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 1-13 of M. Ito et al., US 18/320,576 (May 19, 2023) are pending and under examination on the merits. Claims 1-13 are rejected.
Election/Restrictions
Pursuant to the Election of Species Requirement, Applicant elected the species of compound 1-1, which is:
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without traverse, in the reply filed on December 12, 2024. Claims 1-13 read on the elected species. The elected species was searched and determined to be free of the art of record. Pursuant to MPEP § 803.02, the search was extended the species cited below in the § 102 rejections. The search was not further extended. The provisional election of species requirement is given effect and no claims are withdrawn from consideration. See, MPEP § 803.02.
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) Rejection over T. Tanaka et al., JP 2013069905 (2013) (“Tanaka”)
Claims 1-5 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by T. Tanaka et al., JP 2013069905 (2013) (“Tanaka”). An English-language translation of Tanaka (Google Translate) (“Tanaka-Eng”) is attached to the PTO-897 Form.
Tanaka teaches an organic electroluminescent element comprising at least one light-emitting layer, characterized in that it contains a compound represented by the following general formula (1). Tanaka-Eng at page 4, [0009].
Tanaka teaches the following example compound 3-47, where correspondence to claim 1, Formula 1-1 is shown below, where X11 is oxygen and R11, R12, R13, R14, R15, R16 R17, and R18 are all hydrogen.
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Tanaka-Eng at page 28.
The claim 1 limitation of “comprising 11 to 60 single phenyl rings”:
1. A condensed cyclic compound represented by one selected from Formulae 1-1 to 1-6 and comprising 11 to 60 single phenyl rings . . .
is met by the 12 phenyl rings the above prior art compound. In this regard, the specification discusses the meaning of “single phenyl rings” as follows:
[0025] The condensed cyclic compound represented by Formula 1 includes 9 to 60 aromatic rings. The number of the aromatic rings in a term "9 to 60 aromatic rings" is obtained by counting the number of the single 6-membered aromatic rings in the condensed cyclic compound. Since the condensed cyclic compound represented by Formula 1 essentially includes 9 to 60 aromatic rings, the condensed cyclic compound may have improved solubility in an organic solvent. Since a 6-membered aromatic ring is linked in a chain shape, the degree of freedom of the condensed cyclic compound increases, thereby improving the solubility in the organic solvent. Therefore, since it is advantageous to a solution process, it is possible to provide a layer (or a thin film) having improved film-forming characteristics.
Specification at page 7, [0025] (emphasis added). This specification discussion clearly does not state that the “aromatic ring” (now amended to recite “phenyl ring”) cannot be embedded within a condensed ring system. More significantly, claim 1 recites the transitional phrase “comprising” within the claim 1 recitation at issue “and comprising 11 to 60 single phenyl rings”. The transitional terms "comprising" is inclusive or open-ended and do not exclude additional, unrecited elements. MPEP § 2111.03(I) (citing Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) ("[c]omprising" is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim). This interpretation is consistent with the specification because a number of Applicant’s disclosed example compounds (such as disclosed example compounds 1-1, 1-3, and 1-7) comprise phenyl rings within condensed systems that must be counted in order for these compounds to fall within instantly claimed genus as well as to fall within the originally filed (unamended) claim 1 genus of “9 to 60 single 6-membered aromatic rings” (see claims as filed on 5-19-2023). Specification at pages 27-29 (compounds 1-1, 1-3, and 1-7). In sum, under a broadest reasonable interpretation, Tanaka compound A-37 meets the claim 1 limitation of “comprises” “11 to 60 single phenyl rings”.
The limitations of claim 2 are clearly met by the twelve phenyl rings comprised within Tanaka compound 3-47.
The limitations of claim 3 are clearly met because the molecular weight of Tanaka compound 3-47 is 1011 Daltons.
The limitations of claim 4 are clearly met.
Tanaka compound 3-47 clearly meets the limitations of claim 5 formula 3-4. Note that the specification does not define the meaning of “neighboring atom” within the claim 5 recitation of “* indicates a binding site to a neighboring atom”. See specification at pages 13-14, [0050]. This limitation is broadly and reasonably interpreted, consistently with the specification, as bond to any atom or group. MPEP § 2111.
Claims 8, directed to a composition, is anticipated. Respecting claim 8, the preamble recitation of “A composition comprising” does not distinguish over Tanaka compound 3-47. This preamble does not impose any structural limitations on the claimed composition. See MPEP § 2111.02(II). Neither claim 8 nor the specification require that a “composition” comprise materials or components in addition to the claimed compound itself. See for example, specification at page 39, [0094]; Id. at page 12, [0062]-[0063]. Thus, under its broadest reasonable interpretation, consistent with the specification, a “composition” encompasses a one-component composition (i.e., a composition that consists only of the claimed compound). MPEP § 2111.
§ 102(a)(1)/(2) Rejection over J. Park et al., WO 2017146406 (2017) (“Park”)
Claims 1-3 and 6-8 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by J. Park et al., WO 2017146406 (2017) (“Park”). Park teaches the following example compound P1-49, where correspondence to claim 1, Formula 1-1 is shown below, where X11 is oxygen and R11, R12, R13, R14, R15, R16 R17, and R18 are all hydrogen.
