DETAILED ACTION
Claims 1, 3, 4, 6-16 are pending in the present application.
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 .
Amendments
The amendment filed on June 22, 2026 has been acknowledged and has been entered into the present application file.
Rejections Overcome
The rejections over Xing under 35 U.S.C. 102 and 103 and the NSDP rejection over the ‘829 patent have been overcome by the response filed on June 22, 2026.
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.
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.
Claims 1, 3, 4, 6, 7 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (US PGPUB 2014/0374711).
With respect to claims 1 and 11-13, Cho et al. teaches an organic light-emitting device including a first electrode, a second electrode disposed opposite to the first electrode, and a light emitting layer including the compound
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. See paragraph 123, pages 73 and 83, especially compound 162. The compound corresponds to claims 1 and 2 where the formula is Chemical Formula 1B, L1 and L2 are single bonds, Ar1-Ar3 are phenyl rings, and all R groups are hydrogen.
Cho et al. does not teach where the
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motif is shifted by one position to yield the
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motif present in Chemical Formula 2 of claim 1 and Chemical Formula 1B of claim 2.
In the optoelectronic arts, ortho and meta substitution are adjacent homologues. The court in In re Henze (181 F.2d 196, 37 C.C.P.A. 1009, 85 U.S.P.Q. 261 (C.C.P.A. 1950)) states that “To those skilled in the chemical art, one homologue is not such an “advance” over an adjacent member of the series as requires invention, unless the beneficial properties realized in the new homologue lie clearly outside of the expectations which knowledge of his science would inform the trained chemist should be inherent in the product.” Therefore, the present claims are obvious as the person of ordinary skill in the art would be motivated to change the meta substitution of the compound above to the ortho substitution with a reasonable expectation of success.
With respect to claim 3, the resultant compound is Chemical Formula 1B-2.
With respect to claims 4-6, Ar1-Ar3 are unsubstituted phenyl rings.
With respect to claim 7, the resultant compound is compound 1-7:
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.
Claim(s) 8-10 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (US PGPUB 2014/0374711) in view of Xing et al. (CN 110776513A).
Cho et al. is relied on as described above. Cho et al. allows for additional components to be in the light emitting layer. See paragraph 6, page 1. Cho et al. does not specifically mention the second compounds required by claims 8-10 and 14-16.
Xing et al. teach the compound
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, which reads on claims 8 and 10 where the structure is a combination of Chemical Formula 4 and 5 as represented by Chemical Formula C, L5 and L6 are single bonds, Ar6 and Ar7 are substituted phenyl rings, and all R groups are hydrogen. See compound A1, page 3 and Example 1, paragraphs 87-112. Additionally, Xing et al. teach that a host compound such as
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in the light emitting layer. See compound GPH-44, paragraphs 74 and 76, pages 11-12. This compound reads on chemical formula 3-8 of claim 9 where L3 and L4 are C-1 and all R groups are hydrogen.
“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) As compounds GPH-44, A1, and A5 of Xing et al. are for use in a light emitting layer, it is obvious to combine two of the components into one composition for the same purpose.
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 1-6, 8, and 11-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 11, and 13-15 of copending Application No. 18/561,095 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The ‘095 application claims a display device having the compounds
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and
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in a light emitting layer between an anode and cathode. See claims 6 and 7, especially compound 104 in claim 6. The first compound reads on claims where the compound is of Chemical Formula 1B-3, Ar1-Ar3 are unsubstituted or substituted phenyl groups, L1 and L2 are single bonds, and all R groups are hydrogen or deuterium. For the second compound, the structure is Chemical Formula 3, m is 0, L3 and L4 are single bonds, Ar4 and Ar5 are C6 aryl groups, and all R groups are deuterium.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
On pages 23-24 of the remarks, the Applicant argues:
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However, the rejection clearly set forth that Ar1 and Ar2 are phenyl groups which are not substituted and L1 and L2 are single bonds. Additionally, the Applicant has not set forth any reasoning that the prima facie case for obviousness set forth by the Examiner is deficient. Therefore, the rejection is maintained.
On pages 25 and 26 of the remarks, the Applicant argues that the NSDP rejection over the ‘095 Application should be withdrawn as the present application has an earlier filing date. However, there are still pending art rejections on the present claims. Therefore, the NSDP rejection is not the only rejection remaining and must be maintained.
Conclusion
Claims 1, 3, 4, 6-16 are rejected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph Kosack whose telephone number is (571)272-5575. The examiner can normally be reached M-F 8:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH R KOSACK/Primary Examiner, Art Unit 3991
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