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 .
Election of Species
Applicant’s election of the following compounds in the reply filed on 17 March 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the Election of Species requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)):
(A) the 1st host material of formula (11X)
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270
382
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;
(B) the 1st organic material of formula (23)
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202
387
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;
(C) the 1st dopant material of formula (6)
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176
388
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;
(D) the 2nd host material of formula (3)
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247
388
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; and
(E) the 2nd dopant material of formula (6)
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176
388
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.
Claim Rejections - 35 USC § 112(a)
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 1-5 and 13-29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an organic electroluminescent device characterized by comprising a first emitting layer comprising a first host material represented by a compounds of formula (1), (11X), (12X), (13X), or (14X), a first organic material represented by a compound of formula (21), (22), (23), (24), (25), (26), (27), or (28), and a first dopant material represented by a compound of formula (4), (5), (6), (7), (8), (9), or (10), and a second emitting layer comprising a second host material represented by a compound of formula (1), (11X), (12X), (13X), (14X), (21), (22), (23), (24), (25), (26), (27), or (28), and a second dopant material represented by a compound of formula (4), (5), (6), (7), (8), (9), or (10), does not reasonably provide enablement for an organic electroluminescent device comprising a first emitting layer comprising a first host material, a first organic material, and a first dopant material, and a second emitting layer comprising a second host material and a second dopant material, wherein each of said first host material, first organic material, first dopant material, second host material and second dopant material are identified only by their relation to each other satisfied by numerical formulae, i.e., the triplet energy of each of the first host material and the first organic material are greater than that of the second host material, the triplet energy of the first dopant material is greater than that of the first host material, and the singlet energy of each of the first host material and the first organic material are greater than that of the first dopant material. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims, especially when factoring into consideration the breadth of the claims, the minimal amount of direction provided by the inventor, the lack of working examples, and the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The organic electroluminescent device of claim 1 is characterized by comprising
“the first host material, the first organic material, the second host material, the first dopant material, and the second dopant material satisfy relationships of Numerical Formula 1, Numerical Formula 2, Numerical Formula 3, Numerical Formula 5 and Numerical Formula 6” with no further description of the aforementioned listed materials. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue”.
While not everything necessary to practice the invention need be disclosed, there is an unreasonable correlation between the scope of the protection sought by the breadth of the claims and the limited scope discussed in the specification. The specification is missing information about more than one essential part of the claimed invention which would enable one skilled in the art could to develop it without undue experimentation. With limited and in some case without, any guidance in the specification as to the selection of the essential materials constituting the first and second light emitting layers of the claimed organic electroluminescence device, i.e., each of the a first host material, a first organic material, a first dopant material, a second host material and a second dopant material which would enable the claimed organic electroluminescence device to meet the resulting limitations of the recited Numerical Formulae, other than the specific formulae discussed, a person skilled in the art would not be able to select each a first host material, a first organic material, a first dopant material, a second host material and a second dopant material to satisfy the recited Numerical Formulae, without undue experimentation. As it is, the first host material selected from 5 different formulae containing multiple species therein, the first organic material selected from 8 different formulae containing multiple species therein, the first dopant material selected from 7 different formulae containing multiple species therein, the second host material selected from 13 different formulae containing multiple species therein, and the second dopant material selected from 7 different formulae containing multiple species therein, results in tens of thousands possible combinations. The teaching in the specification as originally filed, i.e., “a first host material represented by a compounds of formula (1), (11X), (12X), (13X), or (14X), a first organic material represented by a compound of formula (21), (22), (23), (24), (25), (26), (27), or (28), and a first dopant material represented by a compound of formula (4), (5), (6), (7), (8), (9), or (10), and a second emitting layer comprising a second host material represented by a compound of formula (1), (11X), (12X), (13X), (14X), (21), (22), (23), (24), (25), (26), (27), or (28), and a second dopant material represented by a compound of formula (4), (5), (6), (7), (8), (9), or (10)”, are narrow compared to the broad breadth of the claims, i.e., wherein each of said first host material, first organic material, first dopant material, second host material and second dopant material are identified only by their relation to each other satisfied by numerical formulae, i.e., the triplet energy of each of the first host material and the first organic material are greater than that of the second host material, the triplet energy of the first dopant material is greater than that of the first host material, and the singlet energy of each of the first host material and the first organic material are greater than that of the first dopant material. In In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993), the court stated that "naturally, the specification must teach those of skill in the art ‘how to make and use the invention as broadly as it is claimed.’" Id. at 1050, 29 USPQ2d at 2013. While limitations and examples in the specification do not generally limit what is covered by the claims, the specification, as originally filed, does not teach the compounds other than those of the aforementioned formulae, which would enable the claimed organic electroluminescence device comprising them to meet the limitations of the recited Numerical Formulae.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-29 are 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 1 is rejected as being vague and indefinite when it recites:
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(emphasis added); the scope of the protection sought by each recitation of “…” is not clear. Claim 1 fails to particularly point out and distinctly claim the Numerical Formulae 1 through 3, 5, and 6 for the compounds contained in the claimed organic electroluminescence device.
