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/Restrictions
Applicant’s election without traverse of Group II (Claims 21-30) in the reply filed on 4/16/2026 is acknowledged.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in South Korea on 7/13/2020. A certified copy of the KR10-2020-0086374 application was filed in PCT/KR2021/008510, to which the instant applicant is a 371, thus satisfying 37 CFR 1.55. It is noted no copy currently appears in the US file.
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.
Claims 22 and 30 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 22 states the “organic material” is more than 0.1 mm and equal to or less than 0.5 mm. However, it is unclear as to what organic material refers. Although “organic material appears in the preamble as a processed material, it has no reference point in the body of the claim, and then the size in Claim 22 has no specificity. Examiner assume anytime the organic material may have this size at any point in the process, it read on this claim.
As with 22, the organic material in Claim 30 has no connection to the process. This is presumably shaping the second material into a pellet, but not even the pulverizing itself could be shaping as in Claim 30 since it reveals the needle shape. Clarification is needed.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 21, 22, 24 and 27-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vivanco Martinez et al. (US 2020/0147089) (hereinafter “Vivanco”).
Regarding Claims 21 and 24, Vivanco a method for preparing an organic material, the method comprising:
a first step of preparing a first material including at least one kind of raw material (See page 3, paragraph [0051], wherein palbociclib and excipients, i.e. organic materials, are mixed and prepared as raw materials, i.e. two or more raw materials as in Claim 24);
a second step of obtaining a second material by pulverizing the first material (See page 3, paragraphs [0052]-[0053] and [0060], wherein the raw materials are milled, such as by hammer impact, to granulate, and note hammer impact granulating is pulverating); and
a third step of selecting a granular organic material a partial area or entire area of a surface of which has a needle shape from the second material (See page 3, paragraph [0060]-[0061], wherein the granular material is selected by mesh sizing; and wherein the granular material formed is at least a partial area with needle shapes, see Fig. 1, page 1, paragraph [0016], and page 2, paragraphs [0020]-[0024]).
Although Vivanco doesn’t disclose use in an organic electric element, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Theoretically, the granules could have been incorporated into anything. Note a device for distributing medicine, such as with an OLED display, could be an organic electric element.
Regarding Claims 22, Vivanco teaches a particle size distribution of over 250 microns, 0.25 mm, for over 30% of the particles (See page 3, paragraph [0061]), and Exmainer submits any particle having in the claimed range at any time satisfies the claim. This is clearly within the teachings of Vivanco, which discloses spanning 0.25 mm in distribution.
Regarding Claim 27-29, Vivanco teaches stacked sieves, i.e. filters, thus disposed on and spaced apart filters, to size the granules (See page 4, paragraph [0066], wherein larger sieves such as 710 microns, i.e. 0.710 mm, to small sieves such as 45 microns, i.e. 0.045 mm, are stacked, presumably, or at least obviously with sizing between, such as a sieve of less than 500 microns and more than 45 microns), an note any filtered particle on the first filter, i.e. any larger filer, may be considered organic material.
Regarding Claim 30, forming the granulate into a capsule or tablet as in Vivanco is considered shaping as claimed (See page 3, paragraph [0062]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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(s) 21 and 23-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ghosh et al. (US 2005/0056960) in view of McCormick (US 6,362,339) as evidenced by Curry et al., Morphological study of aluminum tris(8-hydroxyquinoline) thin films using infrared and Raman spectroscopy, Journal of Applied Physics 92, pgs. 1902-1905 (2002) (hereinafter “Curry”).
Regarding Claim 21, 23, 24, and 26, Ghosh et al. teaches a method for preparing an organic material for an organic electric element (See page 1, paragraph [0002], teaching preparing for an OLED display), the method comprising:
a first step of preparing a first material including two raw materials, such as a first and second or a third and fourth, by mixing, melting, and solidifying two materials (See page 2, paragraphs [0026]-[0032], note two raw material include one raw material as in claim 23, which doesn’t limit the first material to only one raw material, and using the open language “including” thus allowing for more materials as long as one is melted);
a second step of obtaining a second material by pulverizing the first material (See page 2, paragraph [0034]); and
a third step of selecting a granular organic material from the second material (See page 3, paragraph [0045], wherein the pulverized material is selected for PVD use my compacting into a pellet, i.e. shaping; note pelletizing or using in PVD is selecting as claimed, which is vague and necessarily broadly interpreted).
Ghosh et al. is silent as to a partial area or entire area of a surface of which has a needle shape from the second material. However, Ghosh et al. teaches the exact same process, intended use, and advantage as instantly claimed, i.e. eliminating outgassing for PVD source material for OLED layer formation. The instant specification also indicates needle formation occurs naturally in the particles due to the preparation method (See instant PgPub 2023/0301180, page 5, paragraph [0097]), which is generally taught as being melted under vacuum and pulverized (See id, pages 2-3, paragraphs [0037]-[0047], indicating after melting and pulverizing the needle-shape is naturally present).
Ghosh et al. teaches using Alq3, i.e. aluminum tris(8-quinolinolates), as a suitable organic material raw powder (See page 3, paragraph [0043]), which is in line with Applicant’s teaching of the organic material being polycyclic rings (See instant PgPub, page 2, paragraph [0029]). Ghosh et al. further teaches the exact same method instantly described to achieve crystal formation, i.e. melting under vacuum, solidifying, and pulverizing (See page 2, paragraphs [0026]-[0034] and page 3, paragraphs [0049]-[0050]). As such, there is strong support needle formation is inherent in Ghosh et al. since Applicant provide no further instruction other than melting under vacuum and pulverizing to cause said structure.
