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 .
DETAILED ACTION
Claims 1-44 are pending in the application. Claims 25-29, 33 and 35 are rejected. Claims 1-24, 30-32, 34 and 36-44 are withdrawn from further consideration.
Election/Restrictions
Applicant's election with traverse of the species BH-11 and BD-1 to prosecute the invention of Group II, claims 11-44 in the reply filed on November 10th, 2025 is acknowledged. The traversal is on the ground(s) that “examination of both Groups I-II would not be a serious search burden.” This is not found persuasive because burden of search is not a factor under unity of invention practice.
The requirement is still deemed proper and is therefore made FINAL.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species are not allowable. MPEP 803.02 states:
Following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability. […]
If the Markush claim is not allowable, the provisional election will be given effect and examination will be limited to the Markush claim and claims to the elected species, with claims drawn to species patentably distinct from the elected species held withdrawn from further consideration. […]
If on examination the elected species is found to be anticipated or rendered obvious by prior art, the Markush claim and claims to the elected species will be rejected, and claims to the nonelected species will be held withdrawn from further consideration.
As the elected species have been found not allowable, the Markush-type claims have been rejected and claims to the nonelected invention held withdrawn from further consideration. Claims 25-29, 33 and 35 embrace the elected species and are therefore under examination. Claims 25-29, 33 and 35 have been examined to the extent that they are readable on the elected embodiment. Since the elected species are not allowable, subject matter not embraced by the elected embodiment is therefore withdrawn from further consideration.
While the elected species is not allowable, additional subject matter was found to be obvious in view of the prior art and is cited below in the interest of compact prosecution. The scope of the additional subject matter includes devices where (in the compound of formula (IB)) Ar1B is phenyl having one to five deuterium, L1B and L2B are single bonds, R101B is bound to L2B by a single bond and either R105B and R106B or R106B and R107B are taken together to form benzene and all remaining R variables are hydrogen and where the compound of formula (41) is Applicant’s elected species. Similarly, an issue under 112(d) was discovered incidental to the examination above and is presented below.
Claims 1-24, 30-32, 34 and 36-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species or invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 10th, 2025.
Priority
This application is a 35 U.S.C. 371 National Stage Filing of International Application No. PCT/JP2021/042208, filed November 17th, 2021, which claims priority under 35 U.S.C. 119(a-d) to JP2021-163838, JP2020-202018, JP2020-202149, and JP2020-202119, filed October 5th, 2021 or December 4th, 2020
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement(s) filed on February 3rd, 2025, October 23rd, 2024 and July 12th, 2023.
Specification
The amendment filed May 26th, 2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “The contents of these applications are hereby incorporated by reference in their entireties” with respect to the foreign priority documents.
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Applicant is directed to MPEP 211.02 (I), which particularly addresses incorporation by references filed after a filing date as follows:
For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 119(e) or 120 and 37 CFR 1.78 for benefit of a prior-filed provisional application, nonprovisional application, or international application designating the United States that was present on the filing date of the continuation or divisional application, or the nonprovisional application claiming benefit of a prior-filed provisional application, is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(a). The purpose of 37 CFR 1.57(a) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. See MPEP §201.06 and 201.17. However, applicants are encouraged to provide in the specification an explicit incorporation by reference statement to the prior-filed application(s) for which benefit is claimed under 35 U.S.C. 119(e) or 120 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(a). See 37 CFR 1.57(b). Se MPEP §§ 201.17 and 608.01(p).
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When a benefit claim is submitted after the filing of an application, and the later-filed application as filed did not incorporate the prior-filed application by reference, applicant cannot add an incorporation by reference statement of the prior application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). See also 37 CFR 1.57(a).
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In the instant application, the incorporation by reference statement is being added after the application's filing date (PCT filing date of November 17th, 2021) which is after September 21st, 2004 when there was a rule change. Therefore, the “incorporation by reference” being added to the specification per the Amendment filed May 26th, 2023 is deemed new matter.
Claim Objections
Applicant is advised that should claim 26 be found allowable, claim 27 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 28 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Parent claim 25 recites “the adjacent two of R101B to R108B form a substituted or unsubstituted benzene ring by bonding with each other.” There is no language to permit that (according to claim 28) multiple “sets of the adjacent two or more of R105B to R108B form a substituted or unsubstituted benzene ring by bonding with each other.” Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 25-29 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/209307 A1 by Itoi et al. (or alternatively U.S. Patent PGPub No. 2022/0173335 A1 by Itoi et al., which is an English equivalent and will be referred to herein) in view of U.S. Patent PGPub No. 2021/0020842 A1 by Han et al.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Itoi et al. teach an “organic electroluminescence device comprising [0010] a cathode, [0011] an anode, and [0012] an emitting layer disposed between the cathode and the anode, wherein [0013] the emitting layer comprises [0014] one or both of a compound represented by the following formula (1A) and a compound represented by the following formula (1B) and [0015] one or more compounds selected from the group consisting of a compound represented by the following formula (11), a compound represented by the following formula (21), a compound represented by the following formula (31), a compound represented by the following formula (41), a compound represented by the following formula (51), a compound represented by the following formula (61), a compound represented by the following formula (71), and a compound represented by the following formula (81)…”. The prior art teaches the following structures (1A) and (1B) on page 1:
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Itoi et al further teach the following formula (41) on page 3:
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The prior art generally teaches an overlapping device having the instantly claimed device structure of claim 25 of a cathode and anode and an emitting layer between the cathode and anode where the prior art formulae (1A) and (1B) correspond to instant formula (1B) and the prior art formula (41) corresponds to instant formula (41).
