defined to be limited whatsoever either in the claim or the specification. These variables result in an essentially infinite number of candidate combinations and the five combinations are not representative thereof.
In response to the outstanding rejections under 35 USC 112(a) as failing to comply with the enablement requirement, Applicant argues that as amended the claims do not require undue experimentation. This argument has been fully considered but not found convincing for at least the following reasons. The genus now as amended further requires that the n-type material is any ‘anthracene compound’ and that the p-type material is any ‘aromatic amine compound’. It is noted that as written, the claims do not require that the ‘anthracene compound’ or the ‘aromatic amine compound’ are members of the general formulae disclosed in the claims. Even if these formulae were required, they set forth an immense number of combinations of materials many of which have very little structural similarities with the 5 combinations described in the specification that Applicant has identified to meet the spectral overlap requirements of the claims and there is no reason to expect that all members of these genera when combined would meet the claim limitations resulting in undue experimentation required to make and use the claimed devices.
In response to the outstanding rejections under 35 USC 112(b), Applicant argues that the specification recites “the fluorescence emission spectrum and the absorption spectrum may be obtained by testing with a fluorescence spectrometer through a solution method” and that such method is well known to a person skilled in the art and the specification provides sufficient guidance. This argument is not convincing. Initially, the recited text and the specification as a whole does not explicitly define that fluorescence emission in the claims is required to be measured through such a method but states that such methods are possible. Other methods are not precluded. Further, the claims do not require that such a method is used. Finally, the method is still ambiguous as it does not define the solvent or the excitation wavelengths which impact emission wavelengths.
In response to the outstanding rejections under 35 USC 103, Applicant argues that Inoue, Wang and Chun do not teach the claimed spectral overlap as a rationale for selecting host materials. This argument is not convincing. Inoue teaches the general structure of the device and teaches the use of mixed hosts that form exciplexes. Wang and Chun teach specific host materials and reasons that they would be selected. The rationale for selection of materials does not need to be the same in the prior art as that recited by Applicant.
Applicant also points to results of the claimed invention from the instant specification that show improvements from dual hosts as claimed in comparison to single host material devices. However, the prior art of record teaches dual host exciplexes and therefore such comparison is not in comparison with the prior art. Furthermore, for a finding of unexpected results, the results presented need to be of both statistical and practical significance and be commensurate in scope with the subject matter claimed (See MPEP 716.02).
Applicant further argues that Wang and Chun do not teach exciplex formation. However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Inoue teaches the formation of an exciplex from such materials. Exciplexes and dual host materials are exceptionally well known in the art.
Applicant further argues that inherency requires that the asserted property necessarily results form the prior art product. However, the prior art combination is identical to the instantly claimed combination.
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
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