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 .
DETAILED ACTION
Claims 1-19 of S. Kim et al., US 18/240,207 (May 27, 2021) are pending and are rejected.
Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). A claim is indefinite when it contains words or phrases whose meaning is unclear. MPEP § 2173.05(e) (citing In re Packard, 751 F.3d 1307, 1314, 110 USPQ2d 1785, 1789 (Fed. Cir. 2014)).
Unclear Claim Language – Claim 7
Claim 7 is rejected under 35 U.S.C. 112(b) as indefinite because the following bolded text is unclear in view of the specification:
7. The electronic apparatus of claim 6, further comprising:
a thin-film transistor electrically connected to the first electrode;
an emission layer between the first electrode and the second electrode and not overlapping the photoactive layer;
and a color filter, a color conversion layer, a touch screen layer, a polarizing layer, or any combination thereof.
The bolded text is unclear because the relationship between the “emission layer” and the “photoactive layer” (structural or otherwise) is undefined in the specification and unclear to one of skill. As such, one of skill cannot know how the claim 7 limitation of “emission layer . . . not overlapping the photoactive layer” is met.
The specification teaches Figs. 1 and 2 as follows, where “photoactive layer” and an “emission layer” are part of separate device embodiments:
Descriptions of FIGs. 1 and 2
[00113] FIG. 1 is a schematic view of an opto-electronic device 30 according to one or more embodiments of the present disclosure. The opto-electronic device 30 may include a first electrode 110, a hole transport region 120, a photoactive layer 135, an electron transport region 140, and a second electrode 150.
[00114] FIG. 2 is a schematic view of a light-emitting device 10 according to one or more embodiments of the present disclosure. The light-emitting device 10 may include a first electrode 110, a hole transport region 120, an emission layer 130, an electron transport region 140, and a second electrode 150.
Specification at page 21.
The specification never specifically defines either of the “photoactive layer” or the “emission layer”. See specification at pages 36-37, [00168]-[00176] (discussing “emission layer”); Id. at page 61 [00252]-[00254] (discussing “photoactive layer”). The specification does not teach any embodiment having both a “photoactive layer” and an “emission layer” and discusses each of these terms in separate devices.
The most relevant specification teaching regarding the claim 7 language at issue is as follows:
[0053] In one or more embodiments, the electronic apparatus may further include a thin-film transistor electrically connected to the first electrode, an emission layer between the first electrode and the second electrode and not overlapping the photoactive layer, and a color filter, a color conversion layer, a touch screen layer, a polarizing layer, or any combination thereof.
Specification at page 8, [0053]. However, this is the same language as used in claim 7 and does resolve the issue of clarity. In sum, the claim 7 language:
Claim 7 . . . an emission layer between the first electrode and the second electrode and not overlapping the photoactive layer . . .
is indefinite because the specification teaches no structural (or other) relationship between the “photoactive layer” and the “emission layer”, nor any embodiment containing both of these elements or even how these two elements are different from one another. In this regard, the plain language of “photoactive layer” should encompass the term “emission layer”. Further, one of skill cannot determine how the claim 7 limitation of “emission layer . . . not overlapping the photoactive layer” is met. This is particularly evident when the specification does not give any guidance as to what “overlapping” means in claim 7’s structural context.
Claim Rejections - 35 USC § 102 (AIA )
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.
§ 102(a)(1)/(2) Rejection over J. Ferraris et al., US 5,274,058 (1993) (“Ferraris”)
Claims 9-18 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by J. Ferraris et al., US 5,274,058 (1993) (“Ferraris”). Ferraris discloses compounds that anticipate the claimed genera. See compounds at Ferraris Figs. 9, 19, and 22-28; For example, Ferraris discloses the following compound XVa:
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(XVa)
See Ferraris at Fig. 19. The compound meets each and every limitation of claim 9 when X1 and X2 are S, a1 and a2 are zero (i.e., T1 and T2 are both H), and Z1 and Z2 are both -C≡N.
This compound meets the limitations of claim 10, Formula 2-3 when X1 and X2 are S, a2 is zero, Z1 and Z2 are both -C≡N, T12 and T13 are both H.1
This compound meets the limitations of claim 11, Formula 3-1 when X1 and X2 are S, Z1 and Z2 are both -C≡N, T11, T12, T21, and T22 are all H.
