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 1-20 of O. Kwon et al., US 18/475,535 (Sep. 27, 2023) are pending and under examination. Claims 1-5, 8-13, 15-20 are rejected. Clams 6, 7 and 14 are objectionable.
Claim Objections
Claims 6, 7 and 14 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.
Claim Rejections - 35 USC § 102 (AIA )
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.
§ 102(a)(1)/(2) Rejection W. Choi et al., US 2018/0273563 (2018) (“Choi”)
Claims 1-5, 8-13, 15, 16 and 18-20 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by W. Choi et al., US 2018/0273563 (2018) (“Choi”).
Choi discloses organometallic compounds of Formula 1 M(L1)n1(L2)n2 (Formula 1), where ligand L1 may be of Formula 2. Choi at page 1, [0009]-[0017]. Choi discloses that the organometallic compounds of Formula 1 M(L1)n1(L2)n2 are useful in an organic light-emitting devices (OLEDs). Choi at page 3, [0029]-0033].
Choi discloses iridium species of Choi Formula 1 that anticipate instant claim 1. See Choi at pages 20-44. For instance, in working Example 1, Choi discloses compound 2:
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Choir at page 69. Choi compound 2 meets each and every limitation of claim 1, when: X1 is C; X2 is N; ring CY1 is a C6 carbocyclic group; M1 is iridium; Y1 is O; R1 is hydrogen; R1 is hydrogen and b1 is 1; R2 is an unsubstituted C6 aryl group and b2 is 1; R31 and R32 an unsubstituted C5 alkyl group; and R33 is hydrogen. Choi demonstrates the electrical characteristics and thermal stability, organic light-emitting devices including compound 2 in Evaluation Example 1. Choi at pages 73-74, [0304] (data in Table 2).
Claims 2 and 3 are anticipated by Choi complex 9 because M1 is iridium and the sum of n1 and n2 is 3.
Claim 4 is anticipated because CY1 in Choi complex 1 is a furan group condensed with a benzene group, which meets the claim 4 limitation of “a condensed ring group in which at least one first ring is condensed with at least one second ring”.
Claim 5 is anticipated by Choi complex 9 because the corresponding moiety:
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in complex 9, where corresponding claim 1 variables Y1 is O and R11 and R12 are each independently hydrogen meets claim 5 formula 1-1.
The limitations of claim 8 are clearly met by Choi compound 2, where R1 is hydrogen and b1 is 1; R2 is an unsubstituted C6 aryl group and b2 is 1.
The limitations of claim 9 are clearly met by Choi compound 2, R1 is hydrogen and b1 is 1; R2 is a phenyl group (i.e., claim 9 structure 10-12) and b2 is 1.
The limitations of claims 10-12 are clearly met by Choi compound 2.
The limitations of claim 13 are met by Choi compound 2 because corresponding variable R22 is phenyl.
Claims 15, 16, and 18-20 are anticipated for the following reasons. Choi discloses that the organometallic compounds of Formula 1 M(L1)n1(L2)n2 are useful in an organic light-emitting device (OLED). With respect to the OLED structure Choi teaches that:
[0166] In an embodiment, in the organic light-emitting device, the first electrode is an anode, and the second electrode is a cathode, and the organic layer further includes a hole transport region disposed between the first electrode and the emission layer and an electron transport region disposed between the emission layer and the second electrode, wherein the hole transport region includes a hole injection layer, a hole transport layer, an electron blocking layer, or any combination thereof, and wherein the electron transport region includes a hole blocking layer, an electron transport layer, an electron injection layer, or any combination thereof.
Choi at pages 44-45, [0166]. This is the exact language of instant claim 19. In Evaluation Example 1, Choi discloses use of compound 2 in the following OLED device that corresponds to the OLED device of Choi’s above paragraph [0166]. In Choi’s Evaluation Example 1, m-MTDATA was deposited on an ITO electrode (anode) on an ITO glass substrate to form a hole injection layer and α-NPD was deposited on the hole injection layer to form a hole transport layer. Choi at page 73, [0300]. Next, compound 2 (dopant) and CBP (host) were respectively co-deposited on the hole transport layer to form an emission layer. Choi at page 73, [0301]. Next, BAlq was deposited on the emission layer to form a hole blocking layer and Alq3 was deposited on the hole blocking layer to form an electron transport layer, LiF was deposited on the electron transport layer to form an electron injection layer, and Al was vacuum-deposited on the electron injection layer to form a second electrode (cathode). Choi at page 73, [0302].
