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 .
Specification
The disclosure is objected to because of the following informalities:
the resolutions of the following are of poor resolution: ETH70 to ETH76 and ETH-81 to ETH-84 on pages 57-58; Formula M-b on page 70; Reaction Formula 1 on page 106; Reaction Formula 2 on page 108; Reaction Formula 3 on page 109; Reaction Formula 4 on page 110; Reaction Formula 7 on page 114; and Reaction Formula 8 on page 116.
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.
Claims 2-4, 6-7, and 11 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.
Regarding claims 2-4, 6-7, and 11, a portion or all of the chemical structure formulae in claims 2-4, 6-7, and 11 show wherein the phenyl-substituted carbazolyl group is substituted at a position other than the 4-position; however, in the chemical structure formula of Formula 1 in claim 1, from which claims 2-4, 6-7, and 11 depend, the phenyl-substituted carbazolyl group is substituted at the 4-position. Therefore, it is unclear how the structures wherein the phenyl-substituted carbazolyl group is substituted at a position other than the 4-position can depend from Formula 1 and if the heterocyclic compound may also be represented by these formulae.
For purposes of examination, the claims will be interpreted such that the heterocyclic compound may also be represented by the chemical structure formulae wherein the phenyl-substituted carbazolyl group is substituted at a position other than the 4-position.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-4, 6-7, and 11 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claims 2-4, 6-7, and 11, a portion or all of the chemical structure formulae in claims 2-4, 6-7, and 11 show wherein the phenyl-substituted carbazolyl group is substituted at a position other than the 4-position; however, in the chemical structure formula of Formula 1 in claim 1, the phenyl-substituted carbazolyl group is substituted at the 4-position. Therefore, when a structure wherein the phenyl-substituted carbazolyl group is substituted at a position other than the 4-position is selected from the limitations of claims 2-4, 6-7, and 11, the claim fails to further limit the subject matter of the claim upon which it depends, or fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(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 1-20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Tada et al. WO 2021200252 A1, see English language equivalent US-20230139757-A1 referred to herein (hereinafter "Tada").
Regarding claims 1-20, Tada discloses organic EL device of the present invention has one or more light emitting layers between an anode and a cathode opposite to each other, and at least one of the light emitting layers contains a first host, a second host, and a light emitting dopant, wherein the first host is a compound of a general formula (2) (¶ [0059]-[0060]). Tada discloses wherein the device further comprises a hole injection/transport layer, an electron injection/transport layer, and an electron blocking layer between the light emitting layer and the hole injection layer (¶ [0153]). Tada discloses the material used as the first host can also be used as the material for the electron blocking layer (¶ [0183]). Tada discloses specific examples of the compound of a general formula (2) in paragraph [0089] including 2-30
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(page 40), and discloses that, in the general formula (2), a part or the whole of H included in the skeleton such as carbazole may be deuterium (¶ [0074]).
The deuterated compounds of Tada meet the claimed Formula 1.
For example, the compound wherein the left-most carbazolyl group in the above compound is fully deuterated corresponds to the claimed compound 11 and meets the claimed Formula 1 wherein:
m1 is 5;
m2 to m5 are each 4;
m6 to m7 are each 3;
R4 and R5 are each deuterium; and
the remaining of R1 to R7 are each hydrogen.
Therefore, the device of Tada meets claims 1-20.
Claims 1-6, 8-9, and 12-17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Lee et al. US-20220020939-A1 (hereinafter "Lee").
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
The applied reference has a common applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claims 1-6, 8-9, and 12-17, Lee discloses a light-emitting device comprising an interlayer disposed between a first electrode and a second electrode and including an emission layer, wherein the interlayer includes a first compound represented by Formula 1, a second compound represented by Formula 2, and a blue phosphorescent compound (¶ [0007]). Lee discloses the interlayer further includes a hole transport region between the first electrode and the emission layer and an electron transport region between the emission layer and the second electrode (¶ [0119]). Lee discloses wherein the first compound is a host in the emission layer (¶ [0125]). Lee discloses examples of the first compound represented by Formula 1 in paragraph [0066] including
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(page 5), which meets the claimed Formula 1 wherein:
m1 is 5;
m2 to m5 are each 4;
m6 to m7 are each 3;
R4 and R5 are each deuterium; and
the remaining of R1 to R7 are each hydrogen.
Therefore, the device of Lee meets claims 1-6, 8-9, and 12-17.
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 11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. US-20220020939-A1 (hereinafter "Lee") as applied to claims 1 and 12 above.
Regarding claims 11 and 20, Lee discloses the device comprising the compound as described above with respect to claims 1 and 12.
Lee does not exemplify a first compound that corresponds to one of the claimed compounds in claims 11 and 20. However, the Compound 1-9 of Lee is a positional isomer of the claimed compounds 1, 7, 11, 17, 21, and 26. Lee teaches a device including the first compound may have an improved lifespan and improved light emission efficiency (¶ [0114]).
Therefore, given the general formula and teachings of Lee, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to make the positional isomer of Compound 1-9 wherein the carbazolyl groups are attached at different positions to arrive at any one of compounds 1, 7, 11, 17, 21, and 26. One of ordinary skill in the pertinent art would have been motivated to produce additional compounds represented by Lee's Formula 1 in order to pursue the known options within their technical grasp and would expect the isomeric compounds to be useful as a host in the emission layer of the device of Lee and possess the beneficial properties of improved lifespan and improved light emission efficiency taught by Lee. A prima facie case of obviousness exists when chemical compounds have very close structural similarity and similar utilities. See MPEP § 2144.09 I. When compounds which are position isomers or homologs are of sufficiently close structural similarity, there is an expectation that such compounds possess similar properties. See MPEP § 2144.09 II.
The modified Compound 1-9 of Lee corresponds to the claimed compounds 1, 7, 11, 17, 21, and 26.
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 1-6 and 12-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. US-12201017-B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 recites a light-emitting device comprising a first electrode, a second electrode facing the first electrode, and an interlayer disposed between the first electrode and the second electrode and including an emission layer, wherein the interlayer includes a first compound represented by Formula 1 and claim 5 recites wherein the first compound is selected from one of Compounds 1-1 to 1-9, of which Compound 1-9
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meets the claimed Formula 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Hong et al. US-20210135125-A1 teaches tri-carbazole compounds including compound 46 (page 21) and compound 105 (page 33).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth M. Dahlburg whose telephone number is 571-272-6424. The examiner can normally be reached Monday through Thursday, 9 a.m. to 4 p.m. ET, and alternate Fridays.
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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/ELIZABETH M. DAHLBURG/Primary Examiner, Art Unit 1786
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