The limitations of claim 12 are clearly met.
The limitations of claim 13 are clearly met when both L1 and L2 are a single bond.
The limitations of claim 14 are clearly met when both L1 and L2 are a single bond.
The limitations of claim 15 are clearly met when both of Z1 and Z2 are both -C≡N.
The limitations of claim 16 are clearly met because (per base claim 9) R1 and R2 may alternatively be absent in claim 16. That is, per base claim 9, R1 and R2 are recited as part of variables T1 and T2 as follows:
T1 is *-(L1)b1-(R1)c1,
T2 is *-(L2)b2-(R2)c2,
where
b1 and b2 are each independently an integer from 0 to 3,
c1 and c2 are each independently an integer from 0 to 10,
Thus, although claim 16 recites “at least one selected from among R1 and R2 is: -F, -Cl, -Br, -I, -CN, -CF3, or a C1-C12 alkyl group; or -C(=O)(Q1) or -C(=O)O(Q1)”, neither of R1 or R2 need be present in claim 16 because (per base claim 9) all of b1, c1, b2, and c2 can be zero. In other words, the base claim 9 recitation that all of b1, c1, b2, and c2 to be zero, is incorporated into dependent claim 16 per § 112(d).
The limitations of claims 17 and 18 are clearly met because in the cited compound both of Z1 and Z2 are -C≡N.
§ 102(a)(1) Rejection over T. Okura et al., JP 2022027575 A (published Feb. 2, 2022) (“Okura”)
Claims 1, 6 and 8-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by T. Okura et al., JP 2022027575 A (published Feb. 2, 2022) (“Okura”).
An English-machine language translation (Google Translate) is attached as the second half of reference Okura. Okura thus consists of 91 total pages (including the English-language portion). Accordingly, this Office action references Okura page numbers in the following format “xx of 91”.
Okura teaches that in perovskite type solar cells, a hole transport material for a photoelectric conversion element is often used in the element to enhance the function of selectively transporting holes to improve the photoelectric conversion efficiency. Okura at page 57 of 91, 4th paragraph.
Okura teaches a hole transporting material for use in a photoelectric conversion element in perovskite-type solar cells; where the hole transporting material is represented by the general formula (1) and that may be used in combination with the compound represented by the general formula (3). Okura at page 57 of 91, first eight paragraphs under “Description”.
Okura teaches that as shown in the schematic cross-sectional view of FIG. 1, the photoelectric conversion element of the present invention has a conductive support (electrode) 1, an electron transport layer 2, a photoelectric conversion layer 3, an intermediate layer 4, a hole transport, a layer 5 and a counter electrode 6. Okura at page 60 of 91, 12th paragraph.
Okura’s disclosed photoelectric conversion element meets each and every opto-electronic device limitation of claim 1.
Instant claim 1. An opto-electronic device comprising:
a first electrode;
a second electrode facing the first electrode;
a photoactive layer between the first electrode and the second electrode . . .
where Okura’s “photoelectric conversion layer 3” corresponds to the instant claim 1 “photoactive layer”.
Okura discloses species of formula (3) that fall within the instant claim 1 genus of Formula 1. See, Okura at pages 69-72.
For example, Okura discloses the following species B-1 (for use in the disclosed hole transport layer) that fall within the genus of claim 1 Formula 1:
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Okura compound B-1 meets each and every structural limitation of claim 1, Formula 1 when X1 and X2 are S, Z1 and Z2 are both -C≡N; T1 is *-(L1)b1-(R1)c1, c1 is 1 and R1 is H, b1 is 1 and L1 is phenyl, substituted by R10a, where R10a is -N(Q31)(Q32) and Q31 and Q32 are phenyl (i.e., per claim 1 “a C3-C60 carbocyclic group”) substituted by methoxy (i.e., per claim 1 “C1-C60 alkoxy group”) and T2 is *-(L2)b2-(R2)c2, and has the same meaning as T1 above.