As a device example, the prior art teaches Example 8 on page 332 comprising BH-2 and BD-7 having the following structures:
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The structure of formula BD-7 is embraced by instant formula (41) where L401 and L402 are NR401 where R401 are each substituted aryl having 6 ring carbon atoms, L403 is B and rings a, and c are substituted aromatic hydrocarbon rings having 6 ring carbon atoms. The structure of BH-2 corresponds to instant formula (1B) where Ar1B is phenyl, L1B and L2B are single bonds, R101B is connected to L2B by a single bond, R105B and R106B are taken together to form benzene and all remaining R variables hydrogen.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art compound BH-2 does not meet condition B2 of instant claim 25 that requires at one or more hydrogen atoms (including those possessed by Ar1B) are deuterium.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2141.02)
As an additional example of the prior art general formula (1B), Itoi et al. teach the following structure on page 46:
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The prior art compound above contains deuterium at the corresponding phenyl ring of prior art compound BH-2. At least in the interest of determining which combinations of prior art formulae (1A) and (1B) and prior art formula (41) would provide optimum results, a person having ordinary skill in the art would have been motivated to test an analogous device where the prior art compound BH-2 is replaced with the structure above. Such a device would be embraced by instant claims 25, 26, 27, 28, 29 (formula 1B-13) and 35.
Further regarding the incorporation of deuterium, Han et al. teach devices compounds having analogous formulae including the following structure on page 11, which is the same as formula BH-2 of Itoi et al.:
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Han et al. further teach the following on page 8:
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Accordingly, a person having ordinary skill in the art seeking to obtain the benefits of Han et al. would have been motivated to use analogous compounds where one or more hydrogen atoms are replaced with deuterium (including where one to five atoms on the phenyl ring are replaced) where the perdeuterated phenyl option of Itoi et al. is one example.
Claim(s) 25-29, 33 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/209293 A1 by Itoi et al. (where a machine translation is appended to the reference) in view of U.S. Patent PGPub No. 2021/0020842 A1 by Han et al.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Itoi et al. teach (page 1 of the machine translation) an “organic electroluminescence element containing a cathode, an anode, and an organic layer arranged between the cathode and the anode, wherein the organic layer includes a light emitting layer and a first layer, and the first layer is included. The layer is arranged between the anode and the light emitting layer, the light emitting layer contains a compound represented by the following formula (1), and the first layer is represented by the following formula (B1).” The prior art teaches the following formula (1) on page 2 of the original document:
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As a device example, the prior art teaches Example 7 on page 191 of the original document comprising BH-1 and BD-7 having the following structures:
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The structure of formula BD-7 is embraced by instant formula (41) where L401 and L402 are NR401 where R401 are each substituted aryl having 6 ring carbon atoms, L403 is B and rings a, and c are substituted aromatic hydrocarbon rings having 6 ring carbon atoms. The structure of BH-1 corresponds to instant formula (1B) where Ar1B is phenyl, L1B and L2B are single bonds, R101B is connected to L2B by a single bond, R106B and R107B are taken together to form benzene and all remaining R variables hydrogen.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art compound BH-1 does not meet condition B2 of instant claim 25 that requires at one or more hydrogen atoms (including those possessed by Ar1B) are deuterium.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2141.02)
As an additional example of the prior art general formula (1), Itoi et al. teach the following structure on page 58 of the original document:
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The prior art compound above contains deuterium at the corresponding phenyl ring of prior art compound BH-1. At least in the interest of determining which devices of prior art formula (1) provide optimum results, a person having ordinary skill in the art would have been motivated to test an analogous device where the prior art compound BH-1 is replaced with the structure above. Such a device would be embraced by instant claims 25, 26, 27, 28, 29 (formula 1B-13), 33 and 35.
Further regarding the incorporation of deuterium, Han et al. teach devices compounds having analogous formulae including the following structure on page 11:
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Han et al. further teach the following on page 8:
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Accordingly, a person having ordinary skill in the art seeking to obtain the benefits of Han et al. would have been motivated to use analogous compounds where one or more hydrogen atoms are replaced with deuterium (including where one to five atoms on the phenyl ring are replaced) where the perdeuterated phenyl option of Itoi et al. is one example.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626