Further, Alq3 used in OLED application is known to exhibit needle-formation upon heating (See, for example, Curry, page 1902, Abstract and Introduction, Fig. 4 and page 1904-1905, Conclusions, teaching progressively more needle-formation in Alq3 at higher heating temperature). Examiner submits any needle structures at all on any Alq3 structures in the pulverized granules in Ghosh et al. will read on the claim as written. Examiner submits the evidence of record suggests such needle shaped surfaces as claimed are inherent both in the vacuum melting and pulverizing method and the use of Alq3, which is known to form needle structures when heated.
It is also noted Alq3 having a crystallized needle shape structure is known to be utilized as source material in vapor deposition of OLED material (See, for example, McCormick, col. 1, lines 9-18, col. 4, lines 33-36 and 65-66, and col. 6, lines 3-6, teaching crystalized needles of Alq3 are used in vapor deposition). Therefore, even assuming needle formation does not necessarily always occur when using Alq3 as in Ghosh et al., it is clear needle formation could occur via the formation techniques (since Applicant provides no detailed instruction about how to form needles other than via processes already taught in Ghosh et al.), and that crystallized needles are a suitable structure for Alq3 source material as required in Ghosh et al.
As such, it at least would have been obvious to a person having ordinary skill in the art at the time of invention to form and utilize crystalized needle structures in the pulverized Alq3 organic material. Such shapes are known to easily form via heat in the process taught therein and known as a suitable shape for organic Alq3 source material, thus making them predictably suitable as the PVD source granules in Ghosh et al. Further, as described above, Applicant provides no specific instruction on how to achieve this needle shape structure other than by utilizing processes taught in Ghosh et al., nor do they provide any evidence a needle shape structure is superior to other possible powder surface shapes following pulverizing. Thus, since the shape is clearly achievable via the methods in Ghosh et al. and shown to be suitable in the prior art for similar source material, the use of this shape is considered a suitable design choice in the granule crystalline structure. Note changes in shape are a matter of choice and are considered obvious to a person having ordinary skill in the art absent persuasive evidence that the shape is significant. In re Dailey, 357 F.2d 669 (CCPA 1966). Applicant has offered no such evidence of significance.
Regarding Claim 25, Ghosh et al. doesn’t specifically teach combining after solidifying. However, Ghosh et al. teaches melting is the important feature for outgassing, not melting while combined (See page 2, paragraph [0035]), and further indicates different melting temperature are likely between the mixed materials (See page 3, paragraph [0044]). Thus, there is no reason separate melting could not have been implemented, such as to more clearly observe each material liquifying. It is noted Applicant offers no reason to melt separately and essentially just states it is a separate way to outgas the materials (See instant PgPub, page 2, paragraphs [0024], [0035], and [0043]), the same goal in Ghosh et al. Examiner submits combining before melting or combining after melting are obvious alternatives to achieve the same purpose. The holdings in Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959), In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39, F.2d 975, 5 USPQ 230 (CCPA 1930) indicate that the selection of any order or sequence in the steps of a process is prima facie obvious in the absence of new or unexpected results. See MPEP 2144(IV)(C).
Claim(s) 22 and 27-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ghosh et al., McCormick, and Curry as applied to Claim 21, and further in view of Hayashi (US 2012/0135239).
Regarding Claims 22 and 27-30, Ghosh et al., McCormick, and Curry teach the method of Claim 21 as described above. Ghosh et al. further teaches pulverizing to an organic powder suitable for thermal PVD to produce an organic layer for an OLED (See page 2, paragraph [0034]), but it silent as to the size or any specific sizing procedure for the power. However, it would have been apparent that similar source material preparation methods for similar PVD of OLED layers would have predictably been suitable to utilize on the powder of Ghosh et al. Further, sizing to specific particle size ranges within the claimed range is well-known for similar source material in the field.
Hayashi teaches powders of similar source material for PVD (See page, 1, paragraph [0023], page 2, paragraphs [0035] and [0038], and page 7, paragraph [0049], wherein a particulate deposition material for resistance heating and flash deposition, i.e. PVD methods, includes 9-quinolinol metal complexes, of which Alq3 is one) are known to have preferred sizing up to 120 microns, or 0.12 mm, and a specific distribution for sizing uniformity achieved through milling, e.g. pulverizing, and then sieving, such as through a large filter sieve of 20-1,520 microns, i.e. 0.02-1.5 mm, and then a smaller filter sieve of 1-15 microns, i.e. 0.001-0.015 mm (See page 2, paragraphs [0024]-32] and pages 14-15, paragraphs [0139]-[0144]). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to implement similar sizing, i.e. via sieve filtering, following pulverizing in Ghosh et al. Doing so would have predictably followed standard practices for similar PVD source material to achieve desired sizes and distributions, which are well-known with the ranges claimed. Examiner submits putting the sieves on top of each other, larger on smaller, is well-known and standard in sieving (See 102 rejection above), and its clear material that passes through the large sieve and not the small sieve, is the desired material for the PVD process so as to filter out undesirable large and small particles for the uniform distribution desired.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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