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
Claims 1, 3-4, 7-13 of A. Tada, et.al. US 17/942,324 (09/12/2022) are pending. Claims 3, 7, 9 and 11 are withdrawn as not read on the elected species. Claims 1, 2,4, 8,10 and 12-13 under the examination on merits and are rejected.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 09/17/2021. It is noted, however, that applicant has not filed a certified copy of the JP 2021-152170 application as required by 37 CFR 1.55.
Election/Restrictions
Pursuant to the election of species requirement, Applicant elected, without traverse, compound (116) as the species of the General Formula (G1) in the reply filed on 07/25/2025 for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Now claims 1,2, 4, 8,10 and 12-13 read on the elected species.
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The elected species was searched and determined to be unpatentable as discussed in the 103 rejections below. Claims 3, 5, 9 and 11 are withdrawn as not read on the elected species, the provisional species election requirement is in effect.
Withdrawal Claim Rejections - 35 USC § 112
Rejection of claim 2 under 35 U.S.C. 112(b) as indefinite is withdrawn in view of the claim has been cancelled.
Withdrawal Claim Rejections - 35 USC § 112(d)
Rejection of claims 4 and 8 under 35 U.S.C. 112(d) is withdrawn in view of claim 4 has been amended as an independent claim.
Withdrawal Claim Rejections - 35 USC § 102
Rejection of claim 1 under 35 U.S.C. 102 (a)(1) as being anticipated by Q. F. Xing, et.al. CN110128329(2019)(“Xing”) is withdrawn in view of claim 1 has amended with additional limitation of “wherein at least one of Ar3 and Ar4 represents the substituted or unsubstituted heteroaryl group having 2 to 25 carbon atoms," and "wherein the substituted or unsubstituted heteroaryl group in at least one of Ar3 and Ar4 comprises a carbazolyl group.” Which can not be met by Xin.
Maintained 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.
Claims 1, 2,4, 8,10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over S. Iwamoto, et al, JP2009177125A(2009)(“Iwamoto”) in view of Q. F. Xing, et.al. CN110128329A(2019)(“Xing”) and T. Yagi, et al, WO2007063986A1 (2007)(“Yagi”).
Note: the rejection is modified to emphasize the motivation for modification.
S. Iwamoto, et al, JP5243891B2 (2013)(“Iwamoto”)
Iwamoto teaches a material for a photoelectric conversion element represented by the following formula (3)
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In the formula, R1 to R9 each independently represent hydrogen, a C1 to C40 substituted or unsubstituted alkyl group, a C2 to C40 substituted or unsubstituted alkenyl group, a C6 to C40 substituted or unsubstituted aryl group, C3-C40 substituted or unsubstituted heteroaryl group, and may combine with each other to form a ring.
Ar1 and Ar2 each independently represent a C1 to C40 substituted or unsubstituted alkyl group, a C2 to C40 substituted or unsubstituted alkenyl group, a C6 to C40 substituted or unsubstituted aryl group, a C3 to C40 substitution unsubstituted heteroaryl group, which may be bonded to each other to form a ring.
Iwamoto at 48/84, (2); and also see the google translation conducted by Examiner, emphasis added.
Iwamoto teaches that photoelectric conversion element can be a light receiving element. Iwamoto at 60/84, [0062], line 1-5. Iwamoto teaches that the photoelectric conversion element comprises a lower electrode , organic compound layer and upper electrode. Iwamoto at 61/84, [0067].
Iwamoto teaches working examples of the photoelectric conversion element material such as the compounds with the chemical structures as indicated below:
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Iwamoto at 58/84, the middle compounds in line3-4.
Thus, Iwamoto fairly teaches one ordinary skill that the groups
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in the Iwamoto compound A can form carbazolyl groups by binding of two adjacent phenyl groups.
Difference between Iwamoto and the Elected Species
The Iwamoto compound A differs from the elected species as indicated below:
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T. Yagi, et al, WO2007063986A1 (2007)(“Yagi”)
Yagi teaches that carbazolyl group-containing diaminoarylene compound when used in an organic electroluminescent device (hereinafter abbreviated as "organic EL device"), exhibits excellent performance(low-voltage driving, long life, and high stability) because of its low molecular crystallinity and high glass transition temperature (Tg). Yagi at 194/348, emphasis added.
Yagi teaches that:
In general, a carbazole compound tends to have a stronger structure and higher thermal stability than a diphenylamino compound having no bond (see Chemical Formula 14).
