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 .
Election/Restrictions
Regarding the election of species requirement, Applicants elected, with traverse, the following species for examination:
Formula 1 Compound 1; and
Formula 2 Compound 6.
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In reply to the election of species requirement, Applicants identified claims 1-3, 5-7, 9-12, 14-19, 31 as encompassing the elected a species. Accordingly, claims 4, 8, 13 and 20-30 have been withdrawn from consideration as being drawn to non-elected species.
The examiner maintains that, even though the inventions of these groups require the technical feature of a compound of each of formula (1) and formula (2), this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Kim et al. (US 2017/0200899 A1; published 13 Jun 2017; as cited on the IDS filed 10 Jan 2025). Since the claimed technical feature does not make a contribution over the prior art, this technical feature is not a special technical feature and there is a lack of unity of invention amongst the different inventive groups.
Applicants argue that:
Applicants make no statement regarding the patentable distinctness of the species, but note that for restriction to be proper, there must be a patentable difference between the species as claimed. MPEP § 808.01(a). The burden is on the Examiner to provide reasons and/or examples to support any conclusion in regard to patentable distinction. MPEP § 803.
Applicants also argue that:
The election requirement of species is traversed on the basis that the Examiner has not shown a burden in a search and a search has not been extended.
For a U.S. application entering the national phase from a PCT under 35 U.S.C. § 371, the standard of Unity of Invention applies, rather than standard U.S. restriction practice. Unity of Invention does not require a showing of a search burden.
Regarding extending the search, in addition to the elected species, the examiner has extended the search to include compounds A47 and H81 from Kim et al. See below.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following elected claims are generic with respect to the elected species: claims 1-3, 5-7, 9-12, 14-19 and 31. However, no generic claim has been found allowable. See rejections below.
The requirement is still deemed proper and is therefore made FINAL. Applicant timely traversed the restriction (election) requirement in the reply filed on 27 January 2026.
Priority
The instant application claims priority as follows:
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Information Disclosure Statement
The information disclosure statements (IDS) submitted on 18 July 2023, 10 Jan 2025,
02 Sept 2025, and 10 Jun 2026 are in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. Each IDS was considered. A signed copy of each form 1449 is enclosed herewith.
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 framework for the objective analysis for determining obviousness under 35 U.S.C. 103 is stated in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Supreme Court in Graham are summarized as follows:
(A) Determining the scope and content of the prior art;
(B) Ascertaining the differences between the claimed invention and the prior art; and
(C) Resolving the level of ordinary skill in the pertinent art.
Objective evidence relevant to the issue of obviousness must be evaluated by Office personnel. Id. at 17-18, 148 USPQ at 467. The evidence may be included in the specification as filed, accompany the application on filing, or be provided in a timely manner at some other point during the prosecution. The weight to be given any objective evidence is determined on a case-by-case basis. The mere fact that an applicant has presented evidence does not mean that the evidence is dispositive of the issue of obviousness.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. See MPEP 2143.
Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation (TSM) in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
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.
First 103 Rejection
Claims 1-3, 5-7, 9-12, 14-19, 31 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et. al. (US 2017/0200899 A1; published 13 Jun 2017; as cited on the IDS filed 10 Jan 2025) in view of the combined teachings of Lecloux et al. (US 9577199 B2; issued 21 February 2017) and Tsuji et al. (Chem. Commun., 2014, 50, 14870).
Kim et. al. teach an organic electroluminescent element comprising: an anode; a cathode; and an organic layer disposed between the anode and the cathode and including a light emitting zone, wherein the organic layer comprises a layer containing an anthracene derivative and another layer containing a carbazole derivatives, the layer containing the anthracene derivative and the layer containing the carbazole derivative are different layers. See Example 1-1, starting at Para [0498] to Para [0501].
Regarding the layer containing the anthracene derivative and the layer containing the carbazole derivative being different layers, Kim et. al. teach that a carbazole derivatives was deposited on the substrate to form a hole injection layer, and another a carbazole derivatives was vacuum-deposited on the hole injection layer to form a hole transport layer to complete the formation of a hole transport region. See Para [0499]. Then, an anthracene derivative and a dopant were deposited to form an emission layer. See Para [0500].
