DETAILED ACTION
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant recites:
PNG
media_image1.png
296
652
media_image1.png
Greyscale
The specification recites:
PNG
media_image2.png
828
704
media_image2.png
Greyscale
The above shows examples of second, third, and fourth compounds, but this does not support the full scope of the claim 1. Applicant has amended claim 1 to define the 2nd, 3rd and 4th compounds in generic terms hole transport host, electron transport host, and auxiliary dopant. The scope of the claims remains far beyond the support of the specification. To search the entire scope of a hole transport host, an electron transport host, and auxiliary dopant is a massive undertaking to say the least.
By having a claim written as such, applicant is attempting to have a scope for a combination of generic materials that would extend beyond the material requirements supported in the specification. The office has attempted in detail to explain the written description issues associated with broad generic limitations not supported by the specification.
Per MPEP 2163(II)(A)(3)(a)(ii), the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by (A) actual reduction to practice, (B) reduction to drawings, or (C) by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. Claim 1 still has not met this requirement which raises issues with written the description for claims 1-14.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter as applicant claims the compounds to claims 15 and 20.
A search of the prior art fails to show a N in at least one from Y1 to Y4, Z1 toZ4 and W1 as required by independent claims 15 and 20. The closest prior art as exemplified by Hatakeyama (WO 2018/212189) teaches a material represented by 1-2001A (page 7):
PNG
media_image3.png
184
252
media_image3.png
Greyscale
1-2001A fails to show a N in at least one from Y1 to Y4, Z1 toZ4 and W1. Hatakeyama fails to teach, suggest, or offer guidance that would render it obvious modify 1-2001A to show a N in at least one from Y1 to Y4, Z1 toZ4 and W1 to arrive at the limitations of independent claims 15 and 20.
Claims 15-20 allowed.
Response to Amendment
112 first paragraph issues remain.
The applicant’s arguments with respect to the pending claims have been considered but are moot in view of the new grounds of rejection necessitated by the applicant’s amendment.
Conclusion
Applicants’ 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 GREGORY D CLARK whose telephone number is (571)270-7087. The examiner can normally be reached on 8AM-4PM 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, Jennifer Chriss can be reached on 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GREGORY D CLARK/Primary Examiner, Art Unit 1786
Prosecution Insights