[0055] [Chemical formula 14]
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Yagi at 206/348, [0054], the last two lines, and [0055], emphasis added.
Yagi teaches that:
[0058] The effect of the carbazolyl group bonded at the 3-position will be described. Usually, an amino group functions as an electron donor, but a nitrogen atom of carbazole hardly has a donor property with respect to a substituent group bonded to the nitrogen atom. It is considered that this is because the carbazole ring has planarity and is a very bulky substituent, and it is difficult to form a planar structure with the substituent on the nitrogen atom. On the other hand, since the carbazole ring has planarity of the ring, the carbazole ring can have an electron donor property with respect to the benzene ring portion (see Chemical Formula 15).
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[0060] Therefore, in the diaminoarylene compound having a carbazolyl group bonded at the 3-position of the present invention, both the amino group bonded to the carbazole ring and the nitrogen atom of the carbazole ring serve as electron donors for the benzene ring of the carbazole ring, and it is considered that an electron donor effect equal to or higher than that of a phenylenediamine structure can be exhibited (see Chemical Formula 16).
[0061] [Chemical formula 16]
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Yagi at 207/348, [0058] to 208/348, [0061], emphasis added.
Yagi also teaches working examples of his carbazolyl group-containing diaminoarylene compound, such as compounds having the chemical structure as indicated below:
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Yagi at page 209/348, Table 1.
To summarize that Yagi teaches that carbazolyl group such as the group of
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is higher thermal stability than a diphenylamino compound having no bond; and has an equal to or higher electron donor effect than that of a phenylenediamine.
Q. F. Xing, et.al. CN110128329 (2019)(“Xing”)
Xing teaches a nitrogen-containing heterocyclic arylamine derivative formula 2 which can be used in an organic electroluminescence device.
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Xing at page 11/41, [006], 31/41, Summary of the invention.
Xing teaches that the nitrogen-containing heterocyclic arylamine derivative can effectively reduce the operating voltage of the device, improve the luminous efficiency of the device, and effectively extend the life of the device. Xing at 32/41, paragraph 7, line 6-8, emphasis added. Xing teaches Example compound of the formula (2) such as the compound P29 having a chemical structure as indicated below:
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Xing at page 7/41, line 1, P29.
Therefore, Xing fairly teaches one ordinary skill that arylamine derivatives of
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can effectively reduce the operating voltage of the device, improve the luminous efficiency of the device, and effectively extend the life of the device when it is used as a material of an electroluminescence device.
Obviousness Rational of Claims 1, 2,4, 8,10, 12-13 and the Elected Species
Obviousness of a claimed compound can also be supported where there is motivation to substitute particular chemical moieties in a prior art compound for others so as to arrive at a claimed compound. MPEP § 2143(I)(B). For example, in the pharmaceutical arts, the rational is stated as motivation to select a known compound and also motivation to structurally modify the selected compound in a particular way to achieve a claimed compound. MPEP § 2143(I)(B) (see for example, MPEP § 2143(I)(B) Example 9, citing Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 87 USPQ2d 1452 (Fed. Cir. 2008).
One of ordinary skill is motivated to select the Iwamoto compound of
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for further investigation because Iwamoto discloses it as an example of the Formula (3) and it can be used for a photoelectric conversion element material. Having selected the Iwamoto compound, one of ordinary skill is motivated to modify the Iwamoto compound as indicated below.
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One ordinary skill is motivated to do this modification with a reasonable expectation of success because:
(i). Iwamoto teaches that the groups
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in the Iwamoto compound A can form carbazolyl groups by binding of two adjacent phenyl groups;
(ii). Yagi teaches that carbazolyl group
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is higher thermal stability than a diphenylamino compound having no bond; and has an equal to or higher electron donor effect than that of a phenylenediamine.
(iii). The proposed compound and the Iwamoto compound B are position isomers, which are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. MEPE 2144.09
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One of ordinary skill is also motivated to further modify the above proposed compound by to replace the hydrogens of both the R3 and R8 with phenyl groups as indicated below, thus arrive at the elected species which meets each and every limitation of 1, 2,4, 8,10, 12 and the elected species, therefore, claims 1, 2,4, 8,10 ,12 and the elected species are obvious.
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One ordinary skill is motivated to do this modification with a reasonable expectation of success because:
(i). Iwamoto teaches that both the R3 and R8 can be hydrogen or aryl group, phenyl group is a normal used aryl group in the organic of chemistry.
