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 .
Response to Arguments
Applicant's arguments filed 09/10/2026 have been fully considered but they are not persuasive.
Applicant argues that the claimed compounds are not disclosed in Kwong et al (US 20180047912 A1) with sufficient specificity to anticipate the claims. This argument is convincing, and the 102 rejection over Kwong is withdrawn. The 103 rejection over Kwong remains.
Applicant argues that even though the Office has shown that the core structure of the claims and all of the substituents of the claims are within the regular practice of Kwong, the office has not shown that the claimed combination of core structure and substituents is obvious because Kwong does not appear to identify these conditional selections nor give the skilled artisan reason to combine these particular core structures and substituents “as opposed to the many other permutations available within Kwong’s generic teachings” [p55 penultimate paragraph]. Similarly, Applicant argues that Kwong does not specifically explain why the claimed conditional substitutions would be selected together [p56], that Kwong does not give a reason to substitute their compounds on the specific rings of the core scaffold that is required by the claims [p58], that Kwong does not establish that the numerous possible structural “modifications” permitted by its generic formulas would have equivalent effects on the relevant electronic, steric, and photophysical properties of the resulting compounds [p58 final paragraph], and that Kwong does not identify a specific structure-property relationship of the claimed selection of core structure and substituents [p59 first full paragraph]. These arguments are not convincing. Kwong (nor the office) has to establish that the claimed combination of core structure and substituents are preferable over other embodiments. Just because there are many other obvious embodiments in a reference does not make any one particular embodiment, or several particular embodiments unobvious. If this was the case, the ordinarily skilled artisan could just pick up a patent, choose an extra substituent among a list of options disclosed in the patent, and, voila, the skilled artisan would be granted a patent. Applicants’ arguments, at best, amount to a contention that the claimed element is a nonpreferred embodiment of the prior art. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments, see Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, see In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Kwong does not need to say that the claimed combination in particular is operable, nor give a reason like the specific structure-property relationship of the specific embodiments of the claims over any other disclosed embodiments. Applicant’s claims are merely one among many embodiments of Kwong that the skilled artisan would make in the regular, unmodified practice of the reference’s teachings.
Applicant is welcome to point out, with sound scientific reasoning or reasoning from other references published prior to the effective filing date, why the skilled artisan would not make the particular combination of the claims. In that case, the Office could not maintain that there was a reasonable expectation of success, and the claimed embodiments would be unobvious.
On the other hand, Applicant argues that the Office has not made a case that the claimed embodiments would be chosen by the skilled artisan over the other embodiments of Kwong, i.e. that there would be no motivation to choose these particular embodiments. This argument is not convincing. Again, the Office does not need to make the case for the claimed embodiments over any other obvious embodiments of the references. As stated in the rejection: Case law confirms that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Applicant is welcome to make the case for non-obviousness by providing convincing secondary considerations, in particular Applicant might use experimental data (in the specification or submitted in Affidavit form) to show there are unexpected results with the claimed embodiments over the other embodiments of the closest prior art (in this case Kwong).
See MPEP section 2145, “once a prima facie case of obviousness is made by the PTO through citation of references, the burden is on the applicant to produce contrary evidence establishing that the reference being relied on would not enable a skilled artisan to produce the different compounds claimed. Id. at 274-75, 158 USPQ at 601”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kwong et al (US 20180047912 A1).
Kwong discloses borazarophenanthrene used in OLEDs having structural formula I-a:
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[0059 p5] wherein R1 to R5 include carbazole and heteroaryl groups [0060, 0065] and wherein heteroaryl includes pyridine, pyrimidine, and triazine (i.e. the claimed Ar1 groups) and R1 to R5 also include substituents that read on the non-hydrogen substituents of R1 [0047]. Any ring on the compound may be optionally further substituted [0064]. Specific examples include pyridine attached directly to the N of the core molecule:
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[p21 compounds C-6 to C-8].
The rings on these compounds may explicitly be further substituted [0070], and the substituents largely overlap with the claimed non-hydrogen R6 groups in Formula 2-2A.
Kwong also discloses the specific compound B-30,
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[p13]
which Kwong explicitly discloses may be further substituted [0067] and those substituents can be the same substituents as the claimed R5 and R6 groups on Formulas 2-1A and 2-2A.
It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have prepared the claimed substituted compounds because Kwong teaches the compound structures and teaches that they can be substituted with the same substituents as the claims. Because each of the claimed elements is disclosed and used in the same capacity, and the skilled artisan would only need to choose between the disclosed options without any modification to the teachings of Kwong.
Case law confirms that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Kwong teaches that the compound can be used as a host in the emissive layer of an OLED along with phosphorescent dopants [0076-0077]. The rings of the core molecule and substituents may be substituted with deuterium [0018, 0048].
Regarding claim 3 and 14, Kwong indicates that any ring on the compound may be optionally further substituted [0064, 0067, 0070, 0075] with combination of the aryl and heteroaryl substituents [0060]. The substituents include the common aryl and heteroaryl groups such as phenyl and carbazole, dibenzofuran and other claimed groups [0046-0048, 0060]. Regarding claims 7-8, 11, 16, 18, and 20, these same substituents may be used as R1 to R5 in the formula I-a above.
If Applicant argues that the claimed embodiments are not disclosed with sufficient specificity and that examiner is picking and choosing with improper hindsight, Examiner notes that the rejection is made under 35 USC 103 obviousness. Examiner holds the opinion that there a finite number of disclosed substituents that would allow the ordinarily skilled artisan to prepare the claimed compounds with the common aryl and heteroaryl. It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have prepared the claimed compounds over the combination of elements disclosed in Kwong, and the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Alternatively, and regarding claims 5, 11, 16 and 20 specifically, Kwong also discloses a specific example having carbazole substituent:
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[p13]. While this particular para position isomer is excluded from the claims, the general formula I-a above indicates that the substituents may be at the meta positions as well, which reads on the compound 1 of claims 11 and 20, i.e. the analogous meta substituted compound. Alternatively, the ordinarily skilled artisan would have expected the meta and para substitutions to have similar if not indistinguishable properties, so it would have been obvious to one having ordinary skill in the art to have used the meta substituted compound from the disclosure of the para substituted compound in Kwong.
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991).
Other References
Wei et al (US 20200343455 A1) is representative of references that include further condensed rings on the borazarophenanthrene, which are excluded from the claimed Formula 1, for example:
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[p12]. There would be no obvious reason to remove the condensed rings from the compounds.
Many references include boron-nitrogen compounds wherein the boron and nitrogen link aromatic and aliphatic groups, but do not contain a B-N linkage, let alone within a ring or a borazarophenanthrene. See Tetsuji et al (EP 3806175 A1) for a typical example:
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm M-F.
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, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/ Primary Examiner, Art Unit 1766