Claim 2 similarly fails to particularly point out and distinctly claim the Numerical Formula 4 when it recites
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47
464
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.
Claim 3 similarly fails to particularly point out and distinctly claim the Numerical Formulae 7 and 8 when it recites
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108
700
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.
Claim 5 similarly fails to particularly point out and distinctly claim the Numerical Formula 9 when it recites
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51
488
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.
Claim 13 similarly fails to particularly point out and distinctly claim the Numerical Formula 11 when it recites
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47
560
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.
Claim 18 similarly fails to particularly point out and distinctly claim the Numerical Formula 12 when it recites
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40
417
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.
Claim 19 similarly fails to particularly point out and distinctly claim the Numerical Formula 13 when it recites
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40
422
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.
Claim 1 is rejected as being vague and indefinite when it recites “the first host material, the first organic material, the second host material, the first dopant material, and the second dopant material satisfy relationships of Numerical Formula 1, Numerical Formula 2, Numerical Formula 3, Numerical Formula 5 and Numerical Formula 6 below”
(emphasis added); the scope of the protection sought is not clear since none of the triplet energy values and/or the singlet energy values contained in the Numerical Formulae 1 through 3, 5, and 6 are for the “second” dopant material. Claim 1 fails to particularly point out and distinctly claim the Numerical Formulae 1 through 3, 5, and 6 for the second dopant material contained in the claimed organic electroluminescence device when it is different from the first dopant material.
Claim 3 is rejected as being vague and indefinite when it recites the Numerical Formulae 7 and 8, i.e.,
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718
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; the scope of the protection sought is not clear since claim 3 is drawn to an organic electroluminescence device, and the definitions of HWF(H1) and HWF(H2) are based on the photoluminescence spectrum of a film of the respectively first host and first organic materials, and the definitions of HWS(H1) and HWS(H2) are based on the photoluminescence spectrum of a solution of the respectively first host and first organic materials.
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 1-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 11,489,128. Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to an organic electroluminescence device characterized by comprising
an anode, a cathode, a first emitting layer, and a second emitting layer, wherein the first emitting layer and the second emitting layer are disposed between the anode and the cathode, the first emitting layer comprises a first host material, a first organic material, and a first dopant material, the second emitting layer comprises a second host material and a second dopant material, and wherein the triplet energy of the materials meets the same relational formulae.
Claims 1-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-41 of copending Application No. 18/009,235 (corresponding to U.S. Patent Application Publication No. 2023/0263001). Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to an organic electroluminescence device characterized by comprising an anode, a cathode, a first emitting layer, and a second emitting layer, wherein the first emitting layer and the second emitting layer are disposed between the anode and the cathode, the first emitting layer comprises a first host material, a first organic material, and a first dopant material, the second emitting layer comprises a second host material and a second dopant material, and wherein the triplet energy of the materials meets the same relational formulae.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: U.S. Patent Application Publication No. 2023/0240133, which is the pre-grant publication corresponding to the present application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark F Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737
Prosecution Insights