(ii). Xing teaches that arylamine derivatives of
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can effectively reduce the operating voltage of the device, improve the luminous efficiency of the device, and effectively extend the life of the device when it is used as a material of an electric device.
Claim 13 is obvious because one ordinary skill is also motivated to utilize the proposed compound as a material in an organic compound layer between lower electrode and upper electrode of a photoelectric conversion element such as a light receiving element as taught by Iwamoto.
Applicant’s Argument
Applicant argues on the ground that there is no motivation to combine the 3-yl carbazole of Yagi with Iwamoto who intends to use a 9-yl carbazole. Remarks at page 11, last line to page 12, paragraph 4.
These arguments have been fully considered but not persuasive. As detail discussed above Iwamoto teaches that the groups
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in the Iwamoto compound A can form carbazolyl groups by binding of two adjacent phenyl groups. Given Yagi teaches that 3-yl carbazole group has higher thermal stability than a diphenylamino compound having no bond and has an equal to or higher electron donor effect than that of a phenylenediamine, one ordinary skill has a motivation to modify the Iwamoto compound A by election of two phenyl groups in the moieties of
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to form 3-yl carbazole groups. Moreover, 3-yl carbazole and 9-yl carbazole are position isomers, there is a presumed expectation that isomers possess similar properties. MEPE 2144.09.
Maintained 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).
Provisionally rejection of Claims 1, 4, 8,10 and 12-13 on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 15 of co-pending Application No. 18/690,357 (published as US20240415012A1) in view of Q. F. Xing, et.al. CN110128329A(2019)(“Xing”) and T. Yagi, et al, WO2007063986A1 (2007)(“Yagi”). The claim set of 18/690,357 filed on 03/08/2024 is cited. This is a provisional nonstatutory double patenting rejection.
Conflicting Claims
The conflicting claim 9 claims:
a material for a photoelectric conversion device, the photoelectric conversion device comprising a first electrode, a second electrode, a first layer, a second layer and a third layer,
wherein the first layer is between the first electrode and the second electrode,
wherein the second layer is between the first layer and the second electrode,
wherein the third layer is between the second layer and the second electrode,
wherein the third layer has higher electron mobility than the first layer,
wherein the material is used in the second layer,
wherein the material comprises an anthracene skeleton, and
wherein the anthracene skeleton is substituted with any one of a diarylamino group, a diheteroarylamino group and an arylheteroarylamino group.
The conflicting claim 15 claims:
The material for a photoelectric conversion device, wherein the material is represented by Formula (G1):
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Difference between the Conflicting Claims and the instant Claims
The conflicting claim 15 differs from the elected species in that it does not claim the formula G1 having the follows chemical structure:
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The combination of Xing and Yagi
Xing and Yagi have been detail discussed above.
Claims 1, 4, 8,10 and 12-13 are Obvious
Claims 1, 4, 8,10 and 12 are obvious because one ordinary skill seeking a photoelectric conversion device material is motivated to modify the material for a photoelectric conversion device claimed by the conflicting claim 15 by election of each of A1, Ar1 and Ar2 as phenyl; and both Ar3 and Ar4 as the
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groups thus arrive at the elected species which meets each and every limitation of claims1, 4, 8,10 and 12, therefore, claims1, 4, 8,10 and 12 are obvious.
One ordinary skill is motivated to do these elections because:
(i). the conflicting claim 15 claims that each of the A1, Ar1 and Ar2 can be a substituted or unsubstituted aryl group having 6 to 25 carbon atoms; each of Ar3 and Ar4 can be a substituted or unsubstituted heteroaryl group having 2 to 25 carbon atoms;
(ii). as discussed above for the 103 rejection, Xing teaches that arylamine derivatives of
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can effectively reduce the operating voltage of the device, improve the luminous efficiency of the device, and effectively extend the life of the device when it is used as a material for an electric device;
(iii). Yagi teaches that carbazolyl group such as the group of
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is higher thermal stability than a diphenylamino compound having no bond; and has an equal to or higher electron donor effect than that of a phenylenediamine when used for a material for an electric device .
Claim 13 is also obvious because one ordinary skill is also utilize the proposed compound as a photoelectric conversion device material as claimed by the conflicting claim 9.
Terminal Disclaimer
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.
Applicant’s Response
Applicant response to the double patenting rejections as:
While Applicant traverses this rejection, it is respectfully requested that this rejection be held in abeyance until the prior art rejections are overcome and the claims are in their final form.
Remarks at page 12-13, Response to Double Patenting.
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 FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday. 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, Scarlett Goon can be reached at (571)2705241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692