DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites the phrase “by one of Formulae 3 and 4”. Applicants are advised to amend this phrase to recite by one of Formulae 3 or 4”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: Claim 11 refers back to claim 1 multiple times, e.g. “as in claim 1”. Given that the claims recites “The heterocyclic compound of claim 1”, Applicants are advised to delete all other references to claim 1. Appropriate correction is required.
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.
Claim 2 is 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 2 recites the limitations “X11 to X18 and X21 to X28 are each not N, and one or two of X11 to X18 and X21 to X28 are each N”. The combination of these two limitations renders the scope of the claim indefinite for the following reasons. If X11 to X18 and X21 to X28 are each not N it is unclear how one or two of X11 to X18 and X21 to X28 can be N. That is, the first limitation requires that all of X11 to X18 and X21 to X28 -are necessarily not N, while the second limitation requires that one or two of X11 to X18 and X21 to X28 are N, which is necessarily excluded by the first limitation. Thus, it is unclear how one can simultaneously meet both these limitations.
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 of this title, 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:
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 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Danz et al (US 2019/0177303).
Regarding claim 1, Danz et al discloses the following compound (Page 72):
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This compound corresponds to the heterocyclic compound represented by Formula 1:
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where:
X11 to X18 and X21 to X28 are C(R11) to C(R16) and C(R21) to C(R288);
R12, R16, R22 and R26 are C1 alkyls;
R11, R13 to R15, R17 to R18, R21, R23 to R24, R25, and R27 to R28 are hydrogen;
R40 is an unsubstituted C6 aryl group;
R30 is s hydrogen;
R40 is a cyano group;
L11 and L12 are C6 carbocyclic groups;
L13 is a C3 heterocyclic group; and
the compound comprises one (1) CN group on L12 as required by the present claims.
The difference between the compound disclosed by the reference and that claimed is in the bonding arrangement of L11-L13-L12, i.e. the reference discloses the following bonding arrangement:
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while the claims require that L11 is represented by Formula 2, L12 is represented by either Formula 3 or 4, and L13 is represented by one of Formulas 2 to 4, i.e.
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Accordingly, the compound disclosed by the reference and that claimed are isomers - compounds having the same radicals in physically different positions on the same nucleus, and the courts have held, as found in In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977), that compounds which are isomers “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”.
In light of the case law cited above, it therefore would have been obvious to one of ordinary skill in the art that the compound disclosed in the present claims is but an obvious variant of the compound disclosed in reference, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 13, Danz et al teaches all the claim limitations as set forth above. Additionally, the reference discloses an organic light emitting device with the following layer structure ([0314]-[0324):
substrate / anode / hole injection layer / hole transport layer / electron blocking layer / emitting layer / hole blocking layer / electron transport layer / electron injection layer / cathode.
Accordingly the reference discloses an organic light emitting device comprising a first electrode, i.e. anode, a second electrode, i.e. cathode, and an organic layer comprising a light emitting layer disposed between the anode and cathode.
Regarding claim 14, Danz et al teaches all the claim limitations as set forth above. From the discussion above, the reference discloses the following organic light emitting device:
substrate / anode / hole injection layer / hole transport layer / electron blocking layer / emitting layer / hole blocking layer / electron transport layer / electron injection layer / cathode,
where the first electrode is an anode, the second electrode is the cathode, the hole injection, hole transport and electron blocking layers correspond to the recited hole transport layer and is disposed between the anode and the light emitting layer; the hole blocking, electron transport and electron injection layers correspond to the recited electron transport layer and is disposed between the light emitting layer and the cathode.
Regarding claim 15, Danz et al teaches all the claim limitations as set forth above. Additionally, the reference discloses that the light emitting layer comprises the disclosed compound ([0238]).
Regarding claim 16, Danz et al teaches all the claim limitations as set forth above. Additionally, the reference discloses that the light emitting layer comprises the disclosed compound as a host ([0239]) and another compound as an emitter or dopant ([0241]), where the amount of the host is 40 to 89 wt. % and the amount of the dopant from 10 to 30 % ([0267]-[0269]). Accordingly, the content of the host is greater than the dopant as recited in the present claim.