Kim et. al. teach the following deuterated compounds that are embraced by generic claim 1:
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A47 at pages 72 H81 at page 48
Kim et al. don’t expressly disclose employing the deuterated anthracene and carbazole derivatives as components of an organic electroluminescent element.
Lecloux et al. and Tsuji et al. teach the value of, and provide motivation to create or obtain, deuterated anthracene and carbazole derivatives for use in electronic applications. Lecloux further instruct that the degree of deuteration should be between 50% and 100% deuterated, which is far in excess of the 1 mass % required to meet the claim limitation.
At the time of filing, it would have been obvious to substitute the deuterated anthracene derivative (H81 on pages 48) and the deuterated carbazole derivative (A47 on pages 72) taught by Kim et. al. in place of the non-deuterated anthracene and carbazole derivatives taught by Kim et al. in Example 1-1. The advantages of using deuterated components in electronics are taught by Lecloux et al. and Tsuji et al., thereby providing motivation to do so. In view of these teaching and the ordinary skill in the pertinent art, one of ordinary skill in the art would have a reasonable expectation of success.
Second 103 Rejection
Claims 1-3, 5-7, 9-12, 14-19, 31 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al. (US 10109804 B1; issued on 23 Oct 2018) in view of the combined teachings of Cha et al. (US 12114562 B2; filed 19 Jan 2020; priority to 18 June 2019), Lecloux et al. (US 9577199 B2; issued 21 February 2017) and Tsuji et al. (Chem. Commun., 2014, 50, 14870).
Nakano et al. teach an organic electroluminescent element comprising: an anode; a cathode; and an organic layer disposed between the anode and the cathode and including a light emitting zone, wherein the organic layer comprises a layer containing an anthracene derivative and another layer containing a carbazole derivatives, the layer containing the anthracene derivative and the layer containing the carbazole derivative are different layers.
Regarding the layer containing the anthracene derivative and the layer containing the carbazole derivative being different layers, Nakano et al. teach that the “emitting layer” comprises an anthracene derivative, and the “at least one layer between the emitting layer and the anode” comprises a carbazole derivative. See Abstract.
Regarding claim 31, Nakano et al. teach that the “organic EL device according to one aspect of the invention can be used as an electronic device including a display element such as an organic EL panel module; a display such as a TV, a mobile phone or a PC; and emitting devices such as lightings and lights for automobiles or the like.”
Nakano et al. don’t expressly disclose the particular species of deuterated anthracene and carbazole derivatives embraced by the claims of the instant application.
Regarding the deuterated carbazole derivative, Nakano et al. teach a non-deuterated derivative having a same structure, apart from deuteration, as the deuterated carbazole derivative of the elected species. See column 32, line 5.
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Nakano et al. teach that “In the present specification, a hydrogen atom includes isomers differing in number of neutrons, i.e. protium, deuterium and tritium.” See column 4, line 53.
Regarding the anthracene derivative, Nakano et al. teach a Markush structure embracing the elected species. See Nakano et al. for formula 1-2 found on column 14, line 3. Moreover, Cha et al. teach a deuterated derivative having the same structure (including the same deuteration pattern) as the deuterated anthracene derivative of the elected species. See Cha et al. for compound 2, found on column 10.
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Cha et al. also teach that, owing to the deuteration, the recited electronics are expected to have a long lifespan. Similarly, Lecloux et al. and Tsuji et al. teach the value of, and provide motivation to create or obtain, deuterated anthracene and carbazole derivatives for use in electronic applications. Lecloux further instruct that degree of deuteration should be between 50% and 100% deuterated, which is far in excess of the 1 mass % required to meet the claim limitation.
Regarding the anthracene derivative, at the time of filing, it would have been obvious to substitute the deuterated anthracene derivative taught by Cha et al. in place of the non-deuterated carbazole derivative taught by Nakano et al.
Regarding the carbazole derivative, at the time of filing, it would have been “obvious to try” to create a deuterated carbazole derivative corresponding the carbazole derivative taught by Nakano et al. at column 32, line 5. Doing so would have required choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. And upon creating the deuterated carbazole derivative, it would have been obvious to substitute the deuterated carbazole derivative in place of the carbazole derivative taught by Nakano et al. at column 32, line 5.
