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 § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 12-14, 16, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Humphrey et al. (“Indole β-Nucleophilic Substitution. Part 6. Photochemical Transformations of Oxepino[3,2-b]indolones”, J. Chem. Soc. Perkin Trans. I, 1983, page 2413-2416, hereafter Humphrey).
Regarding claims 12-14, 16, and 18, Humphrey discloses Compound 5b (page 2414).
PNG
media_image1.png
230
423
media_image1.png
Greyscale
The Compound 5b of Humphrey has identical structure as Applicant’s Formula (1) in combination of Formula (3).
Claims 12-16 and 18-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wallwork et al. (WO 2021/062491 A1, hereafter Wallwork).
Regarding claims 12-16, and 18-19, Humphrey discloses the following compound ([00193], hereafter Compound 5).
PNG
media_image2.png
227
606
media_image2.png
Greyscale
The Compound 5 of Wallwork has identical structure as Applicant’s Formula (1) in combination of Formula (2), meeting all the limitations of claims 12-16 and 18.
Wallwork discloses that the polycyclic part of the Compound 5 can be formed by a cyclization reaction between acetyl chloride (i.e. the first reactant in the reaction below) and an indigo compound (i.e. the second reactant in the reaction below) ([00155]).
PNG
media_image3.png
192
735
media_image3.png
Greyscale
Wallwork discloses a process preparing the Compound 5 of Wallwork via a cyclization reaction between 2-(4-((2-ethylhexyl)oxy)phenyl)acetyl chloride and the indigo compound ([00193]), meeting all the limitations of claim 19.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 12-18 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Rauber et al. (EP 0312076 A1, hereafter Rauber).
Regarding claims 12-18 and 20-21, Rauber discloses a compound represented by Formula (I) ([0011]) and used for hyperlipidemia ([0001]). Rauber exemplifies Compound (b) ([0011]).
PNG
media_image4.png
229
576
media_image4.png
Greyscale
The fused ring including R3 and R4 of the Compound (b) of Rauber is not a 5-membered S-containing ring (i.e. thiazole); however, Rauber does teach the entire group of
PNG
media_image5.png
75
86
media_image5.png
Greyscale
can be replaced by
PNG
media_image6.png
97
112
media_image6.png
Greyscale
([0012]).
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the Compound (b) of Rauber by substituting the group represented by
PNG
media_image5.png
75
86
media_image5.png
Greyscale
of Formula (I) of Rauber with a structure of
PNG
media_image6.png
97
112
media_image6.png
Greyscale
, as taught by Rauber.
The modification would have been a combination of prior art elements according to known material to achieve predictable results. See MPEP 2143(I)(A). The substitution would have been one known element for another known element and would have led to predictable results. See MPEP 2143(I)(B).
PNG
media_image7.png
148
599
media_image7.png
Greyscale
The modification provides Modified compound (b) of Rauber, which has identical structure of Applicant’s Formula (1) in combination of Formula (3), meeting all the limitations of claims 12-18.
Rauber does not disclose a specific suspension medicine comprising the Modified compound (b) of Rauber; however, Rauber does teach that the compound of Rauber can be used to form an oral application in the form of suspension ([0028]). An oral medicine in the form of suspension necessarily includes water and inactive ingredients such as filler, buffer, and/or salt as well as the Modified compound (b) which is an active ingredient, to control of the dosing amount of the active medicine and adjust pH and salt concentration to assist absorption of the active medicine to the body.
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the Modified compound (b) of Rauber by incorporating it into an oral suspension medicine with water and an inactive ingredients such as filler, buffer, and/or salt, as taught by Rauber.
The motivation of doing so would have been to provide an oral suspension medicine for hyperlipidemia, based on the teaching of Rauber.
The modification would have been a combination of prior art elements according to known material to achieve predictable results. See MPEP 2143(I)(A).
The modification provides a formulation (i.e. oral suspension medicine for hyperlipidemia) including the Modified Compound (b) of Rauber, a solvent (water), and a further compound (an inactive ingredient such as filler, buffer, and/or salt), meeting all the limitations of claims 20-21.