In working Example 3, referencing the procedure of Example 1, Okura prepares photoelectric conversion element including electron transport layer made of tin oxide formed on an ITO substrate as the conductive support (i.e., the claimed first electrode), a perovskite layer (i.e., the Okura photoelectric conversion layer 3, corresponding to the claim 1 photoactive layer) on the electron transport layer, a hole transport layer comprising compound A-1 and above compound B1, then gold is vapor-deposited on the hole transport layer of the formed device to form a counter electrode (the claim 1 second electrode). Okura at page 87 of 91 (Example 3).
Okura’s working Example 3 meets each and every limitation of claim 1 and claim 1 is anticipated.
Respecting claims 6 and 8, Okura teaches that and the current-voltage characteristics between the negative electrode (ITO) and the positive electrode was measured using a source meter (Keisley, 2400 type) and the short-circuit photocurrent (Jsc), open circuit voltage (Voc), fill factor (FF), and photoelectric conversion efficiency (PCE) (%) are measured from the measurement results; calculated. Table 1. Okura at page 86 of 91, 2nd to last paragraph; data in Table 1, row 3. Thus, Okura meets the further claim 6 limitation of “an electronic apparatus comprising the opto-electronic device of claim 1”. The further limitations of claim 8 are met because the Keithley 2400 type source meter is, per claim 8, a flat panel display. See, Series 2400 SourceMeter, Quick Start Guide (2011) (see page 1-3).
Claim 9 is anticipated because Okura discloses the following species B-1 that fall within the genus of claim 9 Formula 1:
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Okura compound B-1 meets each and every structural limitation of claim 9, Formula 1 when X1 and X2 are S, Z1 and Z2 are both -C≡N; T1 is *-(L1)b1-(R1)c1, c1 is 1 and R1 is H, b1 is 1 and L1 is phenyl, substituted by R10a, where R10a is -N(Q31)(Q32) and Q31 and Q32 are phenyl (i.e., per claim 1 “a C3-C60 carbocyclic group”) substituted by methoxy (i.e., per claim 1 “C1-C60 alkoxy group”) and T2 is *-(L2)b2-(R2)c2, and has the same meaning as T1 above.
Okura compound B-1 meets the limitations of claim 10, Formula 2-3 when X1 and X2 are S, Z1 and Z2 are both -C≡N, T2 is as defined above, T13 is H (see footnote 1); T12 is T1 as defined above.
This compound meets the limitations of claim 11, Formula 3-1 when X1 and X2 are S, Z1 and Z2 are both -C≡N, T11 and T21 are H (see footnote 1 above); and T12 and T22 are T1 as defined above.
The limitations of claim 12 are clearly met.
The limitations of claims 13 and 14 are clearly met where in the groups:
T1 is *-(L1)b1-(R1)c1,
T2 is *-(L2)b2-(R2)c2,
“L1 and L2 are each independently a single bond” and R1 and R2 are “a C3-C60 carbocyclic group . . . substituted with at least one R10a” and R10a is -N(Q31)(Q32) and Q31 and Q32 are each “C3-C60 carbocyclic group” that is “substituted with . . . a C1-C60 alkoxy group”.
The limitations of claim 15 are clearly met when both of Z1 and Z2 are both -C≡N.
The limitations of claim 16 are clearly met because (per base claim 9) R1 and R2 may alternatively be absent in claim 16. That is, per base claim 9, R1 and R2 are recited as part of variables T1 and T2 as follows:
T1 is *-(L1)b1-(R1)c1,
T2 is *-(L2)b2-(R2)c2,
where
b1 and b2 are each independently an integer from 0 to 3,
c1 and c2 are each independently an integer from 0 to 10,
Thus, although claim 16 recites “at least one selected from among R1 and R2 is: -F, -Cl, -Br, -I, -CN, -CF3, or a C1-C12 alkyl group; or -C(=O)(Q1) or -C(=O)O(Q1)”, neither of R1 or R2 need be present in claim 16 because (per base claim 9) each of c1 and c2 can be zero. Here the cited compound meets the claim 16 structural limitations when “L1 and L2 are each independently C5-C30 carbocyclic group . . . substituted with at least one R10a” and R10a is -N(Q31)(Q32) and Q31 and Q32 are each “C3-C60 carbocyclic group” that is “substituted with . . . a C1-C60 alkoxy group” and R1 and R2 are absent (i.e., c1 and c2 are zero”
The limitations of claims 17 and 18 are clearly met because in the cited compound both of Z1 and Z2 are -C≡N.
