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(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 is indefinite because compound Nos. 89-167, 169-172, 177-184, 186-196 and 201-204 lack positive antecedent basis in parent claim 1’s formula 1, which, as noted below, has a carbon atom at the annotation arrow:
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176
184
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.
Instead of a carbon atom, compound Nos. 89-167, 169-172, 177-184, 186-196 and 201-204 have an oxygen atom or sulfur atom.
In claim 14, compound Nos. 89 and 177 are identical. It is suggested that one of them be removed.
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 14 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.
Claim 14 is in improper dependent form for failing to further limit claim 1, whose chemical formula 1, reproduced below, has a carbon atom at the annotation arrow:
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176
184
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.
Instead of a carbon atom, compound Nos. 89-167, 169-172, 177-184, 186-196 and 201-204 have an oxygen atom or sulfur atom.
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 § 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 14 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/262853 A1 to Park et al (hereinafter “Park”).
Park, which is in Korean, is cited in the Information Disclosure Statement (IDS) filed 12/30/2022. A machine English translation of Park accompanies the instant Office action and is hereinafter referred to below. The first page of the translation starts with the Abstract page. The remaining pages are the second, third, etc. The Park translation does not provide compound structures. The compound structures in Park cited below are obtained from the copy of Park in said IDS.
Park teaches compounds capable of lowering a driving voltage and improving luminous efficiency and lifetime of an organic electric device (see Abstract and the second and third pages of the translation). Park’s compounds have the following general formula:
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238
292
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wherein X is O or S, and the R groups and subscripts are defined on the ninth page of the translation (see also ¶ 87 in the copy of Park in the IDS). Park further teaches a more limited genus of the general formula:
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136
158
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in which -L1-Ar1 is:
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108
86
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,
and wherein the Z1 to Z8 are either N or C(R1), and wherein R1 is preferably a C6 to C18 aryl group (see the eleventh page of the translation and ¶¶ 111 and 119-120 in the copy of Park in the IDS).
An exemplary compound in Park is compound P-6, reproduced below from p. 16 in the copy of Park in the IDS, alongside instant compounds 92 and 180, which are similar to P-6:
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182
142
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130
140
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116
134
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. .
Park’s compound P-6 differs from compounds 92 and 180 since said R1 groups are phenyl and phenylene-naphthyl in compound 92 and 180, whereas the R1 groups in P-6 are phenyl and naphthyl. Also, P-6 has a sulfur atom instead of an oxygen atom at said X position for compound 92.
Other instant compounds similar to P-6 that differ in said R1 groups and/or use of oxygen instead of sulfur at the X position include the following:
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124
152
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166
152
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128
124
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122
162
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142
124
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and
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120
142
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.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the R1 groups in Park’s compound P-6 with those present in the above-noted instant compounds with the goal of preparing compounds within the scope of Park’s disclosure having preferred R1 groups that are C6 to C18 aryl, wherein the compound is capable of lowering a driving voltage and improving the luminous efficiency and lifetime of the organic electric device, as taught by Park. Likewise, the instant specification has a similar goal of improving the light-efficiency and service life of an electronic device using the instant compound (see ¶ 006). It further would have been obvious to have replaced the sulfur atom in compound P-6 with an oxygen atom because, as noted above, Park teaches that X is O or S.
Allowable Subject Matter
Claims 1-13, 15 and 16 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: CN 114085228 A teaches compounds such as the following compound reproduced below from p. 8:
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178
182
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.
However, this compound has too many fused rings in the main fused ring system compared to the instant compound.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN D DIAMOND whose telephone number is (571)272-1338. The examiner can normally be reached Monday through Thursday 5:30 am to 3:00 pm, and Fridays from 5:30 am to 9:30 am.
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Signed:
/ALAN D DIAMOND/Primary Examiner
Art Unit 3991