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 .
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of copending Application No. 17/829,510. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and copending claims are drawn to devices and compounds that overlap in scope such that both applications claim some of the same materials and devices.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/117,302. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and copending claims are drawn to devices and compounds that overlap in scope such that both applications claim some of the same materials and devices.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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 1-9 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al (US 2020/0176679) (Jeong).
In reference to claims 12-20, Jeong teaches a compound of formula 1 (Jeong [0046]) as shown below.
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For example, wherein in the formula 1, Y is B, X1 and X2 are each NR12, each R12 is a terphenyl, R2 is adamantyl, R5 and R10 are each a group of formula 5 wherein X4 is N and each other R is hydrogen (Jeong [0051] to [0058]).
Jeong discloses the compound of formula 1 that encompasses the presently claimed compound, including wherein in the formula 1, X1 and X2 are each NR12, each R12 is a terphenyl, R2 is adamantyl, R5 and R10 are each a group of formula 5 wherein X4 is N and each other R is hydrogen. Each of the disclosed substituents from the substituent groups of Jeong are considered functionally equivalent and their selection would lead to obvious variants of the compound of formula 1.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, in the absence of unexpected results, to have selected these substituents among those disclosed for the compound of formula 1 to provide the compound described above, which is both disclosed by Jeong and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Furthermore, it is noted that compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). In light of the case law cited above, it therefore would have been obvious to one of ordinary skill in the art that the compound disclosed in the present claims is but an obvious variant of the compound presently claimed, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
For Claim 12: Reads on formula 1 wherein X is adamantyl, n1 and n2 are each 1, R1 and R2 are each carbazole and each of R3 to R7 is hydrogen.
For Claim 13: Reads on formula A-4.
For Claim 14: Reads on formula 2-1.
For Claim 15: Reads on formula B-2.
For Claim 16: Reads on formula 3-1.
For Claim 17: Reads on formula 4-4.
For Claim 18: Reads on formula 5.
For Claim 19: Reads on formula 6-1.
For Claim 20: Reads on 137.
In reference to claims 1-9 and 11, Jeong teaches the compound as described above for claim 14 and further teaches an organic electroluminescent element in which organic thin film layers each composed of a single layer or a plurality of layers including at least a light emitting layer are stacked between a negative electrode and a positive electrode, in which the light emitting layer contains the compound as a blue dopant, host materials and the like (Jeong [0062] [0063]) and can include phosphorescent dopants such as PtOEP (Jeong [0071]).
While Jeong does not exemplify a device with this material included as the light emitting material in the light emitting layer, Jeong specifically teaches that it is used in this application and it would have been immediately obvious to the ordinarily skilled artisan to have used the compound in the application expressly taught by Jeong.
For Claim 1: Reads on the claimed device structure and formula 1 wherein X is adamantyl, and each of R1 to R7 is hydrogen.
For Claim 2: Reads on formula A-4.
For Claim 3: Reads on formula 2-1.
For Claim 4: Reads on formula B-2.
For Claim 5: Reads on formula 3-1.
For Claim 6: Reads on formula 4-4
For Claim 7: Reads on formula 5.
For Claim 8: Reads on formula 6-1.
For Claim 9: Reads on 137.
For Claim 11: Reads on formula D-1.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al (US 2020/0176679) (Jeong) and further in view of Kim et al (US 2020/0235303) (Kim).
In reference to claim 10, Jeong teaches the device as described above for claim 1 including hosts in the emission layer but does not specifically point to the instantly claimed host.
With respect to the difference, Kim teaches, in analogous art, an organic light emitting device comprising compounds of formula 3 that broadly includes compounds of Jeong and that the emission layer further includes first and second compounds as hosts, for example compound 1-1 and 2-1 as shown below (Kim [0066] [0199] [0200]).
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Kim further teaches that including these hole transport and electron transport host compounds improves efficiency and/or device lifespan (Kim [0202] [0203]).
Response to Arguments
Applicant's arguments filed 08/28/2026 have been fully considered but they are not persuasive.
In reference to the outstanding rejections under 35 USC 103 over Jeong, Applicant argues that Jeong does not disclose that n1 and n2 are each independently an integer from 1 to 4 and at least one of selected from R1 and at least one selected from R2 are each independently a halogetn atom, etc such that at least one R1 and R2 are not hydrogen but one of the other listed substituents.
However, Jeong does teach such substituent options at these positions and exemplifies a number of materials with such substituents. The difference between the examples of Jeong and the instant claims is that the instant claims require the selection of substituent combinations from among the substituents exemplified in Jeong. That is, Jeong exemplifies each of the required selections but does not exemplify all of them in a single compound. For example, compound 269 of Jeong differs from those instantly claimed by the new requirement of an R1 and an R2 that are each not hydrogen. However, Jeong teaches broadly that those positions can be substituted and exemplifies a variety of materials with such substitution (see e.g. compound 300, 224, etc.).
Applicant further argues that the instantly claimed compounds give rise to unexpected results in comparison with materials of Jeong.
For a finding of unexpected results, the results presented need to be of both statistical and practical significance and be commensurate in scope with the subject matter claimed (See MPEP 716.02).
First, while the inventive examples allegedly show improvements in device efficiency and lifetime, the specification has provided no information that would allow the analysis of the statistical significance of the results. That is, there is no indication if more than one device was prepared and analyzed for each comparative and exemplary device and there is no information on the reproducibility or precision of the measured parameters presented in the data tables.
Second, the showing of the results of a few examples is not commensurate in scope with the very large number of compounds encompassed by the instant claims. For example, R1 and R2 can be essentially any substituent other than hydrogen, including substituted aryl groups that are larger than the conserved DABNA structure in the formula 1 and others with strong electronic effects whereas the examples include one of a few select groups (e.g. phenyl, carbazole, or dibenzofuran). These examples are not intended to be interpreted as the only points in which the data in not commensurate in scope with the claims but merely to illustrate how the breadth of the claimed compounds is much larger than that set forth in the examples, these variables resulting in claiming thousands of more compounds and even more devices. As applicant is attesting that the claimed compounds have properties that would not be expected based on the genus as a whole, for example compounds taught by Jeong, support for the unexpected results must be provided that covers the scope of what is claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean M DeGuire whose telephone number is (571)270-1027. The examiner can normally be reached Monday to Friday, 7:00 AM - 5:00 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 A. 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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/Sean M DeGuire/Primary Examiner, Art Unit 1786
