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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 10/28/2022.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)- (d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
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 1–4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Thompson et al. (US 2022/0298193 A1, hereinafter “Thompson”).
Regarding Claim 1, Thompson discloses Emitter 28 [pg. 109] which reads on Applicant’s General Formula (G1) and General Formula (R-1) (shown below),
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219
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wherein:
R18 and R22 are each an aryl group having 6 carbon atoms (phenyl) substituted with deuterium,
R3 is an alkyl group having 4 carbon atoms (tert-butyl),
R1, R2, R4 to R17, R19 to R21 are each hydrogen,
R7 is represented by Applicant’s General Formula (R-1) wherein:
R31 is an alkyl group having 1 carbon atom (methyl),
R32 to R34 are each hydrogen,
n is 1.
Regarding Claim 2, Thompson discloses an organic light emitting device comprising Emitter 28 in the emissive layer ([0186] and Table 2).
Regarding Claim 3, Thompson discloses Emitter 28 [pg. 109] which reads on Applicant’s General Formula (G2) (shown below),
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416
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319
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wherein:
R18 and R22 are each an aryl group having 6 carbon atoms (phenyl) substituted with deuterium,
R3 is an alkyl group having 4 carbon atoms (tert-butyl),
R1, R2, R4 to R17, R19 to R21 are each hydrogen,
R31 is an alkyl group having 1 carbon atom (methyl),
R32 to R34 are each hydrogen,
n is 1.
Regarding Claim 4, Thompson discloses an organic light emitting device comprising Emitter 28 in the emissive layer ([0186] and Table 2).
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 1–7 are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. (US 2020/0395560 A1, provided in Applicant’s IDS filed on 01/22/2024, hereinafter “Bae”).
Regarding Claims 1–7, Bae discloses complex 164 [pg. 63] which reads on Applicant’s General Formula (G1) and General Formula (R-1) (shown below),
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219
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wherein:
R3, R19, and R21 are each an alkyl group having 4 carbon atoms (tert-butyl),
R1, R2, R4 to R6, R8 to R18, R20, and R22 are each hydrogen,
R7 is represented by Applicant’s General Formula (R-1) wherein:
R31 to R34 are each hydrogen,
n is 1.
However, Applicant’s General Formula (R-1) requires that at least one of R31 to R34 represents an alkyl group or an aryl group.
Complex 164 is represented by Bae’s Formula 1-1 [0014] (shown below), wherein R30 is represented by a C6 aryl group (phenyl) substituted with a cyano group (CN). Bae teaches complex 144 [pg. 59] wherein R30 is represented by a C6 aryl group (phenyl) substituted with alkyl groups (methyl) (shown below). Therefore, a phenyl group substituted with a cyano group and a methyl group is within the scope of Bae’s teachings. Bae further teaches organic light emitting devices comprising a compound of Bae’s Formula 1 have a low driving voltage, high efficiency, high power efficiency, high quantum efficiency, a long lifespan, a low roll-off ratio, and excellent color purity [0207].
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Therefore, given the general formula and teachings of Bae, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to substitute a hydrogen with methyl in the phenyl group of Complex 164, because Bae teaches the variable may suitably be selected as hydrogen or methyl, as shown in Complex 144. The substitution would have been one preferred element for another and one of ordinary skill in the pertinent art would reasonably expect the predictable result that the modified compound would be useful as emitter in the emission layer of the organic light emitting device of Bae and possess the benefits taught by Bae. See MPEP 2143.I.(B).
It would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to choose methyl, as shown in Complex 144, because it would have been choosing the exemplified substituents taught by Bae, which would have been a choice from a finite number of identified, predictable solutions of a compound useful as the emitter in the emission layer of the organic light emitting device of Bae and possessing the benefits taught by Bae. One of ordinary skill in the art would have been motivated to produce additional compounds represented by Bae’s Formula 1 having the benefits taught by Bae in order to pursue the known options within his or her technical grasp with a reasonable expectation of success. See MPEP 2143.I.(E).
