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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
This action is in reply to the communication filed on July 15, 2026.
Claims 1, 9 and 14 have been amended and are hereby entered.
Claims 1 – 20 are currently pending and have been examined.
This action is made FINAL.
Response to Amendments
Applicant's amendments to the claims, filed July 15, 2026, caused the withdrawal of the rejection of claims 1 – 20 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention as set forth in the office action filed April 15, 2026.
Applicant’s amendments to the claims, filed July 15, 2026, caused the withdrawal of the rejection of claims 1 – 5 and 7 – 12 under 35 U.S.C. 102(a)(1) as being anticipated by Rota Matir as set forth in the office action filed April 15, 2026.
Applicant’s amendments to the claims, filed July 15, 2026, caused the withdrawal of the rejection of claims 1 – 5, 7, 8, and 10 – 12 under 35 U.S.C. 102(a)(1) as being anticipated by Kim as set forth in the office action filed April 15, 2026.
Applicant’s amendments to the claims, filed July 15, 2026, caused the withdrawal of the rejection of claims 6 and 13 – 20 under 35 U.S.C. 103 as being unpatentable over Rota Matir as set forth in the office action filed April 15, 2026.
Applicant’s amendments to the claims, filed July 15, 2026, caused the withdrawal of the rejection of claims 6, 13, and 15 – 20 under 35 U.S.C. 103 as being unpatentable over Kim as set forth in the office action filed April 15, 2026.
Response to Arguments
Applicant’s arguments with respect to claims 1 – 20 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.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of U.S. Patent No. 12,439,821. Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula 1 in the instant application overlap in scope with compounds of Formula 1 in claim 1 of the ‘821 patent as evidenced by at least compound 22 in claim 20 of the ‘821 patent.
Claims 1 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of U.S. Patent No. 12,428,597. Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula 1 in the instant application overlap in scope with compounds of Formula 1 in claim 1 of the ‘597 patent as evidenced by at least compound 17 in claim 10 of the ‘597 patent.
Claims 1 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of U.S. Patent No. 12,593,606. Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula 1 in the instant application overlap in scope with compounds of Formula 4 in claim 14 of the ‘606 patent as evidenced by at least compound D14 in claim 15 of the ‘606 patent.
Claims 1 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of U.S. Patent No. 12,637,483. Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula 1 in the instant application overlap in scope with compounds of Formula 1 in claim 1 of the ‘483 patent as evidenced by at least compound 105 in claim 13 of the ‘483 patent.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of copending Application No. 18/311,575 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula 1 in the instant application overlap in scope with compounds of Formula 4 in claim 19 of the ‘575 application as evidenced by at least compound D14 in claim 20 of the ‘575 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of copending Application No. 18/541,784 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula 1 in the instant application overlap in scope with compounds of Formula 1 in claim 1 of the ‘784 application as evidenced by at least compound 139 in claim 9 of the ‘784 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of copending Application No. 18/463,115 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula 1 in the instant application overlap in scope with compounds of Formula 1 in claim 1 of the ‘115 application as evidenced by at least compound 133 in claim 10 of the ‘115 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 24 of copending Application No. 18/350,883 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula 1 in the instant application overlap in scope with compounds of Formula 1 in claim 1 of the ‘883 application as evidenced by at least compound 172 in claim 13 of the ‘883 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of copending Application No. 18/456,826 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula 1 in the instant application overlap in scope with compounds of Formula 1 in claim 1 of the ‘826 application as evidenced by at least compound 322 in claim 12 of the ‘826 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of copending Application No. 18/311,575 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula 1 in the instant application overlap in scope with compounds of Formula 4 in claim 19 of the ‘575 application as evidenced by at least compound D14 in claim 20 of the ‘575 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 – 8, and 10 – 20 of copending Application No. 17/889,217 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula 1 in the instant application overlap in scope with compounds of Formula 1 in claim 1 of the ‘217 application as evidenced by at least compound 18 in claim 8 of the ‘217 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 – 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 pre-AIA the applicant regards as the invention.
Claim 1 defines n3 as being an integer of 1 to 3. Claim 1 then goes on to recite that “when n3 is 0, CY5 and CY6 are not directly connected with each other.” This renders the claim indefinite because it is unclear whether n3 is required to be an integer of 1 to 3 or if n3 can also be 0.
For examination purposes, the claim is interpreted to require that n3 is selected from an integer of 1 to 3. Examiner recommends that Applicant remove the language directed to “when n3 is 0.”
Claims 2 – 20 are rejected as being dependent on claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10 and 14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 requires that in Formula 2, X3 and n satisfy one of three conditions. One of the conditions, (C) is that n3 is 0. However, claim 10 is dependent on claim 1. Claim 1 has been amended to require that n3 is 1 to 3. Therefore, condition (C) appears to fall outside the scope of claim 1, upon which it depends.
Claim 14 recites a list of compounds. Claim 14 is dependent on claim 1, which requires that T1 is selected from groups including Formula 2-1 to 2-4 and 2-6 to 2-8. However, some of the compounds in claim 14, including at least Compound 19
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contain a fully deuterated carbazole group in the claimed T1 position. This group appears to fall outside of the groups for recited for the T1 group. Therefore, claim 14 appears to fail to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Rota Matir (WO2021014001A1).