§ 102(a)(1) Rejection over M. Shan et al., CN 109438469 A (2019) (“Shan”)
Claims 1-3, 5, and 9-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by M. Shan et al., CN 109438469 A (2019) (“Shan”).
An English-machine language translation (Google Translate) is attached as the second half of reference Shan. Shan thus consists of 24 total pages (including the English-language portion). Accordingly, this Office action references Shan page numbers in the following format “xx of 24”.
Shan teaches the following four thiophene containing organic optoelectronic compounds for use as the emitting layer in organic electroluminescent devices.
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Shan at page 17 of 24, [0020]. Each of these compounds meets each and every structural limitation of instant Formula 1 (per device claims 1-3 and 5) when:
T1 is *-(L1)b1-(R1)c1,
T2 is *-(L2)b2-(R2)c2,
“L1 and L2 are each independently a single bond” R1 and R2 are “a C3-C60 carbocyclic group . . . substituted with at least one R10a” and R10a is “a C1-C60 heterocyclic group”. Alternatively, the instant Formula 1 structural limitations are met when “L1 and L2 are each independently a C5-C30 carbocyclic group . . . substituted with at least one R10a” and R10a is “a C1-C60 heterocyclic group” and R1 and R2 are absent or are H.
structural groups synthesized in the present invention are used as the emitting layer in organic electroluminescent devices, generally including an ITO conductive glass substrate 1 (anode) and a hole injection layer 2 (molybdenum trioxide) stacked sequentially. MoO3), hole transport layer 3 [N,N'-diphenyl-N,N'-(1-naphthyl)-1,1'-biphenyl-4,4'-diamine (NPB)], light-emitting layer 4 [tris(8-hydroxyquinoline)aluminum (Alq3), a compound containing a thiophene structure group synthesized in this invention or a phosphorescent complex doped with it as the main material], hole blocking layer 5 [2,9-dimethyl-4,7-diphenyl-1,10-o-phenanthroline (BCP)], electron transport layer 6 [a compound with bipolar carrier transport performance synthesized in this invention or 1,3,5-tris(1-naphthyl-1H-benzimidazol-2-yl)benzene (TPBI)], electron injection layer 7 (LiF) and cathode layer 8 (Al). Shan at page 17 of 24, [0024].
In subsequent working examples, Shan teaches organic electroluminescent devices fabricated with, MoO3 (hole injection layer), hole transport layer, light-emitting layer, BCP, electron transport layer, and 1nm LiF and 120nm Al are sequentially deposited on a cleaned conductive glass (indium tin oxide) substrate. Shan at pages 20-21 of 24, [0050]-[0064] (data in the Table at page 21). Shan teaches that the device shown in Figure 1 is obtained by this method, and can be divided into the following according to different functional layers of the device, where compounds 1-4 are used in the light-emitting layer.
Instant claims 1 and 2 are clearly anticipated by Shan’s above-cited organic electroluminescent devices because Shan’s devices comprise (per claim 1):
Claim 1 . . . a first electrode
a second electrode facing the first electrode;
a photoactive layer between the first electrode and the second electrode; and
an organic compound represented by Formula 1:
where (per claim 2), the “the photoactive layer comprises the organic compound”.
The limitations of claims 3 and 5 are met for the following reasons. Claim 3 is schematically summarized by the Examiner as follows:
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Claim 3 is the same arrangement as Shan Fig. 1 except that Shan does not state that there is some line of demarcation in the light emitting layer, such that the light emitting layer is two layers. Claim 3 is anticipated by Shawn because Shan’s light emitting (or photoreactive) layer can be said to be two layers having an arbitrarily placed, invisible dividing line. Note that the specification does not define the term “adjacent”, where the plain meaning is next to. See specification at page 112, [00445]. The limitations of claim 3 are thus clearly met. The limitations of claim 5 are met because the Shan combined layer of the light-emitting layer 4 (comprising a compound 1, 2, 3, or 4) and hole blocking layer 5 is itself “a layer”, which may correspond to the claim 3 “second layer”, and which is in direct contact with Shan’s electron transport layer 6. See specification at page 112, [00445]. Furthermore, the specification teaches that in some instances the layers may overlap and be a common layer. Specification at page 9, [0055].