Per Claim 1, the modified version of Complex 164, as described above (hereinafter “Modified 164”), reads on Applicant’s General Formula (G1) and General Formula (R-1) (shown below),
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219
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wherein:
R3, R19, and R21 are each an alkyl group having 4 carbon atoms (tert-butyl),
R1, R2, R4 to R18, R20, and R22 are each hydrogen,
R7 is represented by Applicant’s General Formula (R-1) wherein:
R31 is an alkyl group having 1 carbon atom (methyl),
R32 to R34 are each hydrogen,
n is 1.
Per Claim 3, Modified 164 reads on Applicant’s General Formula (G2) (shown below),
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376
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wherein:
R3, R19, and R21 are each an alkyl group having 4 carbon atoms (tert-butyl),
R1, R2, R4 to R18, R20, and R22 are each hydrogen,
R31 is an alkyl group having 1 carbon atom (methyl),
R32 to R34 are each hydrogen,
n is 1.
Per Claim 5, Modified 164 reads on Applicant’s General Formula (G3) (shown below),
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420
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376
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wherein:
R1, R2, R4 to R18, R20, and R22 are each hydrogen,
R31 is an alkyl group having 1 carbon atom (methyl),
R32 to R34 are each hydrogen,
n is 1.
Per Claim 6, Modified 164 is identical to Applicant’s Structural Formula (201) (shown below).
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Per Claims 2, 4, and 7, Bae teaches an organic light emitting device including a first electrode, a second electrode, and an emission layer comprising a compound represented by Bae’s Formula 1 [0041]. Bae further teaches organic light emitting devices comprising a compound of Bae’s Formula 1 have a low driving voltage, high efficiency, high power efficiency, high quantum efficiency, a long lifespan, a low roll-off ratio, and excellent color purity [0207].
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to use Modified 164 in the emission layer of an organic light emitting device, because this would have been combining the prior art elements of Bae according to known methods to yield predictable results of a organic light emitting device with a low driving voltage, high efficiency, high power efficiency, high quantum efficiency, a long lifespan, a low roll-off ratio, and excellent color purity as taught by Bae. See MPEP 2143.I.(A).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/370,219 (reference application) (hereinafter ‘219). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘219 claims Structural Formula (100) which reads on Applicant’s General Formula (G1) (shown below),
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wherein:
R3, R19, and R21 are each an alkyl group having 4 carbon atoms (tert-butyl),
R1, R2, R4 to R11, R13 to R18, R20, and R22 are each hydrogen,
R12 is represented by Applicant’s General Formula (R-1) wherein:
R31 to R34 are each hydrogen,
n is 1.
However, Structural Formula (100) has the CN group in the para position, while Applicant’s General Formula (R-1) requires CN in the meta position.
Structural Formula (100) is represented by ‘219’s General Formula (G1) and General Formula (R-1) (shown below) [0015]– [0016]. ‘219’s General Formula (R-1) shows that the CN group has variable attachment, and may be attached at the meta position.
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Given the general formula and teachings of ‘219, 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 Structural Formula (100) wherein the CN group is attached at the meta position instead of the para position. One of ordinary skill in the pertinent art would have been motivated to produce additional positional isomers of the compound represented by Structural Formula (100) in order to pursue the known options within his or her technical grasp and would expect the isomeric compounds to be useful as emitter in the emissive layer of the organic light emitting device of ‘219 and possess the properties taught by ‘219. 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 version of Structural Formula (100) reads on Applicant’s General Formula (G1) and General Formula (R-1), as shown above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bae et al. (US 2023/0101854 A1, hereinafter “Bae ‘854”) discloses Complex 66 [pg. 42] which is identical to Complex 164, shown above.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES RICHARD FORTWENGLER whose telephone number is (571)272-5433. The examiner can normally be reached Monday - Friday, 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at (571) 270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.R.F./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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