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(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14, 16-18, 20-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As amended, Applicant has added the limitation “If Y is CR’R”, then each of X1 to X6 is C;” to independent claims 1, 17 and 20. This if/then proviso is not simply carving out one single compound or a readily envisaged negative limitation but is instead a complex exclusion based on specific combinations of variables. While MPEP 2163.05(i) allows negative limitations to overcome the prior art, an Applicant cannot simply add a negative limitation that is created through the picking and choosing from multiple variable selections to create a sub-genus that wasn’t originally identified. The originally filed disclosure does not provide any direction that would lead a person having ordinary skill in the art to the specific selections of the variables in question which lead to the compounds to be excluded. The specific conditions which lead to the proviso is not disclosed in any reasonable manner to suggest that Applicant had possession of such an exclusion.
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 1-5, 7-8, 10-11, 13-14 and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hwang (EP 3792270) (Hwang).
In reference to claims 1-5, 7-8, 10-11, 13-14 and 21, Hwang teaches, among others, compounds 82 or 707 as shown below (Hwang p 73) that read on the instant claims.
PNG
media_image1.png
164
212
media_image1.png
Greyscale
PNG
media_image2.png
150
210
media_image2.png
Greyscale
For Claim 1: Reads on the claimed compound wherein m is 1, n is 2, two RB are isopropyl and the rest are hydrogen, R* is hydrogen, RA is hydrogen, RD is hydrogen, RC is hydrogen, E is pyridine and one of RE is an alkyl, another is a geryml and alkyl group or heteroalkyl and the others are hydrogen, X1 to X10 are each C, and wherein condition 2 is true.
For Claim 2: Reads on heteroalkyl, alkyl or hydrogen.
For Claim 3: Reads on one of X1 to X6 is N.
For Claim 4: Reads on pyridine.
For Claim 5: Reads on O.
For Claim 7: Reads on wherein RB has 3 aliphatic carbon atoms and RE has four.
For Claim 8: Reads on alkyl ortho.
For Claim 10: Reads on the first structure.
For Claim 11: Reads on the last structure.
For Claim 13: Reads on the first structure.
For Claim 14: Reads on row 2 column 5.
For Claim 21: Reads on Y is O.
In reference to claim 22, Hwang teaches compound 682 as shown below that reads on the claim.
PNG
media_image3.png
152
192
media_image3.png
Greyscale
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 6, 9 and 17-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (EP 3792270) (Hwang).
In reference to claims 6 and 9, Hwang teaches the compound as described above for claim 1. Hwang further teaches that these materials can include additional substituents on the benzimidazole group (Hwang [0025] to [0076]) including the claimed groups.
Hwang discloses the that encompasses the presently claimed compound, including wherein benzimidazole groups have additional substituents. Each of the disclosed substituents from the substituent groups of Hwang are considered functionally equivalent and their selection would lead to obvious variants of the compound.
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 compound to provide the compound described above, which is both disclosed by Hwang and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
In reference to claims 17-18 and 20, Hwang teaches the compound as describe ed above for claim 1 and further teaches its use in an organic electroluminescent device or consumer product comprising an anode, cathode and organic layer comprising the compound and a host compound including the claimed materials (Hwang [0116] to [0120]; [0151]; [0171]).
Given that Hwang discloses the device structure that encompasses the presently claimed devices, including an organic electroluminescent device or consumer product comprising an anode, cathode and organic layer comprising the compound and a host compound including the claimed materials, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, to use the device configuration, which is both disclosed by Hwang and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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.
/Sean M DeGuire/Primary Examiner, Art Unit 1786
Prosecution Insights