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
Claims 1-5, 8-15 of S. Kawakami, et.al. US 18/374,838 (09/29/2023) are pending. Claims 3-5, 9 and 14-15 are withdrawn as not read on the elected species. Claims1-2, 8 and 10-13 are under examination on merits.
Election/Restrictions
Pursuant to the election of species requirement, Applicant elected, without traverse, the General Formula (G2-1) recited in claim 2 as the species of the General Formula (G1) in claim 1 in the reply filed on 04/28/2026 for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Applicant cancelled claims 6-7 in the reply filed on 09/10/2026. Claims1-2, 8 and 10-13 read on the elected species. Claims 3-5, 9 and 14-15 are withdrawn as not read on the elected species. The elected species was searched and determined to be unpatentable for the reason as discussed in the 103 rejection below. The provisional election of species requirement is in effect. MPEP § 803.02(III)(A).
Withdrawal Rejections 35 U.S.C. 112(b)
Rejection of claims 1-2, 6, 8 and 10-13 under 35 U.S.C. 112(b) as indefinite because the limitation of “hydrogen includes deuterium” recited the claims 1-2, 6 and 8 is withdrawn in view of the instant claim 1 has been amended by deletion of the term “hydrogen includes deuterium”.
Withdrawal Claim Rejections - 35 USC § 102
Rejection of claims 1-2,6 and the elected species under 35 U.S.C. 102(a)(1) as being anticipated by H. S. Yong, et al, KR20220120148A is withdrawn in view of claims 1-2 have been amendment with a limitation of the Ar1 as “any one of a substituted or unsubstituted naphthylphenyl group, a substituted or unsubstituted ortho- biphenyl group, a substituted or unsubstituted meta-biphenyl group, a substituted or unsubstituted terphenyl group, and a substituted or unsubstituted spirobifluorenyl group” that cannot be met by Yong.
Rejection of claim 1 under 35 U.S.C. 102(a)(2) as being anticipated by M. Kim, et al, US 20240215441A1 (2024)(“Kim”) is withdrawn for the same reason as given above.
Withdrawal Claim Rejections - 35 USC § 103
Rejection of claims 10-11 under 35 U.S.C. 103 as being unpatentable over H. S. Yong, et al, KR20220120148A (published on 08-30-2022)(“Yong”) is withdrawn for the same reason as given above.
Rejection of claims 1, 6 8 and 10-13 under 35 U.S.C. 103 as being unpatentable over M. Kim, et al, US 20240215441A1 (2024)(“Kim”) is withdrawn for the same reason as given above.
New 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.
Claims 1-2,10-11 and the elected species are rejected under 35 U.S.C. 103 as being unpatentable over W.T. Zhou, et al, CN108689972A (2018)(“Zhou”). Zhou is published in Chinese and a copy of machine translation is attached as a second part, which results the full reference has 56 pages and the format for citation of the reference is xx/56.
W.T. Zhou, et al, CN108689972A (2018) (“Zhou”)
Zhou teaches an aromatic amine compound formula (I) containing 9,9 '-spirobifluorene and dibenzofuran , and an organic electroluminescent device comprising the compound formula (I). Zhou at page 35/56-36/56, Summary of the invention.
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Zhou teaches that the Ar2 is selected from the following groups:
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wherein E and F are independently selected from phenyl fused on a benzene ring. Zhou at page 36/56, the last second paragraph. Per claim 4, Zhou further specifies Ar2 can be elected from the above mentioned groups. Zhou at page 3/56, claim 4.
Zhou teaches Example compounds such as compound HT2-133 with a structure as indicated below. Zhou at page 20/56, the second right compound at line 4.
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Zhou also teaches an light emitting device comprising the compound H2-133, and this light emitting device has both high efficiency and low driving voltage. Zhou at page 33/56, Table, Example 28.
The Zhou compound HT2-133 maps the General Formula G1 and the General Formula G-2 as:
X is oxygen,
Ar1 is an unsubstituted ortho-biphenyl group,
Each of R2-R13, R15-R16 and R25-R28 is hydrogen atom, R14 is phenyl that is an unsubstituted aryl group.
Difference between Zhou and Claims 1-2 and 10-11
The Zhou compound HT2-133 differs from claim 1 in that the diarylamino group in the Zhou HT-133 binds to the C-81 position of the benzo[b]naphtho[1,2-d]furan rather than the C-6 position as claimed.
Obviousness Rationale of claims 1-2 and 10-11
Obviousness of a claimed compound can also be supported where there is motivation to substitute particular chemical moieties in a prior art compound for others so as to arrive at a claimed compound. MPEP § 2143(I)(B). For example, in the pharmaceutical arts, the rational is stated as motivation to select a known compound and also motivation to structurally modify the selected compound in a particular way to achieve a claimed compound. MPEP § 2143(I)(B) (see for example, MPEP § 2143(I)(B) Example 9, citing Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 87 USPQ2d 1452 (Fed. Cir. 2008).
One of ordinary skill is motivated to select the Zhou compound HT2-133 for further investigation because Zhou discloses it as an example the Zhou compound formula (I) and an light emitting device comprising the compound H2-133 has high efficiency and low driving voltage.
Having selected the Zhou compound HT2-133, one of ordinary skill is motivated to modify it through isomerization by binding the diarylamino group to the C-6 position of the benzo[b]naphtho[1,2-d]furan as indicated below, thus arrive at a compound meeting each and every structural limitation of the General Formula G1 and G2-1 in claims 1-2 respectively, therefore, claims 1-2 are obvious.
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One of ordinary skill has a motivation to do so with a reasonable expectation of success because Zhou teaches that the Ar2 in his compound formula (I) can be
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or
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. The proposed compound is a position isomer of the Zhou compound HT2-133. 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. MPEP2144.09.II.
Claims 10-11 are obvious because one of ordinary skill in the art is also motivated to include the proposed compound into an light emitting device as taught by Zhou, and then include the light emitting device into an electric device because the light emitting device comprising the proposed compound has high efficacy and/or low driving voltage.
Allowable Subject Matter
Claims 8 and 12-13 are 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 mentioned above in the 103 rejection that Zhou teaches a compound meeting each and every limitation of claim 1.
The compound taught by Zhou differs from claim 8 in that the R14 is a phenyl group rather than one of the groups claimed by claim 8.
Claim 8 and 12-13 is not obvious because one ordinary skill is not motivated to further modify the proposed compound by replacing the R14 phenyl with a hydrogen atom, a substituted or unsubstituted straight-chain alkyl group having 1 to 6 carbon atoms, or a substituted or unsubstituted cycloalkyl group having 3 to 10 carbon atoms to arrive at the claimed compound or include the further modified compound into an light-emitting device, or an electric device comprising the an light-emitting device. Motivation lacks because the modification would change the rigid in-plane biphenyl unit of spirofluorene and the large π bond of the molecule, and Zhou teaches that both the rigid in-plane biphenyl unit of spirofluorene and the large π bond of the molecule play important role for his compound. See Zhou at 41/56, line 9-14.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
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see L. Jiang, et al, Organic Geochemistry 187 (2024) 104708.
Prosecution Insights