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 .
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.
Claim 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5-14 of copending Application No. 19141159 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims disclose the compounds 28 and 29:
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as well as the same host compounds [claim 10] and organic light emitting device [claims 11-14].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102a1 and 102a2 as being anticipated by Kim et al (US 20230183200 A1, as well as WO 2021230653 A1).
Kim discloses OLEDs having the claimed layer stack [0080] and flat panel displays using the OLEDs [0015] wherein an exemplified compound A206 reads on the compound 53 of claim 3:
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[Example 41, p54].
Kim also discloses a specific host of claim 8:
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.
Claim(s) 1-2, 4-7, 10-11 is/are rejected under 35 U.S.C. 102a1 and 102a2 as being anticipated by WO’049 (WO 2020251049 A1).
WO’049 discloses [abstract, claims, examples, Fig. 1, Table 7 p885] electroluminescent devices such as OLEDs and consumer products thereof including flat panel displays, wherein the OLEDs have a BNN compound in a light emitting element:
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[p845]. OLED luminescent layers include anthracene-based host compounds [0815, p647-648, p672 et seq] and the examples include the anthracene hosts such with the same structure, for example [p862-863]:
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.
Claim(s) 1-2, 4-8, 10-11 is/are rejected under 35 U.S.C. 102a1 and 102a2 as being anticipated by Cho et al (US 20230075017 A1).
Cho discloses and exemplifies the compound 36, below, as well as anthracene based host materials used in OLEDs:
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[p496].
OLED luminescent layers include anthracene-based host compounds [p353 et seq] and the examples include the anthracene hosts such with the same structure
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.
Claim(s) 3, 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO’049 (WO 2020251049 A1).
Regarding claim 3 and 9, the BNN dopant (1F-112) cited above and the other dopants of WO’049 disclose the same structure and substituent groups as the claimed dopants, e.g. t-butyl, diphenylamine, condensed aromatic and cycloalkyl groups, and others. Claimed compounds 52, 54, 57 and 60, for example demonstrate the same substituents as to WO’049 [p845 for example]
Regarding claim 8, the anthracene hosts of the examples and general disclosure of WO’049 include the same groups as the claimed hosts.
The disclosed and corresponding compounds include the same types of generic structures as well as specific embodiments with the same core groups (BNN and anthracene) and substituents, used in the same capacity and arranged just as in the claimed compounds, and made by similar methods.
The claimed BNN dopant and host compounds and the claimed combination of the two would have been obvious to one having ordinary skill in the art before the effective filing date of Applicant’s invention because the skilled artisan would have expected the claimed dopants and hosts and disclosed dopants and hosts to have similar and overlapping if not indistinguishable properties based on the structural similarities of the compounds. Case law confirms that a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991).
If Applicant argues that the claimed embodiments are not disclosed with sufficient specificity and that examiner is picking and choosing with improper hindsight, Examiner notes that the rejection is made under 35 USC 103 obviousness. The claims are certainly obvious over the combination of elements disclosed. It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have prepared the claimed combination of elements from the disclosure of WO’049 because each of the claimed elements is disclosed and used in the same capacity, and the skilled artisan would only need to choose between the disclosed options without any modification to the teachings of WO’049.
Case law confirms that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Claim(s) 3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al (US 20230075017 A1).
Similar to WO’049 above, Cho discloses similar compound to claim 3, disclosing the same core structures and substituents arranged as in the claims.
The claimed BNN dopant compounds would have been obvious to one having ordinary skill in the art before the effective filing date of Applicant’s invention because the skilled artisan would have expected the claimed dopants and disclosed dopants to have similar and overlapping if not indistinguishable properties based on the structural similarities of the compounds.
Regarding claim 9, sthe max emission wavelength of exemplifeid compounds in Cho is as low as 458 and 459 nm [1042, Table 2]. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Claim(s) 1-2, 4-11 is/are rejected under 35 U.S.C. 102a1 and 102a2 as being anticipated by WO’676 (WO 2020054676 A1).
WO’676 discloses [see English Translation Written Opinion of the ISA, attached, and ISR submitted by Applicant] electroluminescent devices such as OLEDs and consumer products thereof including flat panel displays, wherein the OLEDs have a BNN compound in a light emitting element with the generic and specific formulae:
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[2-1A-254],
and WO’676 teaches that the X1 or X2 can be an NR group having R as heterocyclic group, wherein the heterocyclic group includes dibenzofuran or dibenzothiophene. The compound may have a max value of blue light emission waveleght of 450-500nm [0601].
WO’676 also discloses the specific host compounds also in present claim 8:
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[p455, 3-560, 3-571].
Relevant Prior Art
WO’676 (WO 2020054676 A1) does not make obvious claim 3. WO’676 does not disclose any specific compounds that have the claimed formula A-1 or A-2 as well as the structural formula 1 dibenzothiophene or dibenzofuran group. Since the rejection of the generic claims relies on the generic disclosure of the dibenzothiophene or dibenzofuran group as a substituent among a long list of options to meet claimed Structural Formula 1, and the generic structure and specific embodiment (see below) to meet the claimed formula A-1 or A-2, it would require excessive hindsight on the part of the office to combine disparate disclosures of the core structures and substituents required by claim 3:
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[2-1A-254].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm M-F.
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, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/ Primary Examiner, Art Unit 1766
Prosecution Insights