DETAILED ACTION
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 (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.
Restriction/Election Requirement
The restriction/election requirement as set forth in the Requirement for Restriction/Election filed 03/04/26 is herein withdrawn.
Claims 1, 3, 4, and 6-11 are pending. No claims have been withdrawn from consideration.
Specification
The disclosure is objected to because of the following informalities: The Specification filed 02/02/23 recites chemical structures on page 79 which are all graphically unclear due to their low resolution and small size; they are barely legible. They need to be replaced by structures which are legible and of sufficient size, with all bonds and atoms that are clearly drawn (i.e., solid lines).
Appropriate correction is required.
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 1, 3, 4, and 6-11 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, Claim 1 recites the broad recitation:
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(page 3) and the claim also recites that “the monocyclic or polycyclic heteroaryl group having 2 to 60 carbon atoms including one or more Ns is a group represented by one of the following Chemical Formulae 3-1 to 3-4” (page 3) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 3, 4, and 6 are 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.
The claims, which are dependent on Claim 1, recite heterocyclic compounds of Claim 1 which all lie outside the cope of Chemical Formula 1. Notice that Chemical Formula 1 requires the presence of Ar1-(L1)a, Ar2-(L2)b, Ar3-(L3)c, Ar4-(L4)d, and Ar5-(L5)e, wherein none of Ar1-5 can be hydrogen. The Office has interpreted, based on the Applicant’s originally filed Specification and dependent claims, that some of Ar1-(L1)a, Ar2-(L2)b, Ar3-(L3)c, Ar4-(L4)d, and Ar5-(L5)e of Chemical Formula 1 need not exist for the purpose of this Examination.
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.
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.
Claims 1, 3, and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Chae et al. (KR 10-2019-0038246).
Examiner’s Note: The Office has relied upon the Machine English translation of foreign document publication KR 10-2019-0038246 (herein referred to as “Chae et al.”) as the English equivalent. Unless otherwise noted, all figure, page, and paragraph numbers referenced herein refer to numbers found in the Machine English translation.
Chae et al. discloses compounds of the following form:
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([0037] of Chae et al.) where Ar1-3 = aryl group ([0041]); an embodiment is disclosed:
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(first compound) (page 32) such that d = 0, Ar4 = Applicant’s Chemical Formula 3-1 (with X1 = X3 = X5 = N, R2 = unsubstituted aryl having 6 carbon atoms (phenyl), and R4 = substituted aryl having 6 carbon atoms (substituted phenyl, where substituent = (substituted) aryl having 6 carbon atoms (phenyl))), and p = 0 of Applicant’s Chemical Formula 1. However, Chae et al. does not explicitly disclose an embodiment that fully reads on the Applicant’s formula. Nevertheless, it would have been obvious to modify 2-4 as disclosed by Chae et al. (above) such that any one of Ar1-(L1)a, Ar2-(L2)b, and Ar3-(L3)c = unsubstituted aryl group having 12 carbon atoms (biphenyl) of Applicant’s Chemical Formula 1 and Chemical Formulae 1-1 or 1-2 (with a = b = c =0). The motivation is provided by the fact that the modification merely involves change in the substitution position of the biphenyl group on the fused benzene ring, producing a positional isomer that can be expected to have highly similar chemical and physical properties; further motivation exists, including the fact that the modification merely involves the selection of one possible embodiment selected from a highly finite list (with respect to the substitution position of the biphenyl group as envisioned from the scope of Chae et al.’s general formula), thus rendering the production predictable with a reasonable expectation of success.
Chae et al. further discloses an organic electroluminescent (EL) device comprising the following layers: substrate (110), anode (120), hole-injecting layer (130), hole-transporting layer (140), buffer layer (141), light-emitting auxiliary layer (151), light-emitting layer (150), electron-transporting layer (160), electron-injecting layer (170), and cathode (180) (Fig. 1); its inventive compounds serve as host material in the light-emitting layer ([0028]). The host material can be a mixture, further comprising the following compound ([0030]):
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(second compound) (page 39).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY L YANG whose telephone number is (571)270-1137. The examiner can normally be reached Mon-Fri, 6am-3pm.
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/JAY YANG/Primary Examiner, Art Unit 1786
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