Regarding claim 17, Danz et al teaches all the claim limitations as set forth above. Additionally, the reference discloses that the compound has an emission wavelength in the range from 380 to 800 nm ([0215]-[0216]). Accordingly, a light emitting layer comprising the disclosed compound would possess an emission wavelength overlapping the recited range of about 410 to about 490 nm.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 18, Danz et al teaches all the claim limitations as set forth above. Additionally, the reference discloses that the compound can be utilized as a hole injection material in an organic light emitting device ([0224]). Given that the reference discloses an organic light emitting device comprising a hole injection layer, it is clear that the hole transport region i.e. the region comprising the hole injection layer, comprises the disclosed compound.
Regarding claim 19, Danz et al teaches all the claim limitations as set forth above. Additionally, the reference discloses that the compound can be utilized as an electron transport material in an organic light emitting device ([0224]). Given that the reference discloses an organic light emitting device comprising an electron transport layer, it is clear that the electron transport region i.e. the region comprising the electron transport layer, comprises the disclosed compound.
Regarding claim 20, Danz et al teaches all the claim limitations as set forth above. Additionally, the reference discloses that the compound can be utilized as a hole blocking material in an organic light emitting device ([0224]). As discussed above the reference discloses the device structure:
substrate / anode / hole injection layer / hole transport layer / electron blocking layer / emitting layer / hole blocking layer / electron transport layer / electron injection layer / cathode.
Thus, the electron transport layer comprises the hole blocking layer, and the hole blocking layer is in direct contact with the emission layer as recited in the present claim.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Adachi et al (US 2017/0213974).
Regarding claim 1, Adachi et al discloses the following compound (Page 60):
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This compound corresponds to the heterocyclic compound represented by Formula 1:
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where:
X11 to X18 and X21 to X28 are C(R11) to C(R18) and C(R21) to C(R28);
R11 to R18 and R21 to R28 are H; and
rings A4 and A5 are C6 carbocyclic rings;
L12 is represented by Formula 3:
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where R40 is hydrogen. L13 is represented by Formula 4:
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where R50 is CN; and a50 is two (2)
The difference between the compound disclosed by the reference is that in the compound disclosed by the reference L11 corresponds to Formula 3:
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while the claim requires that L11 corresponds to Formula 2. Accordingly, the compound disclosed by the reference and that claimed as isomers - compounds having the same radicals in physically different positions on the same nucleus, and the courts have held, as found in In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977), that compounds which are isomers “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”.
In light of the case law cited above, it therefore would have been obvious to one of ordinary skill in the art that the compound disclosed in the present claims is but an obvious variant of the compound disclosed in the reference, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 2, Adachi et al teaches all the claim limitations as set forth above. As discussed above, X11 to X18 and X21 to X28 are each C, i.e. not N.
Regarding claim 3, Adachi et al teaches all the claim limitations as set forth above. As discussed above, rings A3, A4, and A5 are all benzene rings.
Regarding claim 4, Adachi et al teaches all the claim limitations as set forth above. As discussed above, rings A3, A4, and A5 are all benzene rings.
Regarding claim 5, Adachi et al teaches all the claim limitations as set forth above. From the discussion above, L12 corresponds to M-1:
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and L13 corresponds to P-1:
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L12 does not correspond to one of M-1 to M9 or P1 to P-5; however, as discussed above, the compound disclosed by the reference and that claimed as isomers - compounds having the same radicals in physically different positions on the same nucleus, and the courts have held, as found in In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977), that compounds which are isomers “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”.
In light of the case law cited above, it therefore would have been obvious to one of ordinary skill in the art that the compound disclosed in the present claims is but an obvious variant of the compound disclosed in the reference, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 6, Adachi et al teaches all the claim limitations as set forth above. From the discussion above, R11 to R18, R21 to R28, R30 and R40 are hydrogen; and R50 is a cyano group.
Regarding claim 7, Adachi et al teaches all the claim limitations as set forth above. From the discussion above, R11 to R18, R21 to R28, R30 and R40 are hydrogen; and R50 is a cyano group.
Regarding claim 8, Adachi et al teaches all the claim limitations as set forth above. From the discussion above, R30 and R40 are hydrogen; and R50 is a cyano group.
Regarding claim 9, Adachi et al teaches all the claim limitations as set forth above. From the discussion above, the number of cyano groups is two (2).