Respecting compound claim 9, each of Shan compounds 1-4 above meet each and every structural limitation, where:
T1 is *-(L1)b1-(R1)c1,
T2 is *-(L2)b2-(R2)c2,
“L1 and L2 are each independently a single bond” R1 and R2 are “a C3-C60 carbocyclic group . . . substituted with at least one R10a” and R10a is “a C1-C60 heterocyclic group”. Alternatively, the claim 9 structural limitations are met when “L1 and L2 are each independently a C5-C30 carbocyclic group . . . substituted with at least one R10a” and R10a is “a C1-C60 heterocyclic group” and R1 and R2 are absent or are H.
Shan compounds 1-4 meet the limitations of claim 10, Formula 2-3 when X1 and X2 are S, Z1 and Z2 are both -C≡N, T2 is as defined above, T13 is H (see footnote 1); T12 is T1 as defined above.
Shan compounds 1-4 meet the limitations of claim 11, Formula 3-1 when X1 and X2 are S, Z1 and Z2 are both -C≡N, T11 and T21 are H (see footnote 1 above); and T12 and T22 are T1 as defined above.
The limitations of claims 12-14 are clearly met.
The limitations of claim 15 are clearly met when both of Z1 and Z2 are both -C≡N.
The limitations of claim 16 are clearly met because (per base claim 9) R1 and R2 may alternatively be absent in claim 16. That is, per base claim 9, R1 and R2 are recited as part of variables T1 and T2 as follows:
T1 is *-(L1)b1-(R1)c1,
T2 is *-(L2)b2-(R2)c2,
where
b1 and b2 are each independently an integer from 0 to 3,
c1 and c2 are each independently an integer from 0 to 10,
Thus, although claim 16 recites “at least one selected from among R1 and R2 is: -F, -Cl, -Br, -I, -CN, -CF3, or a C1-C12 alkyl group; or -C(=O)(Q1) or -C(=O)O(Q1)”, neither of R1 or R2 need be present in claim 16 because (per base claim 9) each of c1 and c2 can be zero. Here the cited compound meets the claim 16 structural limitations when “L1 and L2 are each independently a C5-C30 carbocyclic group . . . substituted with at least one R10a” and R10a is “a C1-C60 heterocyclic group” and R1 and R2 are absent or are H.
The limitations of claims 17 and 18 are clearly met because in the cited compound both of Z1 and Z2 are -C≡N.
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 AIA 35 U.S.C. 103(a) 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.
Claims 6-8 are rejected under AIA 35 U.S.C. 103 as being unpatentable over M. Shan et al., CN 109438469 A (2019) (“Shan”) in combination with S. Yoon et al., US 2021/0257575 (2021) (“Yoon”).
M. Shan et al., CN 109438469 A (2019) (“Shan”)
As discussed in the § 102 section above, Shan teaches the following four thiophene containing organic optoelectronic compounds for use as the emitting layer in organic electroluminescent devices.
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Shan at page 17 of 24, [0020]. Shan teaches that these compounds are useful in organic electroluminescent devices that can be fabricated according to methods in the art. Shan at page 20 of 24, [0050]. As discussed in the § 102 rejection above, Shan’s foregoing disclosure meets each and every limitation of claim 1.
Differences between Shan and Claims 6-8
Shan does not specify the particular electronic apparatuses for which the disclosed organic electroluminescent devices are used within. Thus, Shan does not teach the claim 7 apparatus limitations of:
7. The electronic apparatus of claim 6, further comprising: a thin-film transistor electrically connected to the first electrode; an emission layer between the first electrode and the second electrode and not overlapping the photoactive layer; and a color filter, a color conversion layer, a touch screen layer, a polarizing layer, or any combination thereof.
Note the above 112(b) rejection of claim 7.