As per claims 1 – 5, and 7 – 12, Rota Matir teaches:
A condensed cyclic compound represented by Formula 1
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(Rota Matir teaches compounds of Formula (I)
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(Page 2, Paragraph 2). A particular compound within the scope of Formula (I) taught by Rota Matir is
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on Page 123. While this compound does not contain the substituents off of the carbazole groups as required by the claims, Rota Matir teaches substituted carbazole substituents in compounds such as
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on Page 128. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to similarly substitute one of the carbazole groups in the compound on Page 123, such as the group on the top left with a phenyl group as in the compound on Page 128. When modified in this way, the modified compound reads on the claimed Formula wherein Y1 is B; CY1 to CY4 are each a C6 carbocyclic group, namely a benzene group as required by claims 4 and 5; X1 is N(R11); n1 is 1; n2 is 0 so that CY1 and CY2 are not connected; T1 is a group represented by Formula 2-6; T2 and T3 are each a group represented by Formula 2-5; a1 to a3 are each an integer of 1; in Formula 2, CY5 and CY6 are each independently a C6 carbocyclic group, namely a benzene group as required by claims 7 and 8 so that the entire group is represented by Formula 2-5 in claim 9; X3 is a single bond and n3 is 1, meeting condition (A) in claim 10; b1 to b3 are integers of 0 so that the corresponding R groups do not exist; R5 is an unsubstituted C6 aryl group; R11 is a substituted C6 aryl group; R4 is an unsubstituted C6 aryl group, namely a group represented by Formula 10-12 in claim 12; b4 is an integer of 1.)
Rota Matir includes each element claimed, with the only difference between the claimed invention and Rota Matir being a lack of the aforementioned combination being explicitly stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of organic electroluminescent devices with higher efficiencies, higher color purity, and higher stability than other emitters with comparable color (Page 1, Paragraph 5), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
As per claim 6, while the compound above shows a symmetrical substitution of the N-R groups, in Formula (I), Rota Matir does not require that the N-R groups are symmetrically substituted. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the phenyl groups in an asymmetrical fashion and arrive at a compound of the claimed invention.
Rota Matir includes each element claimed, with the only difference between the claimed invention and Rota Matir being a lack of the aforementioned combination being explicitly stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of organic electroluminescent devices with higher efficiencies, higher color purity, and higher stability than other emitters with comparable color (Page 1, Paragraph 5), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
As per claims 13 and 14, Rota Matir teaches sub-formulae of Formula (I) include Formula If-9
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and Formula Ig-7
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. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to replace the phenyl substituents off of the N-Phenyl group in the compound above with two tert-butyl substituents. When modified in this way, the modified compound reads on claim 13 wherein b4 is 2 and each occurrence of R4 is represented by Formula 9-7. The modified compound is the same as claimed compound 14
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in claim 14.
Rota Matir includes each element claimed, with the only difference between the claimed invention and Rota Matir being a lack of the aforementioned combination being explicitly stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of organic electroluminescent devices with higher efficiencies, higher color purity, and higher stability than other emitters with comparable color (Page 1, Paragraph 5), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
As per claims 15 – 20, Rota Matir does not specifically teach the use of the compound above in a device. Rota Matir teaches:
An organic light-emitting device comprising a first electrode, a second electrode, and an organic layer arranged between the first electrode and the second electrode and comprising an emission layer, wherein the first electrode is an anode, the second electrode is a cathode, the organic layer further comprises a hole transport region located between the first electrode and the emission layer and an electron transport region located between the emission layer and the second electrode, wherein the hole transport region comprises a hole injection layer, a hole transport layer, an electron blocking layer, a buffer layer, or a combination thereof, and the electron transport region comprises a hole blocking layer, an electron transport layer, an electron injection layer, or a combination thereof (Page 77, Paragraph 2: “When the optoelectronic device is an OLED, it may, for example, having the following layer structure: 1. Substrate 2. Anode layer A, 3. Hole injection layer HIL, 4. Hole transport layer HTL, 5. Electron blocking layer EBL, 6. Emitting layer, EML, 7. Hole blocking layer HBL, 8. Electron transport layer ETL, 9. Electron injection layer, EIL, 10. Cathode layer.” As an organic light-emitting device is an electronic apparatus, Rota Matir meets the limitations of claim 20.)
Wherein the emission layer comprises the condensed cyclic compound (Page 73, Paragraph 3: “A preferred embodiment relates to the use of an organic molecule according to the invention as a luminescent emitter in an optoelectronic device.”)
Wherein the emission layer further comprises a host, and the content of the host is greater than a content of the condensed cyclic compound (Page 74, Paragraph 5: “In a particular embodiment, the light-emitting layer EML comprises (or essentially consists of) a composition comprising or consisting of: (i) 0.1 to 10% by weight… of one or more organic molecules according to the invention; (ii) 5 – 99% by weight… of at least one host compound H.”)
Wherein the emission layer emits blue light having a maximum emission wavelength of about 400 nm to about 490 nm (Page 1, Paragraph 5: “According to the present invention… the organic molecules exhibit in particular emission maxima between 420nm and 520 nm, preferably between 440nm and 495nm.”)
Rota Matir teaches an anode, a cathode, and an organic layer and that the compound is in the organic layer as discussed above. It would have been obvious to use the compound in the organic layer with the device structure of Rota Matir as Rota Matir demonstrates this device structure was known prior to the effective filing date of the claimed invention.
Conclusion
Applicant's amendment necessitated any 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA N CHANDHOK whose telephone number is (571)272-5780. The examiner can normally be reached on Monday through Friday from 6:30 - 3:30.
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, Marla McConnell can be reached on (571) 270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNA N CHANDHOK/Primary Examiner, Art Unit 1789
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