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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 in Application No. 16/710,523.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on each of 11/28/2022 and 06/24/2025 have each been considered by the examiner.
Claim Objections
Claims 1-3, 6-9, 11-12, and 18 are objected to because of the following informalities:
in claims 1 and 18 it is suggested that a "the" be added before the second recitation of "organic electroluminescent device" in the preamble, for ease of reading; and
in claims 2 and 6-9, it is suggested that the apostrophe's in the definitions of R'1 to R'10 be changed from ʼ to ' for ease of reading;
in claims 2 and 3, it is suggested that the apostrophe's in the definitions of X'1 and X'2, be changed from ʼ to ' for ease of reading;
in claim 11 it is suggested that the comma after X1 be removed for ease of reading; and
in claim 12 it is suggested that "wherein" be added after "claim 1," and a space be added between "0.50" and "eV", for ease of reading.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-20 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.
Regarding claims 1 and 18, the claims recite "an organic electroluminescent device comprising a light emitting layer, organic electroluminescent device comprising: (i) 5-99% by weight of at least one host compound H comprising at least one of cyano- and silyl- substituted triphenyl-N-heteroaromatic-ring." However, there is no recitation in the specification that the compound H in the composition is a cyano- and silyl- substituted triphenyl-N-heteroaromatic-ring outside the scope of Formula (I). In the specification, it is recited that "the organic compound H of the present invention composed of a cyano- and silyl-substituted triphenyl-N-heteroaromatic-ring leads to particularly beneficial properties" (this is the only recitation of "a cyano- and silyl-substituted triphenyl-N-heteroaromatic-ring"); however, this is notably after compound H has already been described as of Formula (I) (page 1 and later on page 4). Further, none of the exemplary compounds/devices show a cyano- and silyl- substituted triphenyl-N-heteroaromatic-ring outside the scope of Formula (I). All further recitations of compound H appear to be referring to Formula (I). Consequently, it is unclear that Applicant had possession at the time of filing the claimed invention wherein the compound H is a cyano- and silyl- substituted triphenyl-N-heteroaromatic-ring outside the scope of Formula (I).
Claims 10-17 are dependent on claim 1 and therefore, for the reasons outlined above with respect to claim 1, these claims also contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 19-20 are dependent on claim 18 and therefore, for the reasons outlined above with respect to claim 18, these claims also contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected 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.
Regarding claims 1 and 18, the claims each recite "at least one of cyano- and silyl- substituted triphenyl-N-heteroaromatic-ring." The claim is indefinite because it is unclear whether "at least one of cyano- and silyl- substituted triphenyl-N-heteroaromatic-ring" means (1) at least one of a cyano-substituted triphenyl-N-heteroaromatic-ring and a silyl-substituted triphenyl-N-heteroaromatic-ring; or (2) at least one of a triphenyl-N-heteroaromatic-ring that is substituted with both a cyano group and a silyl group.
For purposes of examination, the claim will be interpreted as required both a cyano and silyl substituent on a triphenyl-N-heteroaromatic-ring.
Claims 10-17 are rejected for being dependent on indefinite claim 1.
Claims 19-20 are rejected for being dependent on indefinite claim 18.
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 1-11, 13, and 15-19, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 13, 18-19, and 14-17 of U.S. Patent No. US-11512101-B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of U.S. Patent No. US-11512101-B2 recites the organic electroluminescent device according to claim 9, wherein the light-emitting layer B comprises: (i) 5-99% by weight of at least one host compound H according to claim 1; (ii) 0.1-10% by weight of at least one NRCT emitter compound ENRCT; and (iiia) 0.9-94.9% by weight of at least one further host compound D not according to Formula (I); or (iiib) 0.9-94.9% by weight of at least one TADF compound ETADF not according to Formula (I); and optionally (iv) 0-94% by weight of a solvent, claim 9 of U.S. Patent No. US-11512101-B2 recites an organic electroluminescent device comprising a light-emitting layer B containing at least one organic compound H according to claim 1 as host, and claim 1 of U.S. Patent No. US-11512101-B2 recites an organic compound H of Formula (I), which is a compound comprising a cyano- and silyl- substituted triphenyl-N-heteroaromatic-ring, meeting instant claims 1-2 and 18. Further, claims 2-8, 18-19, and 14-17 of U.S. Patent No. US-11512101-B2 correspond to instant claims 3-11, 13, and 15-17, respectively, and claim 14 of U.S. Patent No. US-11512101-B2 also corresponds to claim 19.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth M. Dahlburg whose telephone number is 571-272-6424. The examiner can normally be reached Monday through Thursday, 9 a.m. to 4 p.m. ET, and alternate Fridays.
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/ELIZABETH M. DAHLBURG/Primary Examiner, Art Unit 1786