S. Yoon et al., US 2021/0257575 (2021) (“Yoon”)
Yoon teaches a light-emitting device including: a first electrode, a second electrode facing the first electrode, and an interlayer arranged between the first electrode and the second electrode and including an emission layer. Yoon at page 1, [0006]-[0009].
Yoon teaches that the light-emitting device can be employed in an electronic apparatus. Yoon at page 4, [0078]. Yoon teaches that the electronic apparatus may include a thin-film transistor including a source electrode and a drain electrode, and the first electrode of the light-emitting device may be electrically connected to the source electrode or the drain electrode. Yoon at page 4, [0078]. Yoon teaches that the electronic apparatus may further include a color filter, a color conversion layer, a touch screen layer, a polarizing layer, or any combination thereof. Yoon at page 4, [0078].
Yoon teaches that the electronic apparatus may be applied to various suitable displays, light sources, lighting, personal computers (for example, a mobile personal computer), mobile phones, digital cameras, electronic organizers, electronic dictionaries, electronic game machines, medical instruments (for example, electronic thermometers, sphygmomanometers, blood glucose meters, pulse measurement devices, pulse wave measurement devices, electrocardiogram displays, ultrasonic diagnostic devices, and/or endoscope displays), fish finders, various suitable measuring instruments, meters (for example, meters for a vehicle, an aircraft, and a vessel), projectors, and/or the like. Yoon at page 76, [0400].
Claims 6-8 Are Obvious over the Cited Art Combination
Claims 6-8 are obvious because one of ordinary skill is motivated to employ Shan’s organic electroluminescent device in the electronic apparatus disclosed by Yoon comprising (per claim 7) a thin-film transistor electrically connected to the first electrode; an emission layer between the first electrode and the second electrode; and a color filter, a color conversion layer, a touch screen layer, a polarizing layer; for example, in a computer monitor. One of ordinary skill thereby meets each and every limitation of claims 6-8. One of ordinary skill is so motivated because Shan teaches organic electroluminescent device and Yoon teaches an electronic apparatus for incorporation of an organic electroluminescent device for lighting purposes, for example, in lighting displays such as personal computers and mobile phones.
Claim Rejections 35 U.S.C. 112(a) – Written Description
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.
For an originally filed claim, 35 U.S.C. 112(a) requires that the specification shall contain a written description of the invention demonstrate that the inventor was in possession of the invention that is claimed.2 MPEP § 2163(I); MPEP § 2163(II)(A)(3)(a). Possession may be shown by disclosure of drawings or structural chemical formulas that show that the invention was complete. MPEP § 2163(I).
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus. MPEP § 2163(II)(A)(3)(a)(ii). A "representative number of species" means that the species which are adequately described are representative of the entire genus. MPEP § 2163(II)(A)(3)(a)(ii). Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. MPEP § 2163(II)(A)(3)(a)(ii) (citing AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014).
The written description requirement may be satisfied through disclosure of function and minimal structure when there is a well-established correlation between structure and function. MPEP § 2163(II)(A)(3)(a)(i). In contrast, without such a correlation, the capability to recognize or understand the structure from the mere recitation of function and minimal structure is highly unlikely. MPEP § 2163(II)(A)(3)(a)(i) (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406). Accordingly, a “sufficient description . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010). For genus claims using functional language, the written description "must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus." Ariad, 598 F.3d at 1349.
The § 112(a) rejection
Claim 4, which recites as follows:
4. The opto-electronic device of claim 3, wherein the first layer comprises a donor compound, and the second layer comprises the organic compound which is an acceptor compound, and
a lowest unoccupied molecular orbital (LUMO) energy level of the organic compound is less than a LUMO energy level of the donor compound.
is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because the application as filed does not disclose either sufficient species of “donor compound” or a structure-function correlation between the claimed compound of Formula 1 and the donor compound such that one of skill can recognize which combinations of Formula 1 and donor compound satisfy the claim 4 functional requirement that:
claim 4 . . . a lowest unoccupied molecular orbital (LUMO) energy level of the organic compound is less than a LUMO energy level of the donor compound.
MPEP § 2163(II)(A)(3)(a)(ii).
