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 .
Election/Restrictions
Applicant's election without traverse of Species (A2) (the first heterocyclic ring is 5-membered or 6-membered ring, wherein the ring atoms comprises exactly two Si atoms), in the reply filed on 08/27/2026 is acknowledged.
Upon further consideration, the Examiner found no burden to search a first heterocyclic ring which is a 5- or 6-membered ring comprising Si and C atoms only; thus, the previous species are regrouped and expanded to produce following updated species (B1) to (B3).
Species (B1) (the first heterocyclic ring is 5-membered or 6-membered ring, wherein the ring atoms contain at least one Si atom and no Ge atom).
Species (B2) (the first heterocyclic ring is 5-membered or 6-membered ring, wherein the ring atoms contain at least one Ge atom and no Si atom).
Species (B3) (the first heterocyclic ring is 5-membered or 6-membered ring, wherein the ring atoms contain at least one Si atom and at least one Ge atom).
Applicant’s election of 08/27/2026 is equated with Species (B1) (emphasis added).
Claims 9-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group.
With respect to the instant claim 18, a search of the prior art did not show the elected species. As none of the claims were specifically drawn to applicant's elected species in combination with the limitations of claim 18 in independent form, no claims have been indicated as allowable. However, claim written in independent form which requires all the limitations of claim 18 as well as being limited to the elected species along with any dependent claims which require all the limitation of claim 18 as well as being limited to the elected species would be allowable.
Claim 18 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims as well as being limited to the elected species. This objection to the claims is only with respect to Applicant’s elected species.
It is noted that the potential allowability of claim 18 has not be determined with respect to species beyond Applicant's elected species, i.e. potential examinable species that could found once the search is expanded beyond Applicant's elected species.
Claim Objections
Claim 17 is objected to because of the following informalities:
In claim 17, Applicant recites “a hydrogen”. It should be hydrogen.
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.
Claim 15 is 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.
Regarding claim 15, Applicant claims the structures of the first heterocyclic ring; however, some of them including the following structures are indefinite.
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, and
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For example, in the above structures each dashed line represents a bond between the first heterocyclic ring and a neighboring structure. However, it is unclear whether the bond can be located at any of the positions R1 to R14. The claim 15 requires R1 to R14 to be hydrogen or a list of substituents. However, there is no option wherein R1 to R14 to be selected to a dashed line. It is unclear how a bond between the first heterocyclic ring and a neighboring structure can be made, rendering this claim indefinite.
For the purpose of prosecution, the Examiner interprets the limitation to mean that the dashed line represents a bond between the first heterocyclic ring and a neighboring structure and the position of the dashed line can be located at any one of R1 to R14.
Claim Rejections - 35 USC § 102
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 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 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.
Claims 1, 3-4, 7, and 12-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Coburn et al. (US 2022/0009920 A1, hereafter Coburn).
Regarding claims 1, 3-4, 7, and 12-15, Coburn discloses a pharmaceutical compound of Formula (I) ([0016]) and exemplifies Compound 9-7 ([0199]).
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The Compound 9-7 of Coburn has identical structure as Applicant’s compound of claim 1, wherein a first chemical moiety is a polycyclic fused ring system (i.e. the part enclosed by a dashed circle in the figure above); a first heterocyclic ring is a dimethyl silacyclohexene (i.e. the part enclosed by a dashed box); in the polycyclic fused ring system, the first heterocyclic ring has one bond being part of an aromatic ring (i.e. indole); and the second chemical moiety is an amino group (i.e. the part pointed by arrows).
With respect to claim 4, one Si atom is bonded to a heterocyclic ring (i.e. dimethyl silacyclohexene ring). It should be noted that the claim does not require the “a carbocyclic or heterocyclic ring” to be different from the first heterocyclic ring.
With respect to claim 12, the carbonyl group between the first chemical moiety (i.e. polycyclic fused ring) is connected to the second chemical moiety (i.e. amino) through an organic linker (i.e. carbonyl).
With respect to claim 13, the first heterocyclic ring (i.e. dimethyl silacyclohexene) is fused with a benzene ring (i.e. the benzene of the indole ring). It is noted that the claim does not require the first heterocyclic ring is directly fused to the benzene ring. Alternatively, in the compound 9-7 of Coburn, the combined ring of the dimethyl silacyclohexane ring and the pyrrole ring can be interpreted as a first heterocyclic ring. In that interpretation, the first heterocyclic ring is directly fused to a benzene ring.
With respect to claim 14, the amino group of the indole ring is equated with a bridge. Thus, the polycyclic fused ring system (i.e. the part enclosed by a dashed circle) comprises a bridged fused ring system. Alternatively, the polycyclic fused ring system is bridging between the group comprising the cyclic amine ring and the amide group; thus, the polycyclic fused ring system is a bridged fused ring system.
Claims 1-2, 4-8, 12, and 15 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kim et al. (US 2019/0386219 A1, hereafter Kim).
Regarding claims 1-2, 4-8, 12, and 15, Kim discloses a compound (Formula 1) used for an organic light emitting device ([0021]-[0022]) and exemplifies a compound ([0113], the first compound on page 19, hereafter Compound p19-1).
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The Compound p19-1 of Kim has identical structure as Applicant’s compound of claim 1, wherein the silacyclohexane ring (i.e. the part enclosed by a dashed box in the figure above) is a first chemical moiety and a first heterocyclic ring; and dibenzofuran is a second chemical moiety.
With respect to claims 4-5, each of Si atoms are bonded to a heterocyclic ring (i.e. silacyclohexane ring). It should be noted that the claim does not require the “a carbocyclic or heterocyclic ring” to be different from the first heterocyclic ring.
