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 .
Drawings
The drawings are objected to because they are labelled “Figure 1” and “Figure 2”. View numbers must be preceded by the abbreviation “FIG.” 37 CFR 1.84(u)(1). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 14 is objected to because of the following informalities:
Claim 14 comprises structures which include small subscripts on variables. For example, Formula F7’ is shown below, which includes the variable XL. The subscript L is small enough that it blends in with the double bond. For ease of reading, it is recommended to make the subscripts bigger.
F7’:
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Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 2-11, 14, and 17-20 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 2-11 and 17-18 recite broad limitations and further recite preferable limitations, which are the narrower statements of the range/limitations. For example, claim 3 recites m + n ≤ 1, which is the broad limitation, and further recites “preferably, m + n = 0”. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination, claims 2-11 and 17-18 will be interpreted as only requiring the broad limitation.
Claims 19-20 are rejected for being dependent upon indefinite claims 17-18.
Claim 14 recites compounds which have a structures represented by one of Formulas F1, F2’, F3’, F4’, F5’, F6’, and F7’ wherein variables of these formulae are further defined in a table. However, neither claim 14 nor claim 1 (of which claim 14 is dependent upon) recite the structures that the variables are required to be. For example, Compound F1-1 recites the compound is represented by Formula F1 wherein Y is A1, X1, X2 is C-B16, X3 is C-B16, and W is O. However, claim 14 does not define the structures of A1 or B16. Accordingly, it is unclear what structures the compounds of claim 14 are required to have. For purposes of examination, the limitations of claim 14 will be interpreted as met if the limitations of claim 1 are met.
Claim 20 recites “the buffer layer also comprises the compound”. However, neither claim 15 nor claim 18 (of which claim 20 is dependent upon) require the compound to be in another layer. Thus, by reciting “also”, it is unclear if the compound is required to be in multiple layers. For purposes of examination, the limitation will be met if the compound is included in only the buffer layer.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 7, 10-12, 14, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baxter (Baxter, I., D. W. Cameron, and M. R. Thoseby. "Preparation and some reactions of 6-arylsulphonimidobenzoxazol-2 (3 H)-ones." Journal of the Chemical Society C: Organic 6 (1970): 850-853.)
Regarding claims 1-4, 7, 10-12, 14, and 21, Baxter teaches the quinone di-imine compound II wherein R1 is p-MeC6H4 or Ph and R2 is H, which is reproduced below in comparison to the claimed Formula 1 (pg. 850).
Compound II:
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Formula 1:
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Compound II reads on the claimed Formula 1 wherein:
Y at one occurrence is O and Y at the other occurrence is NR’;
W is O (claim 2);
X1 to X3 are each CR (claim 4);
L at both occurrences is not required to be present;
R is hydrogen and R’ is a sulfonyl group (claims 7 and 10); and
m and n are each 0 (claim 3).
As evidenced by instant ¶ [0074], a sulfonyl group is electron-withdrawing.
As L is not required to be present, the limitations of claim 11 are met.
Additionally, compound II reads on the claimed Formula F1 (claim 12).
Per claim 21, Baxter teaches a compound combination in which compound II is reacted with the compound sodium benzenesulphinate (see last paragraph of pg. 850).
Claims 1-4, 6-7, and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by El-Shaieb (El-Shaieb, Kamal M., et al. "Facile Synthesis of Thiazole, Thiazine and Isoindole Derivatives via EDA Approach and Conventional Methods." Zeitschrift für Naturforschung B 68.8 (2013): 905-912.), as evidenced by R. Stenutz, Hammett substituent constants, 2025.
Regarding claims 1-4, 6-7, and 11-14, El-Shaieb teaches compound 16, which is reproduced below in comparison to the claimed Formula 1 (pg. 907).
Compound 16:
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Formula 1:
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Compound 16 reads on the claimed Formula 1 wherein:
Y at one occurrence is NR’, Y at one occurrence is O;
W is S (claim 2);
X1 to X3 are each CR (claim 4);
L in both occurrences is not required to be present;
R is halogen and cyano, and R’ is a substituted alkyl group having 1 carbon atom (claim 7); and
m and n are each 0 (claim 3).