Claim Breadth
Claim breath is relevant to the § 112(a) written description rejection. The written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. MPEP § 2163(II)(A)(3)(a)(ii) (citing Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021)).
Here the breadth of “donor compound” is broad because is structure is completely undefined within claim 4. Further, the generic structure of Formula 1 is broad to the extent that, conservatively, it encompasses millions of compounds.
Guidance in the Art and Specification
Guidance in the art and specification is discussed in detail above. It is first noted that what is conventional or well known to one of ordinary skill in the art need not be disclosed in detail. MPEP § (II)(A)(3)(a). Thus, the state of and predictability in the art is a relevant consideration in determining compliance with § 112(a), written description. MPEP § (II)(A)(3)(a) (citing Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1085 (Fed. Cir. 2005) ("The ‘written description’ requirement must be applied in the context of the particular invention and the state of the knowledge…. As each field evolves, the balance also evolves between what is known and what is added by each inventive contribution”).
The specification teaches that:
[0046] For example, in some embodiments, the donor compound may be to absorb light. As the donor compound absorbs light, electrons at a highest occupied molecular orbital (HOMO) energy level in the donor compound may be transferred to a lowest unoccupied molecular orbital (LUMO) energy level in the donor compound to form excitons. The excitons may move to an interface between the first layer and the second layer within the first layer, and then may provide electrons to a LUMO energy level of the acceptor compound. An electron-hole pair may be formed at the interface. The acceptor compound may separate electrons and holes, and the separated electrons and holes may move to the electron transport region and the hole transport region, respectively.
Specification at page 7, [0046] (emphasis added).
With regard to determining LUMO energy, the specification teaches that quantum simulation was performed at the B3L YP/6-311 G** level based on the time-dependent density functional theory (TD-OFT) methodology by utilizing the Gaussian program, to measure energy levels in a structurally optimized state and an excited state (HOMO/LUMO energy levels). Specification at page 107, [00432]. As known in the art, a compound’s LUMO energy may be determined experimentally through the measurements of ionization potentials (IP) and electron affinities (EA) by cyclic voltammetry (CV). X. Tan et al., 177 Dyes and Pigments (2020) (see page 4, col. 1 “2.3. Electrochemical and thermal characterization”). HOMO and LUMO energy levels of OLED materials can also be theoretically predicted using density functional theory, which involves computationally demanding DFT calculations. F. Pereira et al., 57 Journal of Chemical Information and Modeling, 11-21 (2017).
SubPC is the only disclosed species of donor compound in the specification. That ius, in working Example 1, the specification teaches that boron subphthalocyanine chloride (SubPC) was used as a donor compound in combination with claimed compound 1. Specification at pages 108-110.
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The specification gives LUMO energies for only four claimed compounds. Specification at page 107 (Evaluation Example 1, Table 1). The art does not teach any listings of LUMO energies for the claimed compounds.
Original Claim 4 Lacks Adequate Written Description Support
Original claim 4 fails to comply with the written description requirement because the application as filed does not disclose either sufficient species of “donor compound” claimed compound pairs or a structure-function correlation between the claimed compound of Formula 1 and the donor compound such that one of skill can recognize which combinations of Formula 1 and donor compound satisfy the claim 4 functional requirement that:
claim 4 . . . a lowest unoccupied molecular orbital (LUMO) energy level of the organic compound is less than a LUMO energy level of the donor compound.
MPEP § 2163(II)(A)(3)(a)(ii).
Neither the art nor the specification teaches a well-established structure correlation between the LUMO energy and a particular compound. Rather, the LUMO energy must be determined experimentally. The specification teaches only one donor – claimed compound pair that meets the above functional requirement; that is claimed compound 1 (acceptor) and SubPc (donor). This is clearly not a representative number of species.
A "representative number of species" means that the species which are adequately described are representative of the entire genus. MPEP § 2163(II)(A)(3)(a)(ii); see also, Idenix Pharms. LLC v. Gilead Scis. Inc., 941 F.3d 1149, 1164 (Fed. Cir. 2019) (“[a]s a result, a POSA is deprived of any meaningful guidance into what compounds beyond the examples and formulas, if any, would provide the same result”). One of skill has no guidance from the art or specification regarding claimed compound -- donor pairs (outside of the single species disclosure) that can meet the claim 4 functional language.
