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 .
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 1-15, 17, and 22-32 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.
Claim 1 recites the following limitations:
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It is unclear what these limitations mean concerning “a benzene ring” “one benzene ring” and “the other benzene ring” and what bonding is limited and how. The Office is unable to determine what this limitation means without clear labeling or antecedent basis. Each compound claimed has several benzene rings and the ambiguous reference here renders these claims indefinite. For the purpose of the Application of prior art, the claims will be interpreted such that this limitation is not present. Clarification is required.
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, 3, 6-8, 10, 12-14, 17, and 22-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yabunouchi (US 2010/0001636) (Yabunouchi).
In reference to claims 1, 3, 6, 8, 10, 12-14, 17, and 22-24, Yabunouchi teaches a compound as shown below that reads on the instant claims (p 54).
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For Claim 1: Reads on formula (1) wherein A* is bonded to R2, L1 is a bond, B* is bonded to R3, Ar is 1-a wherein m1 and n1 are each 1.
For Claim 3: Reads on 1-3.
For Claim 6: Reads on formula 1-3-1.
For Claim 8: Reads on formula 1-1a.
For Claim 10: Reads on formula 1-3a.
For Claim 12: Reads on optionally not present.
For Claim 13: Reads on unsubstituted.
For Claim 14: Reads on unsubstituted.
For Claim 17: Reads on hydrogen.
For Claim 22: Reads on compound 4.
For Claim 24: Reads on a material.
In reference to claim 23, Yabunouchi teaches the compound above. While Yabunouchi does not expressly state that the compound comprises a deuterium atom, given the natural abundance of deuterium, any prepared amount of this material would necessarily comprise at least one deuterium atom on many of the molecules in a given sample.
In reference to claim 7, Yabunouchi teaches a compound as shown below that reads on the instant claims (p 55).
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Reads on formula (1-3-2) wherein Ar is 1-b wherein L2 is a biphenyl and each R is hydrogen.
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 2, 4-5, 9, 11, 15 and 25-32 are rejected under 35 U.S.C. 103 as being unpatentable over Yabunouchi (US 2010/0001636) (Yabunouchi).
In reference to claims 2, 4, 9, and 11, Yabunouchi teaches a compound as shown below that is a positional isomer of the instantly claimed compounds (p 54).
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Yabunouchi teaches that the position of bonding of the aryl groups can be at any of the possible positions of the rings (see e.g. formula 2 [0027])
Furthermore, it is noted that compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USP Q 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). In light of the case law cited above, it therefore would have been obvious to one of ordinary skill in the art that the compound disclosed in the present claims is but an obvious variant of the compound presently claimed, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
In reference to claim 5, Yabunouchi teaches a compound as shown below that is a positional isomer of the instantly claimed compounds (p 55).
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Yabunouchi teaches that the position of bonding of the dibenzofuran to Ar4 can be at any of the four possible positions of the dibenzofuran ring (see e.g. formula 2 [0027]).
Furthermore, it is noted that compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). In light of the case law cited above, it therefore would have been obvious to one of ordinary skill in the art that the compound disclosed in the present claims is but an obvious variant of the compound presently claimed, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
In reference to claim 15, Yabunouchi teaches an aromatic amine derivative of formula (1) as shown below [0026],
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for example, wherein in the formula (1), Ar1 is a formula (2) [0027], Ar4 is meta phenylene [0060], Ar2 is a group of formula (3) [0029] wherein R3 and R4 are fused to form a 9.9-dimethylfluorenylene group [0066], and Ar3 is a naphthyl substituted phenyl [0069].
Yabunouchi discloses the aromatic amine derivative of formula (1) that encompasses the presently claimed compound, including wherein in the formula (1), Ar1 is a formula (2), Ar4 is meta phenylene, Ar2 is a group of formula (3) wherein R3 and R4 are fused to form a 9.9-dimethylfluorenylene group, and Ar3 is a naphthyl substituted phenyl. Each of the disclosed substituents from the substituent groups of Yabunouchi are considered functionally equivalent and their selection would lead to obvious variants of the aromatic amine derivative of formula (1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, in the absence of unexpected results, to have selected these substituents among those disclosed for the aromatic amine derivative of formula (1) to provide the compound described above, which is both disclosed by Yabunouchi and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
In reference to claims 25-32, Yabunouchi teaches the compound as shown above for claim 1 and further teaches it is used in an organic electroluminescence device comprising an anode, a cathode, and organic layers between including a hole injecting layer, a hole transporting layer, a light emitting layer and an electron injecting layer (See e.g. [0100]) and wherein the compound is used in the hole transport layer (abstract) and wherein the light emitting layer comprises a fluorescent or phosphorescent material ([0129]).
While Yabunouchi does not exemplify a device with this specific material included, this is the taught preferred use of the material disclosed therein. It would have been immediately obvious to the ordinarily skilled artisan before the effective filing date of the instant application to have used the material of Yabunouchi in the device of Yabunouchi with the expectation of providing a functional light emitting device as described therein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean M DeGuire whose telephone number is (571)270-1027. The examiner can normally be reached Monday to Friday, 7:00 AM - 5:00 PM.
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, Jennifer A. Boyd can be reached at (571) 272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sean M DeGuire/Primary Examiner, Art Unit 1786
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