As for both substitutions, the advantages of using deuterated components in electronics are taught by Lecloux et al. and Tsuji et al., thereby providing motivation to do so. In view of these teaching and the ordinary skill in the pertinent art, one of ordinary skill in the art would have a reasonable expectation of success.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
U.S. Patent No. 10,109,803
Claims 1-3, 5-7, 9-12, 14-19, 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 10,109,803 in view of the combined teachings of Lecloux et al. (US 9577199 B2; issued 21 February 2017) and Tsuji et al. (Chem. Commun., 2014, 50, 14870).
Claims 1-3, 5-7, 9-12, 14-19, 31 of the instant application and claim 3 of U.S. Patent No. 10,109,803 are drawn to organic electroluminescence devices comprising generic formulae encompassing anthracene derivatives and a carbazole derivatives. The generic formulae overlap, with instant claims being restricted to deuterated anthracene derivatives and deuterated carbazole derivatives. Lecloux et al. and Tsuji et al. teach the value of, and provide motivation to create or obtain, deuterated anthracene and carbazole derivatives for use in electronic applications. Lecloux further instruct that degree of deuteration should be between 50% and 100% deuterated, which is far in excess of the 1 mass % required to meet the claim limitation.
U.S. Patent No. 10,109,804
Claims 1-3, 5-7, 9-12, 14-19, 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 10,109,804 in view of the combined teachings of Lecloux et al. (US 9577199 B2; issued 21 February 2017) and Tsuji et al. (Chem. Commun., 2014, 50, 14870).
Claims 1-3, 5-7, 9-12, 14-19, 31 of the instant application and claim 3 of U.S. Patent No. 10,109,804 are drawn to organic electroluminescence devices comprising generic formulae encompassing anthracene derivatives and a carbazole derivatives. The generic formulae overlap, with instant claims being restricted to deuterated anthracene derivatives and deuterated carbazole derivatives. Lecloux et al. and Tsuji et al. teach the value of, and provide motivation to create or obtain, deuterated anthracene and carbazole derivatives for use in electronic applications. Lecloux further instruct that degree of deuteration should be between 50% and 100% deuterated, which is far in excess of the 1 mass % required to meet the claim limitation.
U.S. Patent No. 10,103,338
Claims 1-3, 5-7, 9-12, 14-19, 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 10,103,338 in view of the combined teachings of Lecloux et al. (US 9577199 B2; issued 21 February 2017) and Tsuji et al. (Chem. Commun., 2014, 50, 14870).
Claims 1-3, 5-7, 9-12, 14-19, 31 of the instant application and claim 3 of U.S. Patent No. 10,103,338 are drawn to organic electroluminescence devices comprising generic formulae encompassing anthracene derivatives and a carbazole derivatives. The generic formulae overlap, with instant claims being restricted to deuterated anthracene derivatives and deuterated carbazole derivatives. Lecloux et al. and Tsuji et al. teach the value of, and provide motivation to create or obtain, deuterated anthracene and carbazole derivatives for use in electronic applications. Lecloux further instruct that degree of deuteration should be between 50% and 100% deuterated, which is far in excess of the 1 mass % required to meet the claim limitation.
U.S. Patent No. 11,665,962
Claims 1-3, 5-7, 9-12, 14-19, 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,665,962 in view of the combined teachings of Lecloux et al. (US 9577199 B2; issued 21 February 2017) and Tsuji et al. (Chem. Commun., 2014, 50, 14870).
Claims 1-3, 5-7, 9-12, 14-19, 31 of the instant application and claim 3 of U.S. Patent No. 11,665,962 are drawn to organic electroluminescence devices comprising generic formulae encompassing anthracene derivatives and a carbazole derivatives. The generic formulae overlap, with instant claims being restricted to deuterated anthracene derivatives and deuterated carbazole derivatives. Lecloux et al. and Tsuji et al. teach the value of, and provide motivation to create or obtain, deuterated anthracene and carbazole derivatives for use in electronic applications. Lecloux further instruct that degree of deuteration should be between 50% and 100% deuterated, which is far in excess of the 1 mass % required to meet the claim limitation.
Conclusion
Claims 1-31 are pending.
Claims 4, 8, 13 and 20-30 are withdrawn as being drawn to non-elected species.
No claim is currently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY S MAYHEW whose telephone number is
571-272-8428. The examiner can normally be reached Mon-Fri, 11:00 AM-7:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON A BROOKS can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BSM/ Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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