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 .
This office action is responsive to the Amendment and Remarks filed 31 July 2026, wherein claims 2, 3, and 5-8 were canceled. Subsequently, claims 1, 4, and 9-20 are pending and presently under consideration in this application.
Response to Amendment
Applicant’s have failed to satisfactorily address the rejection of claims 1, 19, and 20 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraph 6 of the previous office action on the merits. Please refer to the following paragraph 7 for additional comments.
The rejection of claims 2, 3, and 6 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 7-9 of the previous office action on the merits, are hereby withdrawn in view of applicant’s cancellation of the same.
The rejection of claims 15 and 17 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as respectively set forth in paragraphs 10 and 11 of the previous office action on the merits, are hereby withdrawn in view of applicant’s amendments to the same.
Applicants have amended each of the independent claims 1, 19 and 20 with respect to the substituents L1 to L4 to recite five different scenarios, i.e., first “wherein if exactly one of L1- L4 is selected from the group consisting of” then options (i) or (ii), second “wherein if L1 and L3 are not direct bonds, L2 and L4 are each direct bonds, then …, third “wherein if L1- L4 are each a direct bond” then …, fourth “wherein if L1 and L2 are both selected from the group consisting of” then …, and fifth “wherein if L1- L4 are each a direct bond” followed by six different conditions (1) – (6), thus introducing new considerations as follows under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph. During the interview of 23 July 2026, the Examiner noted that the aforementioned amendments with respect to the substituents L1 to L4 would introduce new issues under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, and suggested moving the limitations, i.e., each of the aforementioned five different scenarios, to new dependent claims.
Response to Arguments
Applicant's arguments filed 31 July 2026 in response to the rejection of each of claims 1, 19, and 20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in paragraph 6 of the previous office action on the merits and repeated therein the following paragraph 13, said arguments essentially to the effect that the specification clearly describes the meaning of “no substitution”, have been fully considered but they are not persuasive. Since each of the substituents RA, RB, RC, and RD may be hydrogen, the scope of them independently representing “mono to the maximum amount of substitution, or no substitution” is not clear., and the phrase in question appears superfluous.
Applicant's arguments filed 31 July 2026 in response to the rejection of claims under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 7-11 of the previous office action on the merits, are moot as the aforementioned rejections have been withdrawn.
Applicant's comments filed 31 July 2026 with respect to the amendment to each of the independent claims 1, 19 and 20 with respect to the substituents L1 to L4, said comments referring to how the “general rule” in the amended claim(s) “first define” that “L1 to L4 are each independently a direct bond or selected from the group consisting of O, S, Se, NR, BR, BRR′, PR, CR, C═X, CRR′, SO, SO2, SiRR′, GeRR′, P(O)R, aryl, hetero aryl, alkyl, hetero cycloalkyl, and cycloalkyl” with “several additional conditions as introduced into claim 1 have to be satisfied, in case different specific constellations (“scenarios”) for the definition of L1- L4 apply”, i.e., “additional requirements which have to be satisfied in certain scenarios depending on the definition of L1- L4“ actually serve to support and reinforce the Examiner’s position regarding the broad narrow situation created by such amendments and, as discussed in the following paragraph 14.
Claim Rejections - 35 USC § 112
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, 4, 9-20 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.
Claim 1 is rejected as being vague and indefinite when it recites “wherein RA, RB, RC, and RD each independently represent mono to the maximum amount of substitution, or no substitution” (emphasis added); the scope of the protection sought by “no substitution” is not clear, particularly in light of the substituent definitions which follow that phrase. Claim 1 fails to particularly point out and distinctly claim the substituents RA, RB, RC, and RD in the claimed compound of formula I. Claim 19 is also rejected as being vague and indefinite when it recites “wherein RA, RB, RC, and RD each independently represent mono to the maximum amount of substitution, or no substitution” (emphasis added), as it fails to particularly point out and distinctly claim the substituents RA, RB, RC, and RD in the compound of formula I contained in the organic layer of the claimed organic light emitting device. Similarly, claim 20 is rejected as being vague and indefinite when it recites “wherein RA, RB, RC, and RD each independently represent mono to the maximum amount of substitution, or no substitution” (emphasis added), as it fails to particularly point out and distinctly claim the substituents RA, RB, RC, and RD in the compound of formula I contained in the organic layer of the organic light emitting device contained in the claimed consumer product.
Amended claims 1, 19, and 20 are rejected as being vague and indefinite when they each recite “wherein if exactly one of L1- L4 is selected from the group consisting of … then (i) … ; or (ii)…” (emphasis added), “wherein if L1 and L3 are not direct bonds, L2 and L4 are each direct bonds … then …“ (emphasis added), “wherein if L1- L4 are each a direct bond … then …” (emphasis added), “wherein if L1 and L2 are both selected from the group consisting of … then …” (emphasis added), and “wherein if L1- L4 are each a direct bond, then … and the following six different conditions (1) – (6) apply” (emphasis added); the scope of the protection sought is not clear. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1, 19, and 20 each recite the broad recitation “L1 to L4 are each independently a direct bond or selected from the group consisting of O, S, Se, NR, BR, BRR′, PR, CR, C═X, CRR′, SO, SO2, SiRR′, GeRR′, P(O)R, aryl, hetero aryl, alkyl, hetero cycloalkyl, and cycloalkyl”, and the claim also recites “wherein if exactly one of L1- L4 is selected from the group consisting of … then (i) … ; or (ii)…”, “wherein if L1 and L3 are not direct bonds, L2 and L4 are each direct bonds … then …“, “wherein if L1- L4 are each a direct bond … then …”, “wherein if L1 and L2 are both selected from the group consisting of … then …”, and “wherein if L1- L4 are each a direct bond, then … and the following six different conditions (1) – (6) apply” which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim 1 fails to particularly point out and distinctly claim the substituents L1- L4 in the claimed compound of formula I. Claims 19 and 20 each fails to particularly point out and distinctly claim the substituents L1- L4 in the compound of formula I contained in the respectively claimed OLED and consumer product.
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 Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony J Zimmer can be reached at (571)270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737
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