Choi’s Evaluation Example 1 meets each and every structural limitation of claims 15, 16, and 18-20, which are therefore anticipated.
The limitations of claim 18 are met because Choi’s compound is the same compound claimed and the instant specification teaches that the claimed compounds emit red light at the claim 18 wavelength. Specification at page 34, [0072]. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
The limitations of claim 20 are met because the device of Choi Evaluation Example 1 is (per claim 20) an “electronic apparatus” that comprises the organic light-emitting device. See, specification at page 63, [00171].
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under AIA 35 U.S.C. 103(a) 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 15-20 are rejected under 35 U.S.C. 103 as obvious over W. Choi et al., US 2018/0273563 (2018) (“Choi”).
Choi discloses organometallic compounds of Formula 1 M(L1)n1(L2)n2 (Formula 1), where ligand L1 may be of Formula 2:
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Choi at page 1, [0009]-[0017]. Choi teaches that ligand L2 in Formula 1 may be selected from ligands represented by Formulae 3-1 to 3-15; structure of ligand 3-1 depicted below:
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Choi at pages 18-19, [0133]. Choi discloses iridium species of Choi Formula 1 that anticipate instant claim 1. See Choi at pages 20-44.
For instance, in working Example 1, Choi discloses compound 2:
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Choir at page 69. Choi compound 2 meets each and every limitation of claim 1, when: X1 is C; X2 is N; ring CY1 is a C6 carbocyclic group; M1 is iridium; Y1 is O; R1 is hydrogen; R1 is hydrogen and b1 is 1; R2 is an unsubstituted C6 aryl group and b2 is 1; R31 and R32 an unsubstituted C5 alkyl group; and R33 is hydrogen. Choi demonstrates the electrical characteristics and thermal stability, organic light-emitting devices including compound 2 in Evaluation Example 1. Choi at pages 73-74, [0304] (data in Table 2).
Choi discloses that the organometallic compounds of Formula 1 M(L1)n1(L2)n2 are useful in an organic light-emitting device (OLED). With respect to the OLED structure Choi teaches that:
[0166] In an embodiment, in the organic light-emitting device, the first electrode is an anode, and the second electrode is a cathode, and the organic layer further includes a hole transport region disposed between the first electrode and the emission layer and an electron transport region disposed between the emission layer and the second electrode, wherein the hole transport region includes a hole injection layer, a hole transport layer, an electron blocking layer, or any combination thereof, and wherein the electron transport region includes a hole blocking layer, an electron transport layer, an electron injection layer, or any combination thereof.
Choi at pages 44-45, [0166]. This is the exact language of instant claim 19.
Choi demonstrates the electrical characteristics and thermal stability, organic light-emitting devices including compound 2 in Evaluation Example 1. Choi at pages 73-74, [0304] (data in Table 2). In Evaluation Example 1, Choi discloses use of compound 2 in the following OLED device (and whichcorresponds to the OLED device of Choi’s above paragraph [0166]). In Choi’s Evaluation Example 1, m-MTDATA was deposited on an ITO electrode (anode) on an ITO glass substrate to form a hole injection layer and α-NPD was deposited on the hole injection layer to form a hole transport layer. Choi at page 73, [0300]. Next, compound 2 (dopant) and CBP (host) were respectively co-deposited on the hole transport layer to form an emission layer. Choi at page 73, [0301]. Next, BAlq was deposited on the emission layer to form a hole blocking layer and Alq3 was deposited on the hole blocking layer to form an electron transport layer, LiF was deposited on the electron transport layer to form an electron injection layer, and Al was vacuum-deposited on the electron injection layer to form a second electrode (cathode). Choi at page 73, [0302].
Choi’s Evaluation Example 1 meets each and every device limitation of claims 15-20. With respect to claim 17, Choi teaches that
[0162] The organometallic compound represented by Formula 1 may be used between a pair of electrodes of an organic light-emitting device. For example, the organometallic compound represented by Formula 1 may be included in the emission layer. In this embodiment, the organometallic compound may act as a dopant, and the emission layer may further include a host (that is, in the emission layer, an amount of the organometallic compound represented by Formula 1 is smaller than an amount of the host).
Choi at page 44, [0162].
Differences between Choi and Claims 15-20
Per the § 102 above, Choi Evaluation Example 2 teaches each and every limitation of claims 15, 16 and 18-20. The § 103 rejection of these claims is made in the alternative.