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Park at page 16.
The claim 1 limitation of “comprising 11 to 60 single phenyl rings”:
1. A condensed cyclic compound represented by one selected from Formulae 1-1 to 1-6 and comprising 11 to 60 single phenyl rings . . .
is met by the eleven phenyl rings the above prior art compound for the same reasons discussed above.
The limitations of claim 2 are clearly met by the eleven phenyl rings comprised within compound P1-49.
The limitations of claim 3 are clearly met because the molecular weight of compound P1-49 is 892 Daltons.
The limitations of claim 6 are met because in P1-49 variable ET is a quinazoline group substituted with phenyl.
The limitations of claim 7 are met because in P1-49, variable ET is a quinazoline group substituted with phenyl, which meets the limitations of claim 7 formula 2-2.
Claims 8, directed to a composition, is anticipated. Respecting claim 8, the preamble recitation of “A composition comprising” does not distinguish over P1-49. This preamble does not impose any structural limitations on the claimed composition. See MPEP § 2111.02(II). Neither claim 8 nor the specification require that a “composition” comprise materials or components in addition to the claimed compound itself. See for example, specification at page 39, [0094]; Id. at page 12, [0062]-[0063]. Thus, under its broadest reasonable interpretation, consistent with the specification, a “composition” encompasses a one-component composition (i.e., a composition that consists only of the claimed compound). MPEP § 2111.
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.
§ 103 REJECTION OVER T. Tanaka et al., JP 2013069905 (2013) (“Tanaka”)
Claims 8-13 are rejected under AIA 35 U.S.C. 103 as being unpatentable over T. Tanaka et al., JP 2013069905 (2013) (“Tanaka”). An English-language translation of Tanaka (Google Translate) (“Tanaka-Eng”) is attached to the PTO-897 Form.
Tanaka teaches an organic electroluminescent element comprising at least one light-emitting layer, characterized in that it contains a compound represented by the following general formula (1). Tanaka-Eng at page 4, [0009].
Tanaka teaches that an organic EL element according to one embodiment is an organic EL element comprising at least one light-emitting layer and containing a compound represented by the following general formula (1), where Tanaka describes the anode, cathode, and constituent layers (such as hole injection layer, hole transport layer, light-emitting layer, electron transport layer, electron injection layer, and other organic layers) that constitute the organic EL. Tanaka at page 6, [0030]; Tanaka at page 30 [0070] et seq. (descripting each of the layers of the EL device).
Tanaka thus teaches each and every element of the organic light emitting device of claims 10-13. Per claim 12, Tanaka teaches that the light emitting layer contains the compound represented by general formula (1). Tanaka at page 4, lines [0009].
As discussed above, Tanaka discloses exemplary compound 3-47 that meets the structural limitations of claim 1, Formula 1-1. Tanaka-Eng at page 28.
Respecting claim 9, Tanaka teaches that the light emitting layer of the organic EL element of incorporates a dopant and host compound. Tanaka-Eng at page 34, [0091]. The Tanaka dopant is, per claim 9, a “light emitting material”. See, specification at page 40, [0099]-[00102].
Respecting claims 12 and 13, Tanaka teaches that the compound represented by formula (1) is contained in the light emitting layer. Tanaka at page 4, lines [0009].
Difference between Tanaka and the Claims
As discussed in the § 102 section above, claim 8 is anticipated by Tanaka.
Claims 9-13 differ from Tanaka only to the extent that one of ordinary skill must specifically choose Tanaka compound 3-47 for use in Tanaka’s disclose organic electroluminescent element along with a dopant and host.
The Claims Are Obvious in View of Tanaka
Composition claims 8 and 9 are obvious pursuant to § 103 in view of Tanaka because one of ordinary skill in the art is motivated with a reasonable expectation of success to employ Tanaka compound 3-47 in the light emitting layer of the organic electroluminescent device disclosed by Tanaka as a composition comprising a dopant which is a “light emitting material”. One of ordinary skill is so motivated because Tanaka teaches that it is preferable that the light emitting layer incorporates a dopant. Tanaka-Eng at page 34, [0091]. The Tanaka dopant is, per claim 9, a “light emitting material”. See, specification at page 40, [0099]-[00102]. One of ordinary skill thereby meets each and every limitation of compositions claims 8 and 9.
Claims 10-13 are obvious pursuant to § 103 in view of Tanaka because one of ordinary skill in the art is motivated with a reasonable likelihood of success to employ Tanaka compound 3-47 in the light emitting layer of the organic electroluminescent device disclosed by Tanaka thereby meeting each and every claim limitation. One of skill in the art is so motivated because this is the very purpose taught by Tanaka for use of compound 3-47. The rationale is combining prior art elements according to known methods to yield predictable results. MPEP § 2143(I). The claim 13 limitation of “an amount of the condensed cyclic compound in the emission layer is larger than an amount of the light-emitting material in the emission layer” cannot distinguish over the cited art. It is a well-settled tenet that one of ordinary skill in the art to develop workable or optimum ranges for result-effective parameters, where Applicant can rebut a prima facie case of obviousness by showing the criticality (unexpected result) of the range. MPEP § 2144.05; see also, In re Boesch, 617 F.2d 272,276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692