Regarding claim 10, Adachi et al teaches all the claim limitations as set forth above. From the discussion above, R11 to R18, R21 to R28, R30 and R40 are hydrogen; and two (2) R50’s are cyano groups; and the total number of cyano groups is two (2).
Regarding claim 11 Adachi et al teaches all the claim limitations as set forth above. From the discussion above, the reference discloses an isomer corresponding to Formulas 10-1 to 10-6.
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Regarding claim 12, Adachi et al teaches all the claim limitations as set forth above. From the discussion above, the reference discloses isomers of Compounds 152, 404, etc. - compounds having the same radicals in physically different positions on the same nucleus, and the courts have held, as found in In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977), that compounds which are isomers “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”.
In light of the case law cited above, it therefore would have been obvious to one of ordinary skill in the art that the compound disclosed in the present claims is but an obvious variant of the compound disclosed in the reference, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 13, Adachi et al teaches all the claim limitations as set forth above. Additionally, the reference discloses an organic photoluminescent device, i.e. an organic light emitting device, comprising an anode and a cathode, i.e. pair of electrodes ([0086]); and an organic layer disposed between the electrodes, where the organic layer comprises a light emitting layer ([0086]).
Regarding claim 14, Adachi et al teaches all the claim limitations as set forth above. Additionally, the reference discloses the following organic light emitting device (Figure 1 and [0086]):
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where the first electrode is an anode (2); the second electrode is a cathode (7); the hole injection (3) and hole transport layers (4) correspond to the recited hole transport region and disposed between the anode (2) and the light emitting layer (5); and the electron transport layer (6) corresponds to the recited electron transport region between the light emitting layer (5) and the cathode (7).
Regarding claim 15, Adachi et al teaches all the claim limitations as set forth above. Additionally, the reference discloses that the light emitting layer comprises the disclosed compound ([0100]-[0112]).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,800,797 (U.S. ‘797).
Claim 1 of U.S. ‘797 recites a heterocyclic compound represented by Formula 1:
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identical to Formula 1 recited in instant claim 1. The only difference between the claim 1 of the instant application and U.S. ‘797 is that claim 1 of U.S. ‘797 recites an organic light emitting device not recited in instant claim 1. Accordingly, claim 1 of U.S. ‘797 encompasses the subject matter of instant claim 1.
Further it is noted that:
Claim 2 of U.S. ‘797 recites subject matter identical to instant claim 2.
Claim 3 of U.S. ‘797 recites subject matter identical to instant claim 3.
Claim 4 of U.S. ‘797 recites subject matter identical to instant claim 4.
Claim 5 of U.S. ‘797 recites subject matter identical to instant claim 5.
Claim 6 of U.S. ‘797 recites subject matter identical to instant claim 6.
Claim 7 of U.S. ‘797 recites subject matter identical to instant claim 7.
Claim 8 of U.S. ‘797 recites subject matter identical to instant claim 8.
Claim 9 of U.S. ‘797 recites subject matter identical to instant claim 9.
Claim 10 of U.S. ‘797 recites subject matter identical to instant claim 10.
Claim 11 of U.S. ‘797 recites subject matter identical to instant claim 11.
Claim 12 of U.S. ‘797 recites subject matter identical to instant claim 12.
Claim 1 of U.S. ‘797 recites subject matter encompassing the subject matter of instant claim 13.
Claim 13 of U.S. ‘797 recites subject matter identical to instant claim 14.
Claim 1 of U.S. ‘797 recites subject matter encompassing the subject matter of instant claim 15.
Claim 1 of U.S. ‘797 recites subject matter encompassing the subject matter of instant claim 16.
Claim 14 of U.S. ‘797 recites subject matter identical to instant claim 17.
Claim 15 of U.S. ‘797 recites subject matter identical to instant claim 18.
Claim 16 of U.S. ‘797 recites subject matter identical to instant claim 19.
Claim 17 of U.S. ‘797 recites subject matter identical to instant claim 20.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER C. KOLLIAS whose telephone number is (571)-270-3869. The examiner can normally be reached on Monday-Friday, 8:00AM – 5:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached on (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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/ALEXANDER C KOLLIAS/Primary Examiner, Art Unit 1786
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