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 § 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) 1-4 and 7-13 is/are rejected under 35 U.S.C. 102a1 and 102a2 as being anticipated by Maier-Flaig et al (WO 2020108899 A1, US 20230058635 A1).
Maier-Flaig discloses [p8,0095,p12,p13,0098,0143,0156,0164,0168-0169] the general structure of boron compounds with units A and B:
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and specific compound of Formula E-1-1-1-1-12 comprising A-1 and B-12 units:
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. This anticipates the claim 3 compound Formula 1-120. The compound is used as a fluorescent emitter of blue light in an OLED with the claimed layer stack including transporting layers. The emitting layers include phosphorescent emitters as well, and matrix materials, i.e. hosts.
Claim(s) 1-4 and 7-13 is/are rejected under 35 U.S.C. 102a1 and 102a2 as being anticipated by Huang et al (WO 2018095397 A1, US 20200066997 A1).
Huang discloses [abstract,0032,0138,0140,p8] boron compounds with delayed fluorescence used in a light emitting layer alongside a host material in an OLED having the claimed layer stack and emission wavelength, one example having the structure:
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.
Claim(s) 1-4 and 7-13 is/are rejected under 35 U.S.C. 102a1 and 102a2 as being anticipated by Hong et al (US 20200058885 A1, WO 2018203666 A1).
Hong discloses [abstract,0118,p6-8,0049,0055,p27,0228] OLEDs with light emitting layer comprising a fluorescent emitter having the formula
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wherein L1 and L2 include single bonds and R32 includes diarylamine groups and carbazole groups:
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and a specific example including:
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wherein the emitters have a half-value width (FWHM) of 30 nm [0118].
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) 5-6 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maier-Flaig et al (WO 2020108899 A1, US 20230058635 A1) or Huang et al (WO 2018095397 A1, US 20200066997 A1) or Hong et al (US 20200058885 A1, WO 2018203666 A1).
Hong discloses an exemplified embodiment wherein the emitters have a half-value width (FWHM) of 30 nm [0118].
The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. FWHM and PLQY would inherently be achieved by a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Alternatively, the overlapping scope and similarity of the compounds of Maier-Flaig would result in compound expected to have the overlapping scope of properties such as FWHM and PLQY. So it would have been obvious to one having ordinary skill in the art at the time of the effective filing date to have prepared obvious variants of the compounds of Maier-Flaig or Huang including the claimed compounds with overlapping scope of claimed properties.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
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 1-7, 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 7 and 20 of copending Application No. 18/491206 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims disclose a light emitting diode device comprising a color conversion (light emitting) film which comprises a compound including:
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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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
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