As evidenced by instant ¶ [0074], a cyano group is electron-withdrawing.
Per claim 6, as evidenced by R. Stenutz, a cyano group has a Hammett constant within the claimed range (see page 2).
As L is not required to be present, the limitations of claim 11 are met.
Additionally, compound 16 reads on the claimed Formula F1 (claim 12).
Per claim 13, R reads on B6 and B16 and RL, RN, and RN’ are not required to be present.
Claims 1-10 and 13-14 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Cui (US 2021/0280795 A1), as evidenced by R. Stenutz, Hammett substituent constants, 2025.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
The applied reference has a common applicant and join inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claims 1-10 and 13-14, Cui teaches an organic electroluminescent device comprising a compound having a structure of B(A)2 wherein A has a structure represented by Formula 1 (¶ [0012]). Examples of compounds represented by Formula 1 include compound XIX-2, which is reproduced below in comparison to the claimed Formula 1 (pg. 47).
XIX-2:
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Formula 1:
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Compound XIX-50 reads on the claimed Formula 1 wherein:
Y at each occurrence is CR”R”’ (claim 5);
W is O (claim 2);
X1 to X3 are each CR (claim 4);
L in one occurrence is not required to be present and L in the other occurrence is a cyclic conjugated structure comprising 9 ring atoms and comprising at least one intracyclic double bond;
R is hydrogen, and R” and R”’ are each a cyano group (claims 7 and 10); and
m is 1 and n is 0 (claim 3).
As evidenced by instant ¶ [0074], a cyano group is electron-withdrawing.
Per claim 6, as evidenced by R. Stenutz, a cyano group has a Hammett constant within the claimed range (see page 2).
Per claims 8-9, each Y is
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Per claim 13, R reads on B16.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 15-21 are rejected under 35 U.S.C. 103 as being obvious over Cui (US 2021/0280795 A1).
The applied reference has a common has a common applicant and join inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Regarding claims 15-16 and 21, Cui teaches compound XIX-2, as described above with respect to claim 1.
Cui fails to teach a specific example of a device including compound XIX-2.
However, Cui does teach an electroluminescent device comprising an anode, a cathode, and a hole injection layer or a hole transporting layer disposed therebetween, wherein the hole injection layer or the hole transporting layer is formed from the compound having the structure of B(A)2 alone (¶ [0025] and [0176]).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to use compound XIX-2 in Cui’s device as described in [0025] and [0177], wherein compound XIX-2 is used alone in the hole injection or transporting layer, because this would have been combining the prior art elements of Cui according to known methods to yield predictable results of an electroluminescent device, as taught by Cui. See MPEP 2143.I.(A).
As more than one compound XIX-2 would be required to form the hole transporting or injection layer, the limitation of a compound combination is met by the hole transporting or injection layer (claim 21).
Regarding claims 15, 17, 19, and 21, Cui teaches compound XIX-2, as described above with respect to claim 1.
Cui fails to teach a specific example of a device including compound XIX-2.
However, Cui does teach an electroluminescent device comprising an anode, a cathode, and a hole injection layer or a hole transporting layer disposed therebetween and comprising a hole transporting material, which is further doped with the compound having the structure of B(A)2 and the molar doping ratio of the compound having the structure of B(A)2 to the hole transporting material is from 10000:1 to 1:10000 (¶ [0025] and [0177]).
Cui further teaches the hole transporting material comprises a compound having a triarylamine unit, a spirobifluorene compound, a pentacene compound, an oligothiophene compound, an oligophenyl compound, an oligophenylene vinyl compound, an oligofluorene compound, a porphyrin complex, or a metal phthalocyanine complex (¶ [0179]).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to use compound XIX-2 in Cui’s device as described in ¶ [0025] and [0177], wherein compound XIX-2 is used as a dopant in the hole injection or transporting layer and the hole transporting material has the structure as described in ¶ [0179], because this would have been combining the prior art elements of Cui according to known methods to yield predictable results of an electroluminescent device, as taught by Cui. See MPEP 2143.I.(A).
