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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. CN202110964534.6 filed on 08/23/2021.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 08/30/2023, 10/31/2024, and 02/26/2025 were filed after the mailing date of the instant application on 08/30/2023. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Amendment
In the preliminary amendment, the claims and specification were amended.
These amendments are hereby entered.
Claims 1-10 were originally filed.
Claims 3, 4, 6, 7, and 8 are instantly amended.
Claims 1-10 are pending in the application.
Specification
The disclosure is objected to because of the following informalities:
The letters, numbers, and/or bonds in the chemical structure given in the definitions of A1 and A2 are illegible due to poor resolution. Please correct these structures so all letters, numbers, and/or bonds are clearly visible. See the example below.
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Please note that this example is non-limiting and there may be other structures that require correction. Please check all formulae to make sure they are clear. Applicant may wish to make these structures clearer by increasing the size of the structure and/or font, or by making the bond lines thicker.
Appropriate correction is required.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
With respect to claim 1, the letters, numbers, and/or bonds in the chemical structure given in the definitions of A1 and A2 are illegible due to poor resolution. Please correct these structures so all letters, numbers, and/or bonds are clearly visible. See the example below.
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Please note that this example is non-limiting and all structures should be corrected. Applicant may wish to make these structures clearer by increasing the size of the structure and/or font, or by making the bond lines thicker.
With respect to claims 1-5, the claims contain variable Rn, which is subsequently defined as variable R, which is present in n iterations. Typically, in organic structures which may comprise multiple iterations of a single variable, this is written as (R)n. When written as Rn, this gives the impression of being different variables (e.g. R1, R2, R3, etc.), rather than multiple instances of the same group (e.g., (CH3)3, (H)5, (Si(Ph)3)2, etc.). In response, please include a statement of how Applicant means for this notation to be interpreted.
With respect to claims 1 and 5, the claims contain definitions for variables A1 and A2, however, these variables are written as A1 and A2, without subscript, in Formula (I). Please make these uniform.
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.
Claims 1-10 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to independent claim 1, the claim contains organic structures comprising a spiro center, wherein a variable bond to Rn passes through the center of the spiro structure. This is unclear as variable bonds typically passes through one or more sing systems then out at a position perpendicular to a bond rather than through a single atom. This is also unclear because typically variable bonds pass through every ring system to which the substituent my apply, however, the Application comprises several compounds which comprise an Rn substituent in a ring system not traversed by the variable bond (e.g. compounds 1674 and 1675).
In continuing examination, Examiner is interpreting these structures as being able to be substituted by variable R at any open valence, even in ring systems not transversed by the variable bond.
With respect to claims 3 and 4, claim 3 comprises further limiting definitions for C1 and C2, and claim 4 comprises further limiting definitions for D1. However, these limitations introduce uncertainty into the claim because parent claim 1 does not require these structures. Thus, it is unclear whether C1, C2, and D1 are required or may be present in the alternative to a structure which does not comprise C1, C2, and D1.
In continuing examination, Examiner is interpreting these structures as being required only when a structure for A1 and/or A2 comprises one of these variables.
Claims 2, 5-10 are rejected by virtue of dependency.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With respect to claim 6, the claim contains several compounds which are outside the scope of parent Formula (I).
For example, compound 1 does not comprise a spiro structure at both of A1 and A2, and compound 451 comprises a cycloalkene at a location where an aromatic group is required.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cui et al. (CN 111647010 A, using the provided translation for references).
With respect to claim 1, Cui discloses compound 1-29 (page 8 of the original document), which is pictured below.
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This compound meets the requirements of instant Formula (I) when R1 and R2 are both a C6 aryl (phenyl) group, n is 0 and R is not present, and A1 and A2 are both represented by the structure below.
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In this structure, both of B3 and B4 are a C6 aryl (benzene) group, and D1 is a C13 aromatic (fluorene) group.
With respect to claim 2, Cui teaches the compound of claim 1, and B1 and B2 are not present, and B3 and B4 are both a benzene group.
With respect to claim 3, Cui teaches the compound of claim 2, and C1 and C2 are absent.
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 1-3 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2020/0098991 A1) and further in view of Cui et al. (CN 111647010 A, using the provided translation for references).
With respect to claim 1, Kim discloses compound 71 (page 20), which is pictured below.
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This compound is derived from Kim Formula (1) which is pictured below.