With respect to claim 12, the amino phenylene group disposed between the silacyclohexane ring and a dibenzofuran group is equated with an organic linker.
With respect to claim 15, the first heterocyclic ring is
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, wherein R2 is a dashed line; R3 is aryl (i.e. substituted phenyl); R1 and R4 are each alkyl (i.e. methyl); and R5 to R8 and R9 to R12 are each hydrogen.
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 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2019/0386219 A1).
Regarding claims 19-20, Kim discloses a compound (Formula 1) used for an organic light emitting device ([0021]-[0022]) and exemplifies a compound ([0113], the first compound on page 19, hereafter Compound p19-1). The Compound p19-1 reads on all the features of claim 1 as outlined above.
Kim does not disclose a specific organic light emitting device comprising the Compound p19-1 of Kim; however, Kim does teach the compound of Kim can be used in an organic light emitting device ([0021]-[0022]).
Kim teaches the structure of an organic light emitting device comprising an anode, an emission layer comprising the compound of Kim, a cathode ([0208]-[0213]).
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the Compound p19-1 of Kim by incorporating it into the emission layer of an organic light emitting device, as taught by Kim.
The modification would have been a combination of prior art elements according to known material to achieve predictable results. See MPEP 2143(I)(A). The substitution would have been one known element for another known element and would have led to predictable results. See MPEP 2143(I)(B).
The modification provides Modified organic light emitting device comprising an anode, an emission layer containing the Compound p19-1 of Kim, and a cathode, wherein the emission layer is an organic layer; and the organic light emitting device is a consumer product, meeting all the limitations of claims 19-20.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2019/0386219 A1) as applied to claim 1 above, further in view of Herron et al. (US 2016/0013413 A1, hereafter Herron).
Regarding claim 16, Kim discloses a compound (Formula 1) used for an organic light emitting device ([0021]-[0022]) and exemplifies a compound ([0113], the first compound on page 19, hereafter Compound p19-1). The Compound p19-1 of Kim reads on all the features of claim 1 as outlined above.
The Compound p19-1 of Kim does not comprise a deuterium atom; however, Kim does teach that the silacyclohexane group corresponding to the linker L of the Formula 1 of Kim ([0048]) can be represented by
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([0054]), wherein R3 to R6 can be substituted alkyl group ([0056]), wherein the substituent of the substituted alkyl group can be deuterium ([0063]). Kim further taches R1, R2, Ar1 through Ar8 of Formula 1 of Kim can be substituted by deuterium ([0011]-[0016], [0063]).
Herron discloses an deuterated amine compound used for an organic light emitting device (Abstract, [0074]).
Herron teaches that deuterated compound provides improved lifetime, high quantum efficiency, good color saturation, and great air tolerance ([0077]).
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the Compound p19-1 of Kim by substituting the all the hydrogen atom of the compound with deuterium, as taught by Kim and Herron.
The motivation of doing so would have been to provide improved lifetime, high quantum efficiency, good color saturation, and great air tolerance based on the teaching of Herron.
Furthermore, the modification would have been a combination of prior art elements according to known material and method to achieve predictable results. See MPEP 2143(I)(A). The substitution of the substituents from hydrogen to deuterium in the compound of Formula 1 of Kim would have been one known element for another known element and would have led to predictable results. See MPEP 2143(I)(B).
The modification provides Compound of Kim as modified by Herron, which has identical structure as Compound p19-1 of Kim except all the hydrogen atoms in the compound are substituted with deuterium.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2019/0386219 A1) as applied to claim 19 above, further in view of Pang et al. (“A full-color, low-power, wearable display for mobile applications”, SPIE, 03/29/2012, hereafter Pang).
Regarding claim 20, the Modified organic light emitting device reads on all the features of claim 1 and claim 19 as outlined above.
The device comprises an anode, an emission layer containing the Compound p19-1 of Kim, and a cathode.
Kim does not disclose a specific display device comprising the Modified organic light emitting device.
Pang discloses a display device (“flexible active matrix OLED display” in Fig. 3) comprising an organic light-emitting device (“C: OLED” in Fig. 3).
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the Modified organic light emitting device of Kim by incorporating it into a display device as taught by Pang.
The motivation of doing so would have been to provide a flexible display device based on the teaching of Pang.
Furthermore, the modification would have been a combination of prior art elements according to known material and method to achieve predictable results. See MPEP 2143(I)(A). The substitution of the organic light-emitting devices in a flexible display would have been one known element for another known element and would have led to predictable results. See MPEP 2143(I)(B).
The modification provides a consumer product (i.e. display device) comprising the Modified organic light emitting device of Kim.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-8, 12-15, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of copending Application No. 18/474,575 (reference application, hereafter Application ‘575). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed at the same aspects of the same invention. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 1-8, 12-15, and 17, Application ‘575 discloses the following compound (claim 16, hereafter Compound A).
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The Compound A of Application ‘575 has identical structure as Applicant’s compound of claim 1, wherein the tetramethyl disilacyclopentane is a first heterocyclic ring; and carbazole and triazine are each a second chemical moiety, meeting all the limitations of claims 1-8, 12-15, and 17.
With respect to claims 4 and 5, each Si atom is bonded to a heterocyclic ring (i.e. tetramethyl disilacyclopentane ring).
With respect to claim 14, the first heterocyclic ring is fused to a benzene ring which bridges a triazine group with a triphenyl silane group.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEOKMIN JEON whose telephone number is (571)272-4599. The examiner can normally be reached Monday - Friday 8:30am to 5:00pm EST.
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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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/SEOKMIN JEON/Primary Examiner, Art Unit 1786
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