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
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The structure Formula 1-A2 has a carbazole in the para position on a single phenylene group with respect to the N atom, which is excluded from the scope of base claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2, 4-6, 9-10, 12-13, 15, 17 and 19 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Kwong et al (US 20180047912 A1).
Kwong discloses borazarophenanthrene used in OLEDs having the 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 [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 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 5, since the para position of carbazole is explicitly claimed (though it excluded from base claim 1), Kwong also discloses a specific example having carbazole substituent:
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[p13].
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.
Claim(s) 3, 5, 7-8, 11, 14, 16, 18 and 20is/are rejected under 35 U.S.C. 103 as being unpatentable over Kwong et al (US 20180047912 A1).
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
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