Claims 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ernst et al. (DE 1951157 A1, the original document is referred to for figures and tables, and the English translation is referred to for the remainder body of the patent, hereafter Ernst).
Regarding claims 12-18, Ernst discloses a fluorescent compound (Abstract of the English translation) which is represented by Formula I (page 1 and 12 of the original document). Ernst exemplifies bis-benzoxazo-isoquinolone (Example 8 on page 5).
PNG
media_image8.png
439
643
media_image8.png
Greyscale
Ernst does not disclose a specific bonding configuration of the bis-benzoxazo-isoquinolone nor its structural formula; however, Ernst does teach that in Formula I, n can be 0; R3 can be a structure represented by
PNG
media_image9.png
135
280
media_image9.png
Greyscale
; and R1 and R2 can be hydrogen; X can be oxygen or sulfur (claim 1, page 13).
There are 16 position isomers having a bond at different positions between two benzoxazo-isoquinolone structures (i.e. each position isomer having a bond between 1 and 1’, 1 and 2’, 1 and 3’, 1 and 4’, 2 and 1’, …, or 4 and 4’ in the figure above). However, the instant claim 12 excludes only one isomer having a bond between positions 2 and 2’.
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the bis-benzoxazo-isoquinolone by connecting two benzoxazo-isoquinolone structures with any one of 1 and 1’, 1 and 2’, 1 and 3’, 1 and 4’, 2 and 1’, …, or 4 and 4’, except 2 and 2’, as taught by Ernst.
The modification would have been a combination of prior art elements according to known material to achieve predictable results. See MPEP 2143(I)(A). The substitution would have been one known element for another known element and would have led to predictable results. See MPEP 2143(I)(B). There are finite number of bonding configurations. The selection of a bond from positions 1 and 1’, 1 and 2’, 1 and 3’, 1 and 4’, 2 and 1’, …, or 4 and 4’, except 2 and 2’ between two benzoxazo-isoquinolone would have been one from a finite number of identified, predictable solutions, with a reasonable expectation of success. See MPEP 2143(I)(E).
Furthermore, the compound bis-benzoxazo-isoquinolone is a position isomer with similar compounds in which two benzoxazo-isoquinolone structures are connected via a bond selected from positions 1 and 1’, 1 and 2’, 1 and 3’, 1 and 4’, 2 and 1’, …, or 4 and 4’, except 2 and 2’.
With respect to position isomers, the examiner points to the MPEP which states: 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) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) 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). See MPEP 2144.09 I and 2144.09 II.
Therefore, at the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to modify bis-benzoxazo-isoquinolone shown above such that the two benzoxazo-isoquinolone structures are connected via a bond selected from positions 1 and 1’, 1 and 2’, 1 and 3’, 1 and 4’, 2 and 1’, …, or 4 and 4’, except 2 and 2’. A compound in which two benzoxazo-isoquinolone structures are connected via a bond selected from positions 1 and 1’, 1 and 2’, 1 and 3’, 1 and 4’, 2 and 1’, …, or 4 and 4’, except 2 and 2’ would represent a position isomer of the bis-benzoxazo-isoquinolone. One of ordinary skill in the art would expect that the position isomers having each respective structure would act in similar manner.
The modification provides Modified compound of Ernst which has two benzoxazo-isoquinolone units connected by a bond selected from positions 1 and 1’, 1 and 2’, 1 and 3’, 1 and 4’, 2 and 1’, …, or 4 and 4’, except 2 and 2’.
Claims 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Ernst et al. (DE 1951157, the original document is referred to for figures and tables, and the English translation is referred to for the remainder body of the patent) as applied to claims 12-18 above, further in view of Nakashima et al. (US 2006/0093857 A1, hereafter Nakashima).
Regarding claims 20-23, the Modified compound of Ernst reads on all the features of claim 12 as outlined above.
Ernst does not disclose a specific organic electroluminescent device comprising the Modified compound of Ernst; however, Ernst does teach that the compound of Ernst is a fluorescent material (Abstract).
