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 .
DETAILED ACTION
Claim Objections
Claims 38, 50, and 54 are objected to. The limitation “selected from the group consisting of -SiR1R2R3 or -GeR1R2R3” as found in each of independent claims 38, 50, and 54 should be amended to “selected from the group consisting of -SiR1R2R3, -GeR1R2R3”.
Claim 47 is objected to. The limitation “or combinations thereof. ; and/or” should be amended to “or combinations thereof; and/or”.
Claim Rejections - 35 USC § 112
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.
Claim 46 is rejected under 35 U.S.C. 112(d) 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. Independent claim 38 requires at least one of X3-X11 to be N. However, claim 46 allows for an embodiment where X3-X11 are each independently C, which fails to further limit claim 38, from which claim 46 depends. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim 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.
Claims 38-40, 43-47, 49-52, and 56 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hao et al. (CN-108586533). Copies of the original and a machine translation are included with this Office action.
Claim 38: Hao et al. teaches nitrogen-containing heterocyclic compounds and their employment in organic luminescent devices. One explicitly taught compound is compound 3N which has the structure
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where X is equal to N (page 3). As applied to Formula I of claim 38, compound 3N has all RA groups equal to hydrogen atoms, X1 and X2 equal to C, ring B equal to a 6-membered carbocyclic ring (benzene), two adjacent RB groups being joined together to form a 5-membered ring comprising a Si(Me)2 group, which can be assigned to Formula I as RB being equal to a group comprising -SiR1R2R3 with R1 and R2 equal to methyl and R3 equal to phenyl, where said phenyl group is joined with another RB group to form a ring. Additionally, variables X4-X10 are equal to C or CR, variable X3 is equal to N, and Y is equal to NR’ with R’ equal to a pyrazine group which is joined together with the carbon atom assigned as X8 being joined together with a carbon atom in R’ to from a ring.
Claim 39: In compound 3N, all RA are hydrogen, RB is a -SiR1R2R3 group with a carbon atom from R3 being joined to form a ring, R” does not apply, R’ is equal to a heteroaryl group with one carbon atom being joined to form a ring with the X8-X11 containing ring, and R being equal to hydrogen.
Claim 40: In compound 3N, RB is equal to -SiR1R2R3, thereby satisfying claim 40.
Claim 43: In compound 3N, X1 and X2 are C and ring B is a 6-membered aromatic ring, which satisfies claim 43.
Claim 44: In compound 3N, two adjacent RB substituents are joined to form a fused ring.
Claim 46: In compound 3N, one of X3-X11 is N, thereby satisfying claim 46.
Claim 47: In compound 3N, all RA are equal to hydrogen atoms, thereby satisfying claim 47.
Claim 49: Compound 3N anticipates the first structure recited in claim 49 with all variable assignments being described in claim 38 above.
Claims 50-52: The rejection of claim 38 above is wholly incorporated into the rejection of claims 50-52. Hao et al. employs the compound taught therein as host materials in organic light-emitting devices. The devices are exemplified to comprise an anode, a hole transport region, a light-emitting layer comprising one of the inventive compounds taught therein as a host material and a phosphorescent dopant, an electron transporting region, and a cathode. The employment of any one of the explicitly taught compounds of Hao et al. as a host material in the manner of the working examples is at once envisaged, thereby satisfying claims 50 and 51. The iridium dopants exemplified all satisfy the structural requirements of claim 52.
Claim 56: It is submitted that the act of preparing compound 3N would, at some point in the process, afford a formulation satisfying claim 56. A crude reaction mixture comprising compound 3N, or a solution of purified compound 3N which is prepared for characterization would both qualify as formulations in the broadest reasonable sense.
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 of this title, 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.
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 54 and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Hao et al. (CN-108586533).
Claims 54 and 55: The rejection of claims 38 and 50 above are wholly incorporated into the rejection of claim 53. While Hao et al. does not explicitly teach preparing a consumer product as recited in claim 54, which includes the consumer products of claim 55, it would have nevertheless been obvious to a person having ordinary skill in the art at the time of the invention to incorporate the light-emitting devices of Hao et al. into a conventional consumer product because Hao et al. teaches that the devices taught therein have good lifetimes, and one of ordinary skill in the art would be motivated to leverage this property into a consumer product
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 38-43 and 45-56 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 13-19 of U.S. Patent No. 11,758,807. Although the claims at issue are not identical, they are not patentably distinct from each other. Independent claim 1 of the instant application differs includes all of the limitations of claim 1 of the ‘807 patent. The only difference is that the Markush group for variables R, R’, R”, RA, and RB includes partially or fully deuterated groups. Dependent claims 39 and 47 of the instant application and dependent claim 2 of the ’807 differ in the same manner, but include many of the same groups. Dependent claims 40-43 are identical in language to claims 3-6 of the ‘807 patent. Dependent claim 45 corresponds to claims 7 and 8 of the ‘807 patent; claim 46 corresponds to claim 9 of the ‘807 patent; claim 48 corresponds to claim 10 of the ‘807 patent; and claim 49 corresponds to claim 11 of the ‘807 patent. Independent claim 50 corresponds to claim 13 of the ‘807 patent and overlaps in scope for the same reason as claim 38 described above. Claims 51-53 of the instant application corresponds to claims 14-16 of the ‘807 patent. Independent claim 54 corresponds to claim 17 of the ‘807 patent and overlaps in scope for the same reason as claim 38 described above. Claim 55 of the instant application corresponds to claims 18 of the ‘807 patent, and claim 56 corresponds to claim 19 of the ‘807 patent.
Relevant Art Cited
Additional prior art documents which are relevant to Applicants invention can be found on the attached PTO-892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S LOEWE whose telephone number is (571)270-3298. The examiner can normally be reached on Monday-Friday from 8 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski, can be reached at telephone number 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert S Loewe/Primary Examiner, Art Unit 1766
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