DETAILED ACTION
This Office Action is in response to the Applicant’s Amendment filed 08/27/26.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The objection to the Drawings and the disclosure as set forth in the Non-Final Rejection filed 06/04/26 is overcome by the Applicant’s amendments.
The objection to the disclosure (in regards to illegible graphics) as set forth in the Non-Final Rejection filed 06/04/26 is overcome by the Applicant’s amendments.
The objection to Claims 7 and 15 as set forth in the Non-Final Rejection filed 06/04/26 is overcome by the Applicant’s amendments.
The rejection of Claims 3, 11, and 17 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 as set forth in the Non-Final Rejection filed 06/04/26 is overcome by the Applicant’s amendments.
Claim Objections
Claim 9 is objected to because of the following informalities:
The claim recites the following: “. . . according to claim 1as a phosphorescent . . .” which should be replaced by “. . . according to claim 1 as a phosphorescent . . .” (i.e., with spacing).
Appropriate correction is required.
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 2, 4, 8, 11, and 12 of copending Application No. 17/926,969 (reference application) (herein referred to as “Li et al.”). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Li et al. claims the following compound:
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(Claim 8); such compounds are encompassed by the following formula:
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(Claim 1) where Ar = substituted or unsubstituted aryl containing 6-12 carbon atoms (Claim 2) (which includes well-known groups in the art such as phenyl and naphthyl) and R6 = R8 = independently t-butyl or isobutyl (Claim 4) (which can be readily exchanged for the chemical groups present in compound 10 during the normal course of experimentation). Li et al. further claims an organic electroluminescent (EL) device (OLED) comprising the following layers: anode, hole-injecting layer, hole-transporting layer, light-emitting layer, hole-blocking layer, electron-transporting layer, electron-injecting layer, and cathode (Claim 11); its inventive complexes are present in the light-emitting layer (Claim 12).
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)(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, 2, 4, 5, 7-10, 12, 13, 15, 16, 18, and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Li et al. (WO 2021/238623 A1).
Examiner’s Note: The Office has relied on national phase publication US 2023/0200210 A1 as the English equivalent of foreign document publication WO 2021/238623 A1 (herein referred to as “Li et al.”). Unless otherwise noted, all figure, page, and paragraph numbers referenced herein refer to numbers found in the national phase publication.
Li et al. discloses an organic electroluminescent (EL) device (OLED) comprising the following layers: substrate (10), anode (20), hole-injecting layer (30), hole-transporting layer (40), light-emitting layer (50), electron-transporting layer (60), electron-injecting layer (70), and cathode (80) (Fig. 1). Li et al. discloses compounds such as the following as dopant material (in the light-emitting layer) ([0006], [0126]):
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(page 3) such that R17 = R19 = unsubstituted alkyl containing 4 carbon atoms (t-butyl), R1 = R3-7 = R9-16 = R18 = R20-24, and A0 = hydrogen, R2 = bonded to R8 by a C-C bond, and Ar = unsubstituted aryl containing 6 carbon atoms (phenyl) of Applicant’s formula (I); corresponds to 1 as recited in Claim 7. The complexes are formed with addition of metal Pt to the hydroxide ligand derivative (page 13) (such that the precursor corresponds to Applicant’s formula (II)).
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 3, 6, 11, 14, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (WO 2021/238623 A1).
Examiner’s Note: The Office has relied on national phase publication US 2023/0200210 A1 as the English equivalent of foreign document publication WO 2021/238623 A1 (herein referred to as “Li et al.”). Unless otherwise noted, all figure, page, and paragraph numbers referenced herein refer to numbers found in the national phase publication.
Regarding Claims 3, 11, and 17, Li et al. discloses the bivalent platinum complex of Claim 2 as shown above. The compound is shown below:
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(page 3). Li et al. discloses that its inventive compounds are encompassed by the following formula:
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([0007]) where Ar = aryl containing 6-12 carbon atoms ([0015]). Li et al. discloses compounds such as the following as dopant material (in the light-emitting layer) ([0006], [0126]); the complexes are formed with addition of metal Pt to the hydroxide ligand derivative (page 13) (such that the precursor corresponds to Applicant’s formula (II)). However, Li et al. does not explicitly disclose an embodiment that fully reads on the limitations of Claim 3, particularly in regards to the nature of the Ar group. Nevertheless, it would have been obvious to modify compound 10 as disclosed by Li et al. (above) such that Ar = unsubstituted fused aryl containing 10 carbon atoms (naphthyl) of Applicant’s formula (I). The motivation is provided by the fact that the modification merely involves an exchange of one group for a functional equivalent (another aryl well known in the art, i.e., naphthyl) selected from a highly finite list as taught by Li et al. as viable aryl groups for Ar (containing 6-12 carbon atoms only), thus rendering the production predictable with a reasonable expectation of success.
Regarding Claims 6, 14, and 20, Li et al. discloses the bivalent platinum complex of Claim 5 as shown above. The compound is shown below:
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(page 3). Li et al. discloses that its inventive compounds are encompassed by the following formula:
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([0007]) where R1-17 = independently hydrogen or alkyl containing 1-20 carbon atoms ([0009]); the latter includes groups such as t-butyl and isobutyl ([0018]). Li et al. discloses compounds such as the following as dopant material (in the light-emitting layer) ([0006], [0126]); the complexes are formed with addition of metal Pt to the hydroxide ligand derivative (page 13) (such that the precursor corresponds to Applicant’s formula (II)). However, Li et al. does not explicitly disclose an embodiment that fully reads on the limitations of Claim 6, particularly in regards to the nature of the R17 and R19 groups. Nevertheless, it would have been obvious to modify compound 10 as disclosed by Li et al. (above) such that R17 = R19 = isobutyl of Applicant’s formula (I). The motivation is provided by the fact that the modification merely involves an exchange of one group for a functional equivalent (another alkyl, i.e., isobutyl) of the same number of carbon atoms selected from a highly finite list as taught by Li et al. as viable (alkyl) groups for R17 and R19, thus rendering the production predictable with a reasonable expectation of success.
Response to Arguments
Applicant’s arguments (pages 17-18) with respect to the deficiencies of the previously stated rejection have been fully considered and are persuasive in view of the newly amended claims. Hence, the rejection has been withdrawn.
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
