Notice of 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 .
DETAILED ACTION
Specification
The specification is objected to. Specifically, paragraph 00093 of Applicants specification contains many compounds of poor quality. Applicants pre-grant publication US 2023/0200205 shows this as many of the atom labels and some of the bonds in the compounds taught in paragraph 00093 cannot be interpreted/identified. Additionally, compounds H-5, H-7, and H-8 in paragraph 00202 and the compound of Formula 16 in paragraph 00228 suffer from legibility issues.
Claim Objections
Claim 1 is objected to. The limitation “each of a A ring and a E ring is” should be amended to “each of ring A and ring E are” for better clarity.
Claim 8 is objected to. The limitation “the emitting compound is one of the compounds” should be amended to “the emitting compound is selected from any one of the compounds” for better clarity.
Claim 11 is objected to. The limitation “the second compound is one of the compounds” should be amended to “the second compound is selected from any one of the compounds” for better clarity.
Claim 18 is objected to. The limitation “the emitting compound is one of the compounds” should be amended to “the emitting compound is selected from any one of the compounds” for better clarity.
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.
Claim 3 is rejected under 35 U.S.C. 112(d) 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. Formula 2-2 of claim 3 does not further limit Formula 1 of claim 1. Specifically, the ring which comprises Y2 by necessity requires a double bond as recited in Formula 1 when variable m is equal to zero. However, Formula 2-2 of claim 3 is missing said double bond in the Y2-containing ring. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim 8 is rejected under 35 U.S.C. 112(d) 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. Compounds 45 through 54 do not further limit Formula 1 of claim 8. Specifically, compounds 45 through 54 are believed to refer to embodiments where variable m is equal to zero and variable n is equal to 1. However, in such an embodiment, there must necessarily be a double bond in the ring furthest form the central boron atom. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim 18 is rejected under 35 U.S.C. 112(d) 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. Compounds 45 through 54 do not further limit Formula 1 of claim 18. Specifically, compounds 45 through 54 are believed to refer to embodiments where variable m is equal to zero and variable n is equal to 1. However, in such an embodiment, there must necessarily be a double bond in the ring furthest form the central boron atom. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim 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.
Claims 1, 2, 5-7, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shin et al. (US 2023/0189646). The English language equivalent US 2023/0189646 is relied upon for citation purposes.
Claim 1: Compound 227 of Shin et al., which has the structure,
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, anticipates Formula 1. As applied to Formula 1, compound 227 has X1 equal to B, X2 and X3 equal to NR3 with both R3 equal to a substituted phenyl group (t-butyl substituted phenyl), ring E is an unsubstituted benzene ring, ring A is the C14 heterocyclic ring system
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, Y1 is C(R5)2 with both R5 groups equal to methyl, n equal to zero, and m equal to zero.
Claim 2: Compound 227 also anticipates Formula 2-1 of claim 2 with all variable assignments being the same as in claim 1.
Claim 5: Compound 227 also anticipates Formulae 3-1 of claim 5, with Y3 equal to O, R11 and R12 equal to hydrogen atoms, and R13 and R14 joined to form a substituted hetero ring (benzofuran), and all other variables being defined in claim 1 above.
Claim 6: Compound 227 also anticipates Formula 3-2 of claim 6 with R21-R23 equal to hydrogen atoms and all other variables being defined in claim 1 above.
Claim 7: Compound 227 also anticipates Formula 3-3 of claim 7 with R11-R14 being described in claim 5 above, R21-R23 equal to hydrogen, R31, R32, R34, R35, R41, R42, R44, and R45 equal to hydrogen, and R33 and R43 equal to t-butyl, and all other variables being defined in claim 1 above.
Claims 9 and 10: The compounds taught by Shin et al., which includes compound 227, are employed as dopants in organic electroluminescent devices. The employment of any one of the explicitly taught boron-based compounds of Shin et al., including compound 227, in the devices taught therein, is at once envisaged. The devices taught by Shin et al. are comprised of a substrate, an anode, a hole transport region, an light-emitting region comprising an anthracene-based host material and a boron-based dopant material, an electron transporting region, and a cathode. The exemplified host material has the structure
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(page 208). As applied to Formula 5 of claim 10, this compound has Ar1 equal to a deuterated phenyl, L equal to a single bond, and Ar2 equal to a substituted C12 heteroaryl group. A device prepared in the manner of the working examples with compound 227 as the dopant material therefore satisfies all of the structural limitations of claims 9 and 10. Additionally, it can be said that the devices taught by Shin et al. satisfies all of the device limitations of claim 9, wherein the device taught by Shin et al. comprises a substrate and which has one blue pixel, thereby satisfying the device limitations of claim 9.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (CN-112225837, cited on Applicants information disclosure statement, filed on 4/7/25).
