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
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.
Independent claims 1 and 10 each have been amended to include the following limitation.
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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. The specification makes no mention of E1 to E4 bonding through a nitrogen atom to one of L1 to L4 either as a positive or negative feature much less that when that scenario is present that the selected group must further be selected from those groups set forth in the claims.
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 10-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zhu et al (WO 2022/242521) (Zhu).
In reference to claims 10-19, Zhu teaches an organic electronic device comprising, e.g., a compound 110 as shown below (Zhu p 10).
For Claim 10: Reads wherein compound 2 is a compound of formula 1 wherein Cy1 to Cy4 are each a C6 carbocyclic group, R1 to R4 are each hydrogen, n1 and n3 are each 0, n2 and n4 are each 1 and E2 and E4 are each a group containing a heteroatom of formula 4-35, wherein X R41 are fused to form rings.
For Claim 11: Reads on benzene.
For Claim 12: Reads on a single bond.
For Claim 13-15: Reads on formula 4-35 or 4-70.
For Claim 16: Reads on formula 1-5.
For Claim 17: Reads on 2.
For Claim 18: Reads on 2.
For Claim 19: n1 is 0, n2 is 1, and n3 is 0, and n4 is 1.
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 1-7 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al (WO 2022/242521) (Zhu)
In reference to claims 1-7, Zhu teaches an organic electronic device comprising, e.g., a compound 110 (Zhu p 10) as shown below in a light emitting layer and examples similar devices with a host BH as shown below that further comprises an anode, cathode, hole transport and electron transport layers etc. that reads on the instant claims (Zhu p 26).
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While Zhu does not exemplify a device with this exact compound 110, given that Zhu discloses the device configuration that encompasses the presently claimed device, including wherein the compound 110 is included in a device as the other examples, 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 device configuration, which is both disclosed by Zhu and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
For Claim 1: Reads on a device with the claimed structure wherein compound 2 is a compound of formula 1 wherein Cy1 to Cy4 are each a C6 carbocyclic group, R1 to R4 are each hydrogen, n1 and n3 are each 0, n2 and n4 are each 1 and E2 and E4 are each a group containing a heteroatom of formula 4-35, wherein X R41 are fused to form rings.
For Claim 2: Reads on the claimed structural features.
For Claim 3: Reads on wherein the emission layer comprises the compound.
For Claim 4: Reads on 2% by weight.
For Claim 5: The BH reads on an anthracene-based compound.
For Claim 6: The CIE of the Zhu device corresponds to blue which is expected to emit in this range.
For Claim 7: Reads on an apparatus.
In reference to claim 20, Zhu teaches compounds of formula (1) as shown below
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for example, wherein in formula 1, each of Z2 to Z7 and Z9 to Z14 is CH, Z1 and Z8 are each C bonded to formula (2) wherein L is phenylene, R15 and R16 are fused to form a ring (or a positional isomer of compound 110 except wherein L is phenylene instead of a bond).
Zhu discloses the compound of formula (1) that encompasses the presently claimed compound, including wherein in formula 1, each of Z2 to Z7 and Z9 to Z14 is CH, Z1 and Z8 are each C bonded to formula (2) wherein L is phenylene, R15 and R16 are fused to form a ring. Each of the disclosed substituents from the substituent groups of Zhu 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 Zhu and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
For Claim 7: Reads on compound 77.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al (WO 2022/242521) (Zhu) and further in view of Song et al (US 2020/0028084) (Song).
In reference to claims 8-9, Zhu teaches the device as described above for claim 7 and further teaches these devices are useful in display devices (Zhu p. 1).
Zhu does not expressly teach that this device includes a TFT or a color filter etc. as instantly claimed. 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 05/19/2026 have been fully considered but they are not persuasive. Applicant argues that the compound 2 of Zhu does not meet the claim limitations. However, Zhu teaches other embodiments that meet the claim limitations as explained herein above.
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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