Per claim 21, the combination of the hole transporting material and compound XIX-2 reads on the claimed compound combination.
Regarding claims 15, 18, and 20-21, Cui teaches compound XIX-2, as described above with respect to claim 1.
Cui fails to teach a specific example of a device including compound XIX-2.
However, Cui does teach an electroluminescent device comprising an anode, a cathode, and a plurality of stacks disposed between the anode and the cathode; wherein the stacks comprise a first light-emitting layer and a second light-emitting layer and a charge generation layer is disposed between the first stack and the second stack; wherein the charge generation layer comprises a p-type generation layer and an n-type charge generation layer; and wherein a buffer layer is disposed between the p-type charge generation layer and the n-type generation layer, and the buffer layer comprises the compound having the structure of B(A)2 (¶ [0025], [0181], and [0184]).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to use compound XIX-2 in Cui’s device as described in [0025], [0181], and [0184], wherein compound XIX-2 is used in the buffer layer, because this would have been combining the prior art elements of Cui according to known methods to yield predictable results of an electroluminescent device, as taught by Cui. See MPEP 2143.I.(A).
As more than one compound XIX-2 would be required to form the buffer layer, the limitation of a compound combination is met by the buffer layer (claim 21).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
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, 13, and 15-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 and 23 of U.S. Patent No. US 12,239,018 B2 (US 2021/0280795 A1), as evidenced by R. Stenutz, Hammett substituent constants, 2025. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of ‘018 recites compounds that read on the limitations of claims 1-10 and 13 of ‘703.
For example, compound XIX-2 is recited in claim 16 of ‘018 and is reproduced below in comparison to Formula 1 of ‘703 (see Table in col. 153 and structure in col. 91).
XIX-2:
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Formula 1:
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Compound XIX-50 reads on the Formula 1 of ‘703 wherein:
Y at each occurrence is CR”R”’ (claim 5);
W is O (claim 2);
X1 to X3 are each CR (claim 4);
L in once occurrence is not required to be present and L in the other occurrence is a cyclic conjugated structure comprising 9 ring atoms and comprising at least one intracyclic double bond;
R is hydrogen, and R” and R”’ are each a cyano group (claims 7 and 10); and
m is 1 and n is 0 (claim 3).
As evidenced by instant ¶ [0074], a cyano group is electron-withdrawing.
Per claim 6, as evidenced by R. Stenutz, a cyano group has a Hammett constant within the claimed range (see page 2).
Per claims 8-9, each Y is
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Per claim 13, R reads on B16.
Additionally, ‘018 recites a structure of B(A)2 wherein A has a structure of Formula 1 in claims 1-15. As evidenced by the compounds in claim 16, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to select variables of Formula 1 to arrive at the instant claimed Formula 1 comprising the limitations of claims 1-10 and 13 of ‘703, because it would have been choosing from a list of variables specifically taught, which would have been a choice from a finite number of identified, predictable solutions of a compound possessing the benefits taught by ‘018. One of ordinary skill in the art would have been motivated to produce additional compounds represented by a structure of B(A)2 having the benefits taught by ‘018 in order to pursue the known options within his or her technical grasp with a reasonable expectation of success. See MPEP 2143.I.(E).
Additionally, claims 17-21 and 23 of ‘018 correspond to claims 15-20 of ‘703, as shown below.
12,239,018 B2
17/973,703
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Accordingly, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to use a compound of ‘018 (for example, compound XIX-2) as described above in an electroluminescent device comprising the limitations of 17-21 and 23 of ‘018, because one of ordinary skill in the art would reasonably have expected the elements of the compound having the structure of B(A)2 and the electroluminescent device to predictably maintain their respective properties or functions after they have been combined, and this would have been combining prior art elements according to known methods to yield predictable results. See MPEP 2143.I.(A).
Regarding claim 21 of ‘703, a device comprising a layer formed from compounds XIX-2 would necessarily read on a compound combination as more than one compound XIX-2 would be present in the formation of the layer.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRAELYN R WATSON whose telephone number is (571)272-1822. The examiner can normally be reached M-F 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer 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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/BRAELYN R WATSON/Examiner, Art Unit 1786