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Kim also teaches that A1 and A2 are a spirobifluorene group (paragraph 0056, lines 3-4).
Such a modification produces a compound that meets the requirements of instant Formula (I) when R1 and R2 are both a C6 aryl (phenyl) group, n is 1 and R is a C4 alkyl (t-butyl) group, and A1 and A2 are both represented by the structure below.
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In this structure, both of B3 and B4 are a C6 aryl (benzene) group, and D1 is a C13 aromatic (fluorene) group.
Kim includes each element claimed, with the only difference between the claimed invention and Kim being a lack of the aforementioned spirobifluorene moiety being explicitly used. Absent a showing of unexpected results, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known condensed, cyclic group from the finite list of possible definitions for A1 and A2 to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable result of a condensed cyclic group with both an electron donor and electron acceptor group, reducing the difference between the HOMO and LUMO energy levels of the condensed cyclic compound, shifting the emission wavelength of the compound to a longer wavelength (paragraph 0109), commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
However, Kim does not fairly suggest using a spirobifluorene group at this location.
In analogous art, Cui teaches a polycyclic boron-containing compound comprising a spirobifluorene structure (see for example, compound 1-29 (page 8 of the original document).
Cui teaches that by introducing a rigid structure, the polycyclic boron-containing compound possess good film-forming properties, thermal stability, and high quantum yield of fluorescence, and when they are used in organic electroluminescent devices, they exhibit advantages such as high luminous efficiency, long lifespan, wide half-peak of the luminescence spectrum, high color purity, and low driving voltage (paragraph 0057). Additionally, the rigid structure suppresses vibrational relaxation caused by molecular vibration and rotation, thereby resulting in high fluorescence quantum yield, high thermal and chemical stability, and good carrier transport (paragraph 0058).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to preferentially select a spirobifluorene moiety for A1 and A2 in the formula of Kim in order to obtain a compound with rigid structure, which has good film-forming properties, thermal stability, and high quantum yield of fluorescence, and when they are used in organic electroluminescent devices, they exhibit advantages such as high luminous efficiency, long lifespan, wide half-peak of the luminescence spectrum, high color purity, and low driving voltage (paragraph 0057), as taught by Cui.
With respect to claim 2, Kim and Cui teach the compound of claim 1, and B1 and B2 are not present, and B3 and B4 are both a benzene group.
With respect to claim 3, Kim and Cui teach the compound of claim 2, and C1 and C2 are absent.
With respect to claim 6, Kim and Cui teach the compound of claim 1, and the compound is identical to instant compound 58.
With respect to claim 7, Kim and Cui teach the compound of claim 1, and Kim also teaches that synthesis of the compound takes place in t-butyl benzene (paragraph 0363), wherein a formulation of the compound is present and the solvent is an unsaturated hydrocarbon solvent.
With respect to claims 8 and 9, Kim and Cui teach the compound of claim 1, and Kim also teaches an organic electroluminescent device comprising an anode (ITO), a cathode (Al), and an organic layer between the anode and cathode (paragraph 0380), wherein the organic layer comprises one of the described compounds, Compound 1, as a dopant in the emissive layer and the ratio of the host to dopant is 98:2 (paragraph 0379).
In the case where the claimed ranges "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). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions. In the instant case, the taught ratio of 2 parts dopant to 98 parts host (1:49) falls within the claimed range of 1:1 to 1:99. Thus, as the ranges overlap, a prima facie case of obviousness is present.
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to use the compound discussed above as a host in the emissive layer of an organic electroluminescent device within the claimed host/dopant ratio, as taught by Kim.
With respect to claim 10, Kim and Cui teach the diode of claim 8, and Kim also teaches that the organic light emitting device which is described may be suitable for use in a display light source (paragraph 0263).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to incorporate the device of Kim and Cui into a display device, such as a light source, as taught by Kim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nie et al. (US 2024/0196746 A1) – teaches cycloalkyl substituted fluorene moieties on polycyclic boron compounds.
Zhang et al. (US 2023/0255107 A1) – teaches substituted spirobifluorene moieties in polycyclic boron compounds.
Kim et al. (US 2023/0106317 A1) – teaches polycyclic boron compounds with at least one spirobifluorene moiety.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL SIMBANA whose telephone number is (571)272-2657. The examiner can normally be reached Monday - Friday, 8:00 A.M. - 4:30 P.M..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached at 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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/RACHEL SIMBANA/Primary Examiner, Art Unit 1786