Nakashima discloses an organic electroluminescent device comprising an oligonaphthalene derivative as a blue dopant (Abstract, [0075], Fig. 1). Nakashima teaches the structure of the organic electroluminescent device comprising an anode, a hole transport layer, a light emitting layer, an electron transport layer, and a cathode ([0117]-[0122]).
Nakashima teaches that a dopant can be added in the light emitting layer, and the dopant can be an any fluorescent luminescent material including oxazole derivatives ([0074]). Nakayama teaches the luminescence from the dopant is efficient because the oligonaphthalene derivative has extremely large band gap ([0073]).
Nakashima further teaches a host can be added ([0075]).
Nakashima teaches the light emitting layer can be formed by a solution method including spin coating and inkjet ([0071]). It is known in the art that the solution method requires a solvent because the host and dopants are solid phase materials.
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the Modified compound of Ernst by incorporating it into the light emitting layer with a host and an oligonaphthalene derivative of Nakashima in an organic electroluminescent device having structure of an anode, a hole transport layer, a light emitting layer, an electron transport layer, and a cathode, wherein the light emitting layer is formed by a solution method, as taught by Nakashima.
The motivation of doing so would have been to provide an organic electroluminescent device having with high efficiency, based on the teaching of Nakashima.
Furthermore, the modification would have been a combination of prior art elements according to known material to achieve predictable results. See MPEP 2143(I)(A).
The modification provides Organic electroluminescent device of Ernst as modified by Nakashima comprising an anode, a hole transport layer, a light emitting layer, an electron transport layer, and a cathode, wherein the light emitting layer contains a host, an oligonaphthalene derivative as a fluorescent dopant, the Modified compound of Ernst as a fluorescent dopant; the light emitting layer is formed by a solution method such as inkjet or spin coating using a formulation comprising the Modified compound of Ernst, an oligonaphthalene derivative, a host, and a solvent; and the organic electroluminescent device is an electronic device, meeting all the limitations of claims 20-23.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Ernst et al. (DE 1951157, the original document is referred to for figures and tables, and the English translation is referred to for the remainder body of the patent) in view of Nakashima et al. (US 2006/0093857 A1) as applied to claims 12-18 and 20-23 above, further in view of Seo et al. (US 2002/0121860 A1, hereafter Seo).
Regarding claim 24, the Organic electroluminescent device of Ernst as modified by Nakashima reads on all the features of claims 12 and 20-23 as outlined above.
The device comprises an anode, a hole transport layer, a light emitting layer (a host, an oligonaphthalene derivative as a fluorescent dopant, the Modified compound of Ernst as a fluorescent dopant), an electron transport layer, and a cathode.
The device does not comprise a mixed layer between the light emitting layer and the electron transport layer.
Seo teaches that a mixed layer between two neighboring organic layers of an organic optoelectronic device (“organic light-emitting device”) contains both the neighboring organic layer materials (“mixed layer” (105) in Fig. 1B; [0050]; “2nd mixed region” between “light emitting region” and “electron transporting region” in Fig. 19).
Seo teaches that by introducing a mixed layer in-between two neighboring organic layers (device structure of Fig. 1B), the energy barrier is lowered and more carriers can be injected ([0054]).
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the Organic electroluminescent device of Ernst as modified by Nakashima by incorporating a mixed layer between the light emitting layer and the electron transport layer, as taught by Seo.
The motivation of doing so would provide lowered energy barrier and improved carrier injection, based on the teaching of Seo.
Furthermore, the modification would have been a combination of prior art elements according to known material to achieve predictable results. See MPEP 2143(I)(A).
The modification provides Organic electroluminescent device of Ernst as modified by Nakashima and Seo comprising an anode, a hole transport layer, a light emitting layer (a host, an oligonaphthalene derivative as a fluorescent dopant, the Modified compound of Ernst as a fluorescent dopant), a mixed layer comprising the Modified compound of Ernst, an electron transport layer, and a cathode, wherein the mixed layer is equated with a hole blocking layer or an electron transport layer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEOKMIN JEON whose telephone number is (571)272-4599. The examiner can normally be reached Monday - Friday 8:30am to 5:00pm EST.
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 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEOKMIN JEON/Primary Examiner, Art Unit 1786
Prosecution Insights