Claim 1: Wang et al. teaches the polymers of P2-71 and P2-72 on page 136. Prior to polymerization, the boron containing monomers satisfy all of the structural limitations of Formula 1 of claim 1. Such monomers have the structures
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. As applied to Formula 1, these monomers have X1 equal to B, X2 and X3 equal to S, ring A equal to an unsubstituted C6 aromatic ring (benzene in the left structure above) or equal to a substituted C6 aromatic ring (right structure above), Y1 equal to NR1, R1 equal to methyl, n and m equal to zero, and ring E equal to a substituted C6 aromatic ring (vinyl-substituted benzene).
Claim 2: The two monomers above further anticipate Formula 2-1 of claim 2 with all variable assignments being the same as in claim 1.
Claims 1, 2, and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (WO 2021/020928, cited on Applicants information disclosure statement filed on 4/7/25).
Claim 1: Kim et al. teaches polycyclic compounds which are employed as blue dopants in organic electroluminescent devices. One such compound is compound 60, which anticipates Formula 1 of claim 1 and which has the structure
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(page 395). As applied to Formula 1, compound 60 has X1 equal to B, X2 and X3 equal to NR1, both R1 groups equal to substituted C6 aryl groups (4-t-butyl-substitued phenyl and 4-t-butyl-2-phenyl-substituted phenyl), ring A equal to a t-butyl-substituted benzene ring E equal to a substituted C6 aromatic ring (p-toluene) Y1 equal to C(R2)2, both R2 groups equal to methyl, and n and m equal to zero.
Claim 2: Compound 60 further anticipates Formula 2-1 of claim 2 with all variable assignments being the same as in claim 1.
Claims 9-11: Device example 1-60 of Kim et al. is drawn to an organic light emitting device comprising a substrate, an anode, a hole injection layer, a hole transport region comprising a first and second hole transport layer, an emission layer comprising the compound BH as a host, compound 60 as a blue dopant, an electron transport region comprising a first and second electron transport layer, an electron injection layer, and a cathode. It can be said that the device taught in example 1-60 satisfies all of the limitations of claim 9, wherein the device has one blue pixel defined on the substrate. The compound BH taught in device example 1-60 is the same compound as H-3 of claim 11, and BH therefore anticipates the limitations of Formula 5 of claim 10 since claim 11 is dependent on claim 10.
Claims 1, 2, and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Geum et al. (KR-20220073182). Copies of the original and a machine translation are included with this Office action. Geum et al. has a publication date of 6/3/22, which is before Applicants filing date of 11/21/22 but after Applicants (unperfected) foreign priority date of 12/22/21. Should Applicants provide a certified English language translation of their foreign priority document KR 10-2021-0185340, this rejection would be withdrawn.
Claim 1: Geum et al. teaches the compound P-6 which has the structure
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(page 99). As applied to Formula 1, this compound has X1 equal to B, X2 and X3 equal to NR1, with both R1 equal to a substituted phenyl group, ring A equal to a substituted C6 aromatic ring (a 2,6-difluorophenylbenzene), Y1 equal to Si(R3)2 with both R3 groups equal to methyl , n and m equal to zero, and ring E equal to a methyl-substituted C6 aromatic ring (p-tolyl).
Claim 2: Compound P-6 above also anticipates Formula 2-1 of claim 2 with all variable assignments being the same as in claim 1.
Claims 9-11: Device example 29 of Kim et al. is drawn to an organic light emitting device comprising a substrate, an anode, a hole transport region, an emission layer comprising the compound BH-4 as a host, P-6 above as a blue dopant, an electron transport region, and a cathode. It can be said that the device taught in example 29 satisfies all of the limitations of claim 9 and wherein the device has one blue pixel defined on the substrate. The compound BH taught in device example 29 is the same compound as H-2 of claim 11, and BH therefore anticipates the limitations of Formula 5 of claim 10 as well as claim 11 since claim 11 is dependent on claim 10.
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 of this title, 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.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Geum et al. (KR-20220073182). While claim 3 is a dependent claim, independent claim 1 does not cover the structural embodiments of claim 3 as described in the 112(d) rejection of claim 1 above. However, for the sake of compact prosecution, the structural merits of claim 3 by itself is considered.
