DETAILED ACTION
This office action is in response to applicant’s filing dated April 28, 2026.
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 .
Status of claims
Claims 1 - 8 are pending in the instant application.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1 – 6, drawn to a compound of Chemical formula 1, in the reply filed on April 28, 2026 is acknowledged.
Claims 7 and 8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 28, 2026.
Applicant’s election without traverse of compound 4:
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as a single species of compound of genus Formula 1, in the reply filed on April 28, 2026 is acknowledged.
Claims 1 – 6 are under consideration in the present office action, as being related to an elected invention and species.
Priority
The present application is a 371 of PCT/KR2022/011266, filed on August
1, 2022, which claims the benefit of priority to Korean Patent Application No.
10-2021-0101385 filed on August 2, 2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/11/2026, 08/19/2025, 10/22/2024, 06/06/2024 and 08/16/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
Acknowledgement is made of the drawings received on August 16, 2023. These drawings are accepted.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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 – 6 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al (US 2021/0320263 A1, cited in IDS, filed 10/22/2024, hereinafter Jung).
Instant claims are drawn to a compound of Chemical Formula 1:
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, where R1 and R2 are independently hydrogen or deuterium, n1 is integer 1 – 7, n2 is integer 1 – 6, Ar1 and Ar2 are each independently:
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,
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,
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,
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,
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,
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, wherein at least one of Ar1 or Ar2 is phenyl, or phenyl substituted with deuterium(s). The exemplary compounds of Chemical Formula 1 are:
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,
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. The compounds of Chemical Formula 1 can be used as a material for an organic material layer of an organic light emitting device.
Jung teaches an organic electroluminescent compound represented by the formula 1-A:
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, where Xa is O; one of R41 to R48 is represented by the formula A-1:
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, and the others, each independently, represent hydrogen or deuterium (page 106, [0072] – [0077]), Ara and Arb each independently can be:
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,
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,
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,
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. Any hydrogen in the structures taught by Jung may be replaced by deuterium (pages 107 – 110, [0081]). Exemplary compounds of formula 1-A, taught by Jung are:
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(page 44, E-144),
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(page 45, E-145). Although exemplary structures of Jung are not equivalent to instantly claimed exemplary structures, they are structural analogs, and structures of fragments Ara and Arb, taught by Jung, are equivalent of the same fragments of instantly claimed compounds (see examples above).
Thus, since Jung teaches compounds of similar structure and functionality as instantly claimed compounds, where all structural elements, taught by Jung, are equivalent to the same of instantly claimed compounds, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention to modify known compounds and make various structural analogs, by selecting known structural fragments and combining them with known core, to arrive at claimed compounds. The one of ordinary skills would be motivated to do so in search of an organic material with improved efficiency and other desired properties to use in light emitting device with the reasonable expectation of success.
Therefore, taking all together, taught by prior art, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
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.
Claims 1 – 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 9 of copending Application No. 18/571,168 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims are directed to a compound of Chemical Formula 1:
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, where R1 and R2 are independently hydrogen or deuterium, n1 is integer 1 – 7, n2 is integer 1 – 6, Ar1 and Ar2 are each independently:
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,
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,
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,
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,
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,
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, wherein at least one of Ar1 or Ar2 is phenyl, or phenyl substituted with deuterium(s). The exemplary compounds of Chemical Formula 1 are:
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or
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. The compounds of Chemical Formula 1 can be used as a material for an organic material layer of an organic light emitting device.
Claims of copending application are drawn to a compound of Chemical Formula 1:
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, such as formula:
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or
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, where one to all hydrogen atoms are substituted with deuterium. The compounds are suitable for use in an organic material layer of an organic light emitting device.
Thus compounds of copending claims would anticipate instantly claimed compounds.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1 – 6 are rejected. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELENA V VISHNYAKOVA whose telephone number is (571)272-3781. The examiner can normally be reached 7:30am - 5pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RENEE CLAYTOR can be reached at (571)272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.V.V./Examiner, Art Unit 1691
/SAVITHA M RAO/Primary Examiner, Art Unit 1691
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