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.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Korea on November 7, 2022.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Status of Claims
This action is in reply to the communication filed on June 12, 2023.
Claims 1 – 20 are currently pending and have been examined.
Information Disclosure Statement
The references provided in the Information Disclosure Statement filed on June 12, 2023 have been considered. A signed copy of the corresponding 1449 form has been included with this office action.
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.
Claims 1 – 4 require an opto-electronic device with particular energetic relationships between the HOMO and LUMO levels of a first electron-donating compound and a second electron-accepting compound, with no actual structure required for either compound. Electron-donating compounds and electron-accepting compounds encompass a large number of groups and functional compounds. The specification only teaches 4 examples of suitable electron-donating compounds, with no discussion on the essential features of the compounds that would cause it to fall within or outside of the claimed relationship. The specification only teaches one Formula of the electron-accepting compound, also with no discuss on the essential features of the compounds that would cause it to fall within or outside of the claimed relationship, nor any discussion as to how to modify compounds outside of the formula to obtain compounds meeting the claimed energetic relationship. As such, it does not appear that Applicant has provided a sufficient number of species to adequately reflect the structural diversity of the claimed genus as required by the MPEP (See 2163-II-A-3-a-ii).
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 Hirose (US20220005872A1).
As per claims 1 – 9 and 11 – 18, Hirose teaches:
An opto-electronic device comprising a first electrode, a second electrode facing the first electrode and a photoactive layer arranged between the first electrode and the second electrode (Abstract: “A first solid-state imaging element according to an embodiment of the present disclosure includes a bottom-electrode; a top-electrode opposed to the bottom-electrode; a photoelectric conversion layer provided between the bottom-electrode and the top-electrode.”)
Wherein the photoactive layer comprises a first layer and a second layer, the first layer comprising a first compound and the second layer comprising a second compound that does not comprise a 5-membered ring, the first compound is an electron-donating compound and the second compound is an electron-accepting compound, wherein the first layer is arranged between the first electrode and the second layer and wherein the first layer is in contact with the second layer (In Table 4, Example 24, Hirose teaches a device wherein a compound represented by Formula (10)
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is used in a layer adjacent to a layer wherein a compound represented by Formula (5)
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is present. The compound represented by Formula (10) is interpreted as the claimed first compound and is the same as compound D1
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in claim 7 and does not contain a fullerene group as required by claim 6. In addition to the compound of Formula (5), Hirose teaches structurally similar compounds of Formula (16)
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([0280]). When a compound of Formula (16) is substituted for a compound of Formula (5) in Example 24, the compound reads on the claimed Formula wherein X1 and X2 are O; Y1 – Y4 are O and R1 and R2 are all hydrogen. The compound is the same as compound A5
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in claim 12.)
Further comprising a hole transport region arranged between the first electrode and the photoactive layer, and an electron transport region arranged between the photoactive layer and the second electrode, wherein the hole transport region comprise a hole injection layer, a hole transport layer, an emission auxiliary layer, an electron-blocking layer, or any combination thereof, the electron transport region comprises a buffer layer, a hole-blocking layer, an electron control layer, an electron injection layer, or any combination thereof, wherein the first layer is in contact with the hole transport region and wherein the second layer is in contact with the electron transport region ([0174]: “It is to be noted that any other layer, for example, a buffer film may be provided between the photoelectric conversion layer 63 and the bottom-electrode 61 and between the photoelectric conversion layer 63 and the top-electrode 64. In addition, for example, an undercoat layer, a hole transport layer, an electron blocking film, the photoelectric conversion layer 63, a hole blocking film, the buffer film, an electron transport layer, a work coefficient adjustment film, etc. may also be stacked in order from side on which the bottom-electrode 61 is located.” The photoelectric conversion layer is touching the electron blocking film, which is part of the hole transport region, and a hole blocking film, which is part of the electron transport region, as claimed.)
Wherein the photoactive layer is formed by vacuum deposition (In Example 2, as described in [0278], the layers are taught to be formed by vacuum deposition.)
Regarding claims 1 – 5, the prior art combination teaches substantially the same compounds as disclosed by Applicant, therefore, the properties of HOMO and LUMO levels and absorption wavelength are considered to naturally flow from the product of the prior art combination (and would be expected to fall within the range in the claim), absent evidence otherwise. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. When the structure recited in the prior art reference is substantially identical to that of the claims, claimed properties or functions are presumed to be present. Applicant bears responsibility for proving that the reference composition does not possess the characteristics recited in the claims.
Hirose includes each element claimed, with the only difference between the claimed invention and Hirose 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 enhanced electric characteristics ([0005]), 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 10, in addition to compounds of Formula (5) and Formula (16), Hirose also teaches structurally similar compound of Formula (13)
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. Therefore, it would also have been obvious to replace the compound of Formula (5) in Example 24 with a compound of Formula (13) which reads on the claimed Formula wherein X1 and X2 are N(Ar) and Ar aeach each a C6 aryl group substituted with on R10a wherein R10a is a C5 heterocyclic group; Y1 – Y4 are O and R1 and R2 are all hydrogen. While Hirose does not teach the HOMO and LUMO levels of the compound of Formula (13), the compound is structurally similar to compounds in the instant specification, such as compound A2
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, therefore, it is reasonable to assume that Formula (13) would meet the claimed energetic relationships.
Hirose includes each element claimed, with the only difference between the claimed invention and Hirose 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 enhanced electric characteristics ([0005]), 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 19, Hirose teaches:
An electronic apparatus comprising the opto-electronic device ([0001]: “The present disclosure relates to a solid-state imaging element including a photoelectric conversion layer that uses an organic semiconductor material, and a solid-state imaging apparatus including the solid-state imaging element.”)
As per claim 20, Hirose teaches:
The electronic apparatus further comprising a thin-film transistor electrically connected to the first electrode and a color filter, a color conversion layer, a touch screen layer, a polarizing layer, or any combination thereof (In [0076], Hirose teaches that the apparatus may be used in a transistor. Hirose further teaches that the device can use color filters ([0233]).
Conclusion
All claims are rejected.
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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