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 .
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 1-17 and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-20 of copending Application No. 17/660,182. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims and the instant claims are drawn to overlapping subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-17 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,598,909. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims and the instant claims are drawn to overlapping subject matter.
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 1-5, 8-17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ahn et al (US 2020/0168819) (Ahn).
In reference to claims 1-4, 8-17, and 19-20, Ahn teaches an organic light-emitting device comprising a first electrode, a second electrode facing the first electrode, an organic layer between them and including an emission layer, hole transport layer, and electron transport layer and a heterocyclic compound of formula 1 as shown below in the emission layer with a dopant of formula 401 (Ahn abstract, [0004], [0007] [0115])
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428
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384
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370
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for example, wherein in the formula 1, X1 to X3 are each N, Ar1 is 2-3(1), Ar2 is 2-1(1), Ar3 is 2-1(2), wherein Z14 is phenyl Z11 to Z13 are each hydrogen (Ahn [0037] to [0039] [0081] [0083]).
Ahn discloses the compound of formula 1 that encompasses the presently claimed compound, including wherein in the formula 1, X1 to X3 are each N, Ar1 is 2-3(1), Ar2 is 2-1(1), Ar3 is 2-1(2), wherein Z14 is phenyl Z11 to Z13 are each hydrogen. Each of the disclosed substituents from the substituent groups of Ahn are considered functionally equivalent and their selection would lead to obvious variants of the compound of formula 1.
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 of formula 1 to provide the compound described above, which is both disclosed by Ahn and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
While formula 2-1-(2) does not expressly require that the phenylene linkage is as claimed in formula 2a, Ahn specifically points to a preference to meta linkages in this group (Ahn [0112]) and therefore selection of this positional isomer increases the triplet energy level compared to a para position and provide excellent phosphorescence and would have been immediately obvious. Furthermore, it is noted that compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) 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). In light of the case law cited above, it therefore would have been obvious to one of ordinary skill in the art that the compound disclosed in the present claims is but an obvious variant of the compound presently claimed, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
For Claim 1: Reads on the claimed device wherein Ar11, Ar12, Ar13, Ar21, Ar22, and Ar23 are each benzene wherein Ar21 is 2a, X1 to X3 are each N, X4 is CR4, R4 is phenyl, Y1 is silyl, a21 is 1 and E21 is phenyl.
For Claim 2: Reads on the claimed layers.
For Claim 3: Reads on the emitting layer comprises the compound.
For Claim 4: Reads on a dopant of 401.
For Claim 8: Reads on a compound as claimed.
For Claim 9: Reads on wherein X4 is CR4, R4 is phenyl.
For Claim 10: Reads on E11 is phenyl.
For Claim 11: Reads on single bond.
For Claim 12: Reads on single bond.
For Claim 13: Reads on hydrogen.
For Claim 14: Reads on 1.
For Claim 15: Reads on 0.
For Claim 16: Reads on 1a.
For Claim 17: Reads on 1b-15.
For Claim 19: Reads on formula 2-1.
For Claim 20: Reads on compound 1.
In reference to claim 5, Ahn teaches the device as described above for claim 1. Ahn does not exemplify this exact device but other devices of similar structure and demonstrates EQE values of equal to or greater than about 20% (See e.g. Ahn Table 2). Further the property of the device is a result of its composition and therefore the device meeting the composition would be expected to perform similarly.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ahn et al (US 2020/0168819) (Ahn) in view of Song et al (US 2020/0028084) (Song).
In reference to claim 6-7, Ahn teaches the device as described above for claim 1 but does not expressly state that it comprises the claimed thin-film transistor configuration or a color filter, color conversion layer, touch screen layer, a polarizing layer or combination thereof. However, such features are exceptionally well known in the art of organic light emitting devices.
With respect to the difference, Song teaches, in analogous art, display devices with similar materials comprising thin film transistors, source and drain electrodes (Song [0132] to [0134]) and a color filter (Song [0143]).
It would have been obvious to use the device configuration of Song including well known elements such as thin film transistors, source and drain electrodes and a color filter with the expectation of providing an organic EL display device with improved color characteristics, efficiency and lifespan (Song abstract).
Response to Arguments
Applicant's arguments filed 06/18/2026 have been fully considered but they are not persuasive.
Initially, Applicant argues that the instantly claimed compounds give rise to unexpected results as amended as evidenced by the examples in the instant specification’s table 2 and 3. This argument has been fully considered but not found convincing for at least the following reasons.
For a finding of unexpected results, the results presented need to be of both statistical and practical significance and be commensurate in scope with the subject matter claimed (See MPEP 716.02).
First, while the inventive examples allegedly show improvements in device properties, the specification has provided no information that would allow the analysis of the statistical significance of the results. That is, there is no indication if more than one device was prepared and analyzed for each comparative and exemplary device and there is no information on the reproducibility or precision of the measured parameters presented in the data tables.
Second, the showing of the results of a few examples is not commensurate in scope with the very large number of compounds encompassed by the instant claims. For example, the instantly claimed genus of compounds of formula 1 comprises an essentially infinite number of compounds. That is, R1 to R4, R11 to R13 and R21 can each be, among many other options, a C1 to C60 alkyl group that can be substituted with an exceptionally long list of possible substituents R10a. The possible number structures of C60 alkyl groups alone (not accounting for C1 to C59) is on the order of 1019 without allowing for the massive list of substituents R10a that can also each be further substituted or combined. That is, the number of unsubstituted C60 alkyl combinations for those 8 positions is on the order of 10152. Applicant has demonstrated 11 compounds none of which comprise such claimed groups or most of the vast substituent options defined in the Markush groups. Such large structures would dwarf the constant portions of the claimed structures and the resultant materials would not be expected to have comparable properties. These examples are not intended to be interpreted as the only points in which the data in not commensurate in scope with the claims but merely to illustrate how the breadth of the claimed compounds is much larger than that set forth in the examples. As Applicant is attesting that the claimed compounds have properties that would not be expected based on the genus as a whole, for example compounds taught by Cho, support for the unexpected results must be provided that covers the scope of what is claimed.
Concerning the outstanding double patenting and provisional double patenting rejections Applicant argues that the claimed embodiments are not obvious over the recited patent and copending application. However, Applicant has not pointed to any specific rationale why this is the case and the copending, patented both also claim the instantly claimed materials.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/Sean M DeGuire/Primary Examiner, Art Unit 1786
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