Of course, here one of skill can simply test any particular subject compound of claim 1 formula 1 – donor part to determine whether is performs the claimed function. However, that is not the standard for recognizing or visualizing. A “sufficient description . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010).
Subject Matter Free of the Art of Record
Claim 4 is free of the art of record.
4. The opto-electronic device of claim 3, wherein the first layer comprises a donor compound, and the second layer comprises the organic compound which is an acceptor compound, and
a lowest unoccupied molecular orbital (LUMO) energy level of the organic compound is less than a LUMO energy level of the donor compound.
Claim 4 (dependent upon claim 3) is schematically summarized by the Examiner as follows:
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where one layer of the photoactive layer comprises the claimed compound of Formula 1 and one layer comprises the recited “donor compound”.
The closest art of record is M. Shan et al., CN 109438469 A (2019) (“Shan”), which reference is discussed in detail above.
As discussed in the § 102 section above, Shan teaches the following four thiophene containing organic optoelectronic compounds for use as the emitting layer in organic electroluminescent devices.
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Shan at page 17 of 24, [0020]. Shan teaches that these compounds are useful in organic electroluminescent devices that can be fabricated according to methods in the art. Shan at page 20 of 24, [0050]. As discussed in the § 102 rejection above, Shan’s foregoing disclosure meets each and every limitation of claim 1.
Differences between Shan and Claim 4
Shan differs in that it does not teach inclusion of a donor compound in the emission layer nor that such “donor compound” is related to the claimed compound (i.e., Shan compounds 1, 2, 3 or 4) such that “a lowest unoccupied molecular orbital (LUMO) energy level of the organic compound is less than a LUMO energy level of the donor compound”.
Secondary Reference S. Ihn et al, US 2017/0062752 (2017) (“Ihn”)
Ihn teaches an organic light-emitting device comprising a thin film that includes:
i) a combination of a donor compound and an acceptor compound, and
ii) a phosphorescent dopant,
wherein the donor compound and the acceptor compound form an exciplex. Ihn at page 1, [0008]-[0013].
Ihn teaches that the acceptor compound may be selected from compounds represented by Formulae A-1 and A-2 (which are structurally much different than the instantly claimed compounds of Formula 1) and the donor compound may be selected from a compound represented by Formula D-1. Ihn at page 4, [0068].
Ihn teaches that based on the energy differences HOMO/LUMO of the acceptor and the HOMO/LUMO of the donor compound, the donor compound may facilitate movement of holes while the acceptor compound may facilitate movement of electrons, thereby forming an exciplex at an interface between the donor compound and the acceptor compound efficiently. Ihn at page 3, [0059]-[0061].
Claim 4 Is Not Obvious over Shan
Claim 4 is not obvious over the cited art because one of ordinary skill is not motivated to combine Shan with Ihn. One of ordinary skill is not motivated to combine these references because there is no prior-art guidance/evidence of record that Shan’s cited compounds 1, 2, 3, or 4 (meeting the limitations of claim 1 Formula 1) could form an exciplex with a donor compound and thereby advantageously facilitate movement of electrons at an interface between the donor compound and the acceptor compound efficiently.
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 The claims permit variable T (i.e., T1, T2, T11, T12, T21, T22, T23) to be hydrogen for the following reasons. Per independent claims 1 and 9:
T1 is *-(L1)b1-(R1)c1,
T2 is *-(L2)b2-(R2)c2,
where b1/b2 is an integer from 0 to 3 and c1/c2 is an integer from 0 to 10. Since both of b1/b2 and c1/c2 can be zero (and also because R1 and R2 can be H) the total value of either of *-(L1)b1-(R1)c1 or *-(L2)b2-(R2)c2 can be H. Further, all dependent claims specify that variables T11, T12, T21, T22, T23 have the same meaning of T1.
2 While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, a question as to whether a specification provides an adequate written description may arise in the context of an original claim. MPEP § 2163.03 (V) (citing In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976)). An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. MPEP § 2163.03 (V) (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) ("[e]ven if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed”).