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 07/01/2026 have been fully considered but they are not persuasive.
Applicant argues that Kwong does not explicitly disclose that the B-N compounds are non-hydrogen substituted specifically when they meet the provisos of the amendments, i.e. only when n1 is 0 or when n1 is 1 and each R1 is hydrogen. Applicant argues at length that the claims do not merely require that a ring be “optionally substituted”, rather that the claims require non-hydrogen substitution of Ar1 “only under particular structural circumstances”. This argument is not convincing. While the provisos of the amended claims are certainly particular and convoluted, they amount to a requirement for generic non-hydrogen substitution only with some claimed embodiments (chosen only to claim around the explicitly disclosed embodiments of Kwong) and optional generic non-hydrogen substitution with the rest of the embodiments.
Applicant argues that Kwong does not identify these conditional selections. This argument is not convincing. Applicant’s specification does not identify these conditional selections either. These conditional selections are not inventive, but arbitrary.
Applicant argues that Kwong may broadly permit optional substitution but does not “provide a teaching or motivation to select the particular substituted” groups. This argument is not convincing. Kwong teaches that the compounds can be substituted with the same substituents as the claims, Kwong does not need to provide motivation to always include substitutions only in some circumstances.
Applicant argues that Kwong does not appear to explain those substitutions should be required specifically when n1 is 0 or when n1 is 1 and R1 is a hydrogen atom. This argument is not convincing. Kwong teaches that compounds can be substituted all of the time, they do not need to teach that the compounds “should” really really be substituted some of the time.
Claim Rejections - 35 USC § 102/103
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) 1-2, 4-6, 9-10, 12-13, 15, 17 and 19 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over 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 (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.
This rejection is made concurrently under both 35 USC 102 anticipation and 35 USC 103 obviousness. Examiner holds the opinion that the disclosure of Compound B-30 and the explicit disclosure that it may be substituted [0067], is a specific and explicit disclosure of the claimed Formula 1 wherein n1 is 1, each R1 is a hydrogen atom, and Ar1 is Formula 2-1A (i.e. Formula 1 wherein Ar1 is a carbazole and
In the alternative, 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].
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) 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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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm M-F.
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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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