CTNF 18/322,402 CTNF 101399 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Specification 07-29 AIA The disclosure is objected to because of the following informalities: compound structures are small, pixelated, and contain labels that are difficult to discern. For example, compound 108 contains atom labels for deuterium that are cut off (pg 22). The numerical labels of CY and other atom labels are difficult to read (pg 34). Compounds HT28 and HT30 have atom labels that are difficult to read (pg 37) . PNG media_image1.png 138 199 media_image1.png Greyscale PNG media_image2.png 413 688 media_image2.png Greyscale PNG media_image3.png 401 708 media_image3.png Greyscale Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1 and 9 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. Claims 1 and 9 define X4 as being C(Ar4) and X5 as C(Ar5); however, Ar4 and Ar5 are not further defined in the claims or the specification. X2 to X6 are defined as be being R2 to R6 wherein R2 to R6 may be selected from heterocyclic, aryloxy, arylthiol, arylalkyl, and so on. X2, X3, and X6 are not defined as being Ar. Therefore, it is unclear as to the identity of Ar4 and Ar5, not only because they are undefined, but also because (1) the similar groups X2, X3, and X6 are not defined as being Ar and (2) the R groups are already defined as aryl groups. For the purposes of examination, the Examiner interprets the Ar4 and Ar5 in claims 1 and 9 as being same as R4 and R5 respectively. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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. 07-15 AIA Claim s 1-6 and 8-20 are rejected under 35 U.S.C. 102( a)(1) and 35 U.S.C. 102(a)(2 ) as being anticipated by Tsurutani et al. (US2015/0076483A1, hereinafter "Tsurutani") . In the pertinent art of organic light-emitting devices, Tsurutani discloses an organic light-emitting element comprising a substrate, anode, and a cathode wherein a luminescent layer between the anode and cathode contains an organic material including the specific compound E14, shown below (abstract, pg 60). PNG media_image4.png 1251 1484 media_image4.png Greyscale Compound E14 of Tsurutani is a compound of instant Formula 1 in instant claim 1 wherein: X1 is an sp3 hybridized carbon atom; CY1 is a C6 carbocyclic group; CY1 is represented by Formula 3B; R30 is H and b30 is 6; ArEWG is represented by Formula 2 wherein; X2, X4, and X6 is N; X3 is C(R3) and X5 is C(R5); R3 and R5 are unsubstituted C6 carbocyclic groups; R3 and R5 are unsubstituted phenyl; ArEWG is represented by Formula 2A; R1 is ArEDG represented by Formula 3; X11 is N(R49) wherein; R49 is a binding site to a neighboring atom; R41 to R48 are H; ArEDG is represented by Formula 3A; L1 and L2 are C6 carbocyclic “benzene” group; n1 and n2 are 1; Formula 1 is represented by Formula 1A; R11-R12, R14-15, R21-R22, and R24-R25 are H; R10 and R20 are H; b10 and b20 are 4; R30 is H; b30 is 10. Therefore, the Compound E14 of Tsurutani anticipates instant claims 9-19. Note that for the purposes of examination, the examiner is interpreting claims 18 and 19 as being the heterocyclic compound of claim 9 wherein formula 2 does not necessarily need to be selected such that all R2 to R6 are present. Regarding instant claim 20, the Compound E14 of Tsurutani is the same as instant compound 1. Regarding instant claims 1-7, Tsurutani discloses Example 5, an organic electroluminescent element containing layers of the following order: glass substrate, ITO, anode, hole injection, hole transport, luminescent layer, hole blocking, electron transport, electron injection, and cathode wherein the luminescent layer contains H-4, E-2, and B3, shown below (¶ [0384] – [405]). PNG media_image5.png 1380 4094 media_image5.png Greyscale Compound E-2 is the same as compound E14 as Tsurutani. Compound B3 is an iridium organometallic complex that is a phosphorescent dopant (¶ [0037] – [0038]). Therefore, the Example 5 of Tsurutani anticipates the light emitting device of instant claims 1-5. Regarding instant claim 6 and 8, Tsurutani teaches that the light emitting element, such as Example 5, may be used in applications such as lighting devices and full-color display devices using a color filter . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tsurutani et al. (US2015/0076483A1, hereinafter "Tsurutani") as applied to claims 1-6 and 8-20 as described above in view of Liao et al. (US2003/0170497A1, hereinafter "Liao") . Tsurutani teaches the Example 5 and the compounds E-2 and E14 that reads on claims 1-6 and 8-20 as described above. However, Tsurutani is silent on the electronic apparatus of instant claim 6 further comprising a thin-film transistor. In the relevant art of organic light-emitting devices, Liao teaches a stacked organic light-emitting device wherein an array of OLED devices is formed in contact with thin film transistors (TFTs) and an electrode and wherein the electrical circuitry of the TFTs and stacked OLED devices form an active-matrix array capable of independently activating each stacked OLED device (Fig 8-9, ¶ [0069] – [0074]). Liao teaches the device structure of the invention enables devices such as a full color display with high efficiency and lifetime improvements (¶ [0077]). Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to include the organic light-emitting element Example 5 of Tsurutani in the light-emitting device of Liao, based on the teachings of Liao. The motivation for doing so would have been to obtain a device with high efficiency and long lifetime), as taught by Liao (¶ [0077]). The resulting Modified Device of Tsurutani and Liao contains the OLED device containing Example 5 of Tsurutani is electrically connected to a TFT and an electrode that reads on instant claim 7 wherein the electronic apparatus comprises a thin-film transistor with a source electrode and the first electrode of the light-emitting device is electrically connected to the source electrode . Double Patenting 08-33 AIA 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. 08-35 Claim s 9 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/926,799 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds of Formula 1 in instant claim 9 overlap in scope with the compounds of Formula 1 in claim 11 of '799. The overlap in scope is evidenced by the compound 22, shown below in claim 20 of ‘799. PNG media_image6.png 561 620 media_image6.png Greyscale Compound 22 of ‘799 is a compound of Formula 1 of instant claim 9 wherein: X1 is an sp3 hybridized carbon atom; CY1 is a C6 carbocyclic group; R30 is H and b30 is 6; ArEWG is represented by Formula 2 wherein; X2, X4, and X6 is N; X3 is C(R3) and X5 is C(R5); R3 is represented by Formula 3; R5 are unsubstituted C6 carbocyclic “phenyl” groups; R3 is ArEDG represented by Formula 3; X11 is N(R49) wherein; R49 is a C6 carbocyclic group; R43 is a binding site to a neighboring atom; R46 is a cyano group; R41 - R42, R44 - R45, and R47 - R48 are H; L1 and L2 are C6 carbocyclic “benzene” group; n1 and n2 are 1; Formula 1 is represented by Formula 1A; R11-R12, R14-15, R21-R22, and R24-R25 are H; R1 is -B(Q1)(Q2) wherein; Q1 and Q2 are C6 carbocyclic groups substituted with C1 alkyl group; R10 and R20 are H; b10 and b20 are 4; R30 is H; b30 is 10 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCAS Q NGUYEN whose telephone number is (571)272-1199. The examiner can normally be reached Monday - Thursday 7:30 am - 5:00 pm Fridays 7:45 am to 12:00 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, 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /L.Q.N./ Examiner, Art Unit 1786 /JENNIFER A BOYD/ Supervisory Patent Examiner, Art Unit 1786 Application/Control Number: 18/322,402 Page 2 Art Unit: 1786 Application/Control Number: 18/322,402 Page 3 Art Unit: 1786 Application/Control Number: 18/322,402 Page 4 Art Unit: 1786 Application/Control Number: 18/322,402 Page 5 Art Unit: 1786 Application/Control Number: 18/322,402 Page 6 Art Unit: 1786 Application/Control Number: 18/322,402 Page 7 Art Unit: 1786 Application/Control Number: 18/322,402 Page 8 Art Unit: 1786 Application/Control Number: 18/322,402 Page 9 Art Unit: 1786 Application/Control Number: 18/322,402 Page 10 Art Unit: 1786 Application/Control Number: 18/322,402 Page 11 Art Unit: 1786 Application/Control Number: 18/322,402 Page 12 Art Unit: 1786 Application/Control Number: 18/322,402 Page 13 Art Unit: 1786
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