Geum et al. teaches the compound
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(page 12, bottom right). This compound satisfies all of the limitations of Formula 2-2 of claim 3 with X1 equal to B, X2 and X3 equal to NR3 with R3 equal to a substituted phenyl group, and ring A equal to a t-butyl-substituted benzene ring, and ring E equal to an isopropyl-substituted phenyl ring. This compound differs from Formula 2-2 of claim 3 in that the oxygen atom and the dimethyl group bonded to the ring which is bonded to the central B are in a different bonding position than Formula 2-2 of claim 3. That is to say, the boron atom and the oxygen atom bonded meta to each other with respect to the bridging phenyl ring. Claim 3 requires that the dimethyl group and the boron group be bonded meta to each other with respect to the bridging phenyl ring. However, Geum et al. teaches both type of bonding arrangements, such as, but not limited to the bonding arrangements in the first and third compounds shown on page 6. It would have been therefore been obvious to one having ordinary skill in the art to have prepared an analog of the compound above which does satisfy the bonding position of Formula 2-2 given the overall teachings of Geum et al. Aside from the teaching that both types of bonding patterns may be present in the compounds of Geum et al., in general formula 1-1 of Geum et al. on page 3, variables X1 and X2 may be independently selected from C(R2)2, O, S, and Si(R3)2 as taught on page 3. The selection of X1 equal to C(R2)2 and X2 equal to C(R2)2, O, S, or Si(R3)2 would have therefore been obvious to one having ordinary skill in the art. This includes preparing a compound analogous to the compound above but where a C(Me)2 group replaces the oxygen atom and any one of a C(R2)2, O, S, or Si(R3)2 group (or atom) is bonded at the para position to the central boron atom. One having ordinary skill in the art would have been motivated to prepare such compounds as it would be expected that such compounds would have similar properties to the compounds disclosed by Geum et al. The modifications described above represent a predictable variation to the compounds disclosed therein.
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, 2, 5, 6, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 20 of copending Application No. 17/991,465 (reference application having the pre-grant publication number US 2023/0189642). Although the claims at issue are not identical, they are not patentably distinct from each other. Compounds 1-42 and 1-45 as recited in claim 10 of the ‘465 application satisfy all of the structural limitations of Formula 1 of claim 1, Formula 2-1 of claim 2, Formula 3-1 of claim 5 and Formula 3-2 of claim 6. Further, compounds 1-42 and 1-45 as recited in claim 20 of the ‘465 application satisfy all of the device and structural limitations of claim 11.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 4 and 12-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Regarding claim 4, the prior art does not teach or fairly suggest compounds which have the central X1 atom bonded to a ring system having five fused rings as required by Formula 2-3. The closest prior art document regarding this claim is Huang et al. (CN-112278309). Huang et al. teaches compound of general formula (1) as shown in the abstract. In these compounds, n1 through n4 is taught to be equal to 0, 1, or 2. Embodiments where any one of n1 through n2 is equal to 2 would have therefore been obvious to one having ordinary skill in the art and such compounds would have a fused ring system comprising five fused rings bonded to the central atom denoted as X in Huang et al, which corresponds to X1 in Formula 2-3 of claim 4. However, the central core of Huang et al. does not read on Formula 2-3 of claim 4. Claim 4 excludes embodiments where any one or more of variables Y1, X2, and X3 may be bonded to form a ring system.
Regarding claims 12-17, the prior art references of record teach organic light-emitting devices having a single emission layer and none of the prior art references teach or fairly suggest, the additional device limitations recited in claims 12-17. Each of claims 12-17 requires specific device limitations, including two light emitting layers in sequence with both light-emitting layers comprising a compound of claim 1 separated by a charge generation layer as required by claims 12, 14 and 15, or including a yellow-green emitting or a red and green emitting second light-emitting layer separated from the first emitting material layer by a charge generation layer as required by claims 16 and 17. The device limitations recited in claims 12-17 go beyond what is reasonably taught or suggested by the prior art.
Last, while claims 8 and 18 are rejected above, they are free of any prior art rejections. The prior art fails to teach or fairly suggest the specific compounds recited in claims 8 and 18.
Relevant Art Cited
Additional prior art documents which are relevant to Applicants invention can be found on the attached PTO-892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S LOEWE whose telephone number is (571)270-3298. The examiner can normally be reached on Monday-Friday from 8 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski, can be reached at telephone number 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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/Robert S Loewe/Primary Examiner, Art Unit 1766