DETAILED ACTION
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 .
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 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.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in France on July 16, 2020.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Status of Claims
This action is in reply to the communication filed on January 11, 2023.
Claim 12 has been canceled.
Claims 1 – 11 and 13 are currently pending and have been examined.
Information Disclosure Statement
The references provided in the Information Disclosure Statement filed on January 11, 2023 have been considered. A signed copy of the corresponding 1449 form has been included with this office action.
Claim Objections
Claims 1, 2, 3, 4, 6, and 8 – 11 are objected to because of the following informalities:
The compounds and formulae of claims 1, 3, 4, 6 and 8 – 11 are low resolution which makes the particular variables difficult to discern.
In claim 2, there appears to be “C1” appearing in the text twice instead of the presumed “Cl” for chlorine, wherein a “one” has been entered instead of an “L”
Appropriate correction is required.
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.
Case law holds that applicant' s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant' s invention. The test for undue experimentation as to whether or not [Claimed Feature] within the scope of the claims can be used [meet the claim requirements] as claimed and whether the claims meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1 – 11 and 13, it is believed that undue experimentation would be required because:
(A) Breadth of the claims: (B) Nature of the invention:(C) State of the prior art: (D) The level of one of ordinary skill: (E) The level of predictability in the art:(F) Amount of direction provided: (G) The existence of working examples: (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:.
Claims 1 – 11 and 13 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 compounds where Y and Y’ are C-R or N, does not reasonably provide enablement for compounds where Y and Y’ are O. 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 use the invention commensurate in scope with these claims.
Claim 1 contains the Formula I
PNG
media_image1.png
338
438
media_image1.png
Greyscale
. Three bonds are required to the Y and Y’ atoms. Oxygen is commonly understood to have two valence electrons, resulting in a maximum of two bonds possible for an oxygen atom (Wands Factors C, D, and E). Applicant has not provided any examples of a compound of Formula (I) where Y and Y’ are oxygen atoms with the three bonds shown or an explanation for how a stable compound with three bonds to oxygen atoms can be formed (Wands Factors F and G).
Claims 2 – 11 and 13 are rejected as being dependent on claim 1.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suk (WO2017003188A1, using the provided machine translation).
As per claims 1 and 5, Suk teaches:
A compound of formula (I)
PNG
media_image2.png
178
234
media_image2.png
Greyscale
(Suk teaches compound A-1
PNG
media_image3.png
182
188
media_image3.png
Greyscale
([0316]), which reads on the claimed Formula wherein X and X’ are each N-R9 wherein R9 represents an aryl radical comprising 6 carbon atoms; Y and Y’ represent CRy wherein Ry is hydrogen; Rz and Rz’ are each hydrogen; R1 to R8 are a hydrogen atom
As per claim 13, Xu teaches:
A light-emitting device or light-emittign diode comprising the compounds (In Example 101 in Table 4, compound A-1 is provided in a device as claimed.)
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Suk (WO2017003188A1, using the provided machine translation) as applied to claims 1, 5 and 13 above.
As per claim 6, Suk teaches another core structure, represented by
PNG
media_image4.png
368
216
media_image4.png
Greyscale
([175]), wherein Y5 and Y10 can be selected to be carbon or nitrogen ([0190]). When the compound of Suk above is modified to include the fused phenyl ring of N-2 and a nitrogen in the Y5 and Y10 position, the modified compound reads on the claim wherein Rz and Rz’ form
PNG
media_image5.png
108
116
media_image5.png
Greyscale
and R23 – R26 are all hydrogen.
Suk includes each element claimed, with the only difference between the claimed invention and Suk being a lack of the aforementioned combination being explicitly stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of compounds suitable for decreasing driving voltage, improving efficiency and lengthening lifespan when used in organic electroluminescent devices ([0009]), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
Claims 1, 8, 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (CN107629785A. using the provided machine translation).
As per claims 1, 8, and 9, Xu teaches:
A compound of formula (I)
PNG
media_image2.png
178
234
media_image2.png
Greyscale
(Xu teaches compounds of Formula (1)
PNG
media_image6.png
140
222
media_image6.png
Greyscale
, wherein Ar1 and Ar2 can be selected from
PNG
media_image7.png
140
114
media_image7.png
Greyscale
. When both Ar1 and Ar2 are selected to be the tert-butyl substituted diphenyl amine group, the resulting compound reads on the claimed Formula wherein X and X’ are O; Y and Y’ are C-R where R is a CN group; Rz and Rz’ are both an amine group of Formula NR17R18 wherein R17 and R18 are both an aryl radical comprising 6 carbon atoms, the aryl radicals being substituted; R1, R2, R7 and R8 are a hydrogen atom, R3 and R4 form a cyclic aryl selected from the group
PNG
media_image8.png
102
118
media_image8.png
Greyscale
and R5 and R6 form a cyclic aryl selected from the group
PNG
media_image9.png
132
134
media_image9.png
Greyscale
wherein the remaining R groups are hydrogen.)
Xu includes each element claimed, with the only difference between the claimed invention and Xu being a lack of the aforementioned combination being explicitly stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of asymmetric thermally activated delayed fluorescent material with circularly polarized emission and aggregation-induced emission properties, good thermal stability and excellent luminescence performance ([0025]), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
As per claim 13, Xu teaches:
A light-emitting device or light-emitting diode comprising the compound ([0023]: “An undoped OLED device includes a substrate, a transparent conductive layer, a hole transport layer, a light-emitting layer, an electron transport layer, and a metal layer arranged sequentially, wherein the light-emitting layer is made of the aforementioned asymmetric thermally activated delayed fluorescence material.”)
Xu teaches an anode, a cathode, and an organic layer and the compound is in the organic layer as discussed above. It would have been obvious to use the compound in the organic layer with the device structure of Xu as Xu demonstrates this device structure was known prior to the effective filing date of the claimed invention.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA N CHANDHOK whose telephone number is (571)272-5780. The examiner can normally be reached on Monday through Friday from 6:30 - 3:30.
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, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNA N CHANDHOK/Primary Examiner, Art Unit 1789