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 .
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 06/26/2023, 06/23/2023, 05/15/2025, 08/25/2025, and 04/07/2026 were filed after the mailing date of the instant application on 06/26/2023. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
Some of the structures in paragraph [0130] have overlapping functional groups which make the structure unclear. See the example below.
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Please note that these examples are non-limiting and all structures in the specification should be checked to make sure they do not comprise overlapping groups. In some of the structures, such as the compounds on page 64, CD3 may be used to correct overlapping deuterium atoms.
The letters, numbers, and/or bonds in some of the chemical structure given in paragraph [0150] are illegible due to poor resolution. Please correct these structures so all letters, numbers, and/or bonds are clearly visible. See the examples below.
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Please note that this example is non-limiting and there may be other structures that require correction. 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 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 1-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US 2022/0209142 A1).
With respect to claims 1-2 and 5-10, Kim discloses compound 2 (page 21), which is pictured below.
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This compound meets the requirements of instant Formula I when M is Pt, ring A is a 5-membered heterocyclic (imidazole carbene), rings B and C are a 6-membered carbocyclic (benzene) ring, ring D is a 6-membered heterocyclic (pyridine) ring, Z3 is a nitrogen atom, and Z1 and Z2 are carbon atoms, X1 through X10 are carbon atoms, K is a direct bond, L1 is an oxygen atom and L2 is NR, wherein the R is an aryl (phenyl) group which is joined to an adjacent RC to form a carbazole moiety, two RA are joined to form a fused benzene ring, RB is no substitution, RC is no additional substitution, and RD is C4 (t-butyl) substitution, RE is disubstitution of C6D5 aryl (phenyl-D5), and R1 is a C12 heteroaryl (9-carbazolyl) group.
With respect to claim 3, Kim teaches the compound of claim 1, and the compound has the structure of instant Formula IA when REE1 and REE2 are each the combination of aryl and deuterium, as pictured and discussed above.
With respect to claim 4, Kim teaches the compound of claim 3, and REE1 and REE2 have the structure of Formula IIC when X34 through X38 are each a carbon atom, and each RH is five deuterium atoms, as discussed above.
With respect to claim 11, Kim teaches the compound of claim 1, and the compound has the instant structure when all X groups are carbon atoms, RAA, RBB, and RCC represent no substitution and RDD is monosubstitution of an alkyl group, and all other groups are as discussed and pictured above.
With respect to claim 12, Kim teaches the compound of claim 1, and the compound has the instant first structure when REE1 and REE2 are the combination of aryl and deuterium, R1 and RD1 are as discussed above, and all other R groups are hydrogen atoms.
With respect to claim 13, Kim teaches the compound of claim 12, as discussed above.
Kim also teaches compound 33 (page 29), which is pictured below.
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This compound meets the requirements of all parent claims. It also meets the requirements of the instant claim when RB1 is a 6-membered aromatic group.
With respect to claim 14, Kim teaches the compound of claim 1, and the compound meets the requirements of the instant Formula when LA’ is the instant first embodiment, and Ly is in column 2 of row 3 on page 137 of the instant claims when R1 is a 9-carbazolyl (second moiety on row 4 of page 149), RA and RB are hydrogen atoms (first moiety on page 138), RCC is a hydrogen atom (first moiety on page 138), RDD is a t-butyl (sixth moiety on page 138), REE is C6D5 (eighth embodiment on row four of page 139), and RX and RY are not present.
With respect to claim 15, Kim teaches the compound of claim 1, and the compound has the structure of LA’1-(R81)(R6)(R6)(R1)Ly9-(R1)(R1)(R1), as pictured above.
With respect to claim 16, Kim teaches the compound of claim 1, and the compound is identical to the instant second embodiment.
With respect to claim 17, Kim teaches the compound of claim 1, and compound 2, pictured and discussed above, is used in device Example 2 (Table 4, page 103), which is an organic light emitting device (paragraph 0372), comprising an anode (ITO), a cathode (Al), and an organic layer comprising the compound (paragraph 0370).
With respect to claim 18, Kim teaches the OLED of claim 17, and the organic layer comprises the host mCBP (paragraph 0370), pictured below, which comprises a carbazole moiety.
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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.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2022/0209142 A1) as applied above, and further in view of Metz et al. (US 2016/0072081 A1).
With respect to claim 19, Kim teaches the electroluminescent device of claim 17, however, Kim does not teach nor fairly suggest any of the instantly claimed host materials.
In analogous art, Metz teaches a matrix material for use in combination with an emitting compound in an electroluminescent device (paragraph 0090).
Metz teaches a matrix material for use in an electroluminescent device. A preferred embodiment of this matrix material is given on page 17 which is pictured below.
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In this formula, T is a sulfur atom (paragraph 0084).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant application to use the matrix material of Metz as a host material in the device of Kim as Metz teaches that these compounds are suitable matrix materials for use as a host for an emitter compound (paragraph 0090).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2022/0209142 A1) as applied above.
With respect to claim 20, Kim teaches the compound of claim 1, as discussed above.
However, Kim does not use the compound in a consumer product.
Kim also teaches that the compound may be used in a light emitting device, and that the device may be included in a variety of apparatuses (paragraph 0282), and examples of apparatuses include consumer products such as a personal computer (paragraph 0291).
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 include the compound in a consumer product such as a computer, as taught by Kim.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-13 and 15-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-13 and 15-20 of copending Application No. 18/476,087 (reference application).
The wording, structures, formulae, limitations, and wording of claims 1-13 and 15-20 of ‘087 are either identical to each corresponding claim in the instant application, or the claims differ in their wording, but still contain the same limitations listed in the alternative. The substance of the claims is identical.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chen et al. (US 2020/0216481 A1) – See the R group on the bottom of page 29 and substituent B44 on page 32.
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..
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.
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/RACHEL SIMBANA/Primary Examiner, Art Unit 1786
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