Choi Evaluation Example 2 differs from claim 17 in that it does not specifically state that “an amount of the host in the emission layer is greater than an amount of the at least one of the organometallic compound in the emission layer”. However, Choi teaches this limitation in the specification body. Choi at page 44, [0162].
Obviousness Rationale
Claims 15-20 are obvious in view of Choi for the following reasons. One of ordinary skill is motivated to employ Choi compound 2 in combination with a host compound (e.g., CBP (host) per Choi Evaluation Example 1) in the organic-light emitting device (OLED) recited in claims 15-20 (which is the same device taught by Choi) because this is the very purpose taught by Choi for use of compound 2. One of ordinary skill is further motivated to practice the claim 17 limitation of “an amount of the host in the emission layer is greater than an amount of the at least one of the organometallic compound in the emission layer”, because Choi teaches this ratio. Choi at page 44, [0162]. Accordingly, practice of Choi as proposed above meets each and every limitation of claims 15-20.
The limitations of claim 18 are met because Choi’s compound is the same compound claimed and the instant specification teaches that the claimed compounds emit red light at the claim 18 wavelength. Specification at page 34, [0072]. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
The limitations of claim 20 are met because the device of Choi Evaluation Example 1 is (per claim 20) an “electronic apparatus” that comprises the organic light-emitting device. See, specification at page 63, [00171]. Alternatively, one of ordinary skill is motivated to employ the Choi OLED in an electronic apparatus, for example, a computer screen.
Non-Statutory Double Patenting
The non-statutory 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 non-statutory 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).
Non-statutory Double Patenting Rejection over W. Choi et al., US 11,780,867 (US Appl. No. 17/128,323 (Dec. 21, 2020)
Claims 1-5, 8-13 and 15-20 are rejected on the ground of non-statutory double patenting as being unpatentable over conflicting claims 1, 9 and 13 of W. Choi et al., US 11,780,867 (US Appl. No. 17/128,323 (Dec. 21, 2020). Note that US 11,780,867 is the patent issuing from W. Choi et al., US 2018/0273563 (2018) (“Choi”), as cited in the above prior art rejections.
Conflicting claim 9 claims the organometallic compounds of formula 1 M(L1)n1(L2)n2, where L1 is of formula 2a:
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Conflicting Formula 2a falls completely with the scope of instant claim 1 ligand L1 of formula 1A. Conflicting claim 13 lists formula 3-1
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as an alternative for ligand L2 in the organometallic compounds of formula 1 M(L1)n1(L2)n2. Conflicting formula 3-1 falls completely within the scope of instant claim 1 ligand L2. Base conflicting claim 1 lists metals M overlapping with the instantly claimed metals (per instant claim 2), including iridium.
The instant claims 1-5, 8-13 and 15-20 are patentably indistinct from conflicting claims 1, 9 and 13 for the following reasons.
Significantly, every one of the 144 species of M(L1)n1(L2)n2 disclosed in the conflicting specification is a combination of the ligands of conflicting claims 9 and 13, where iridium is the metal. See organometallic compounds 1-144 at conflicting specification cols. 37-85. The conflicting claims are therefore properly interpreted as directed to formula M(L1)n1(L2)n2 (of conflicting claim 1) where ligand L1 is that of conflicting claim 9 and ligand L2 is formula 3-1 of conflicting 13.1 Such a subgenera constructed from conflicting claims 9 and 13 falls within (anticipates) instant claim 1. And just about every one of the 144 disclosed conflicting species anticipates one or more of instant claims 1-5 and 8-13; albeit the conflicting claims themselves do not claim species. See footnote 1. Instant claims 1-5, 8-13 are patentably indistinct from conflicting claims 1, 9, and 13 because the conflicting claims are directed to covering the anticipating compounds disclosed in the conflicting specification. See footnote 1.
Alternatively, instant claims 1-5, 8-13 are patentably indistinct from conflicting claims 1, 9, and 13 because one of ordinary skill can instantly envisage the combination of conflicting claims 9 (formula 2A as ligand L1) and 13 (formula 3-1 as ligand L2) in conflicting claim 1 formula M(L1)n1(L2)n2 thereby meeting the chemical structure limitations of the instant claims. A reference disclosure can anticipate a claim when the reference describes the limitations but does not expressly spell out the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination. MPEP § 2131.03(III) (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962))). Here one of skill can immediately envisage each claimed compound genus from conflicting claims 9 and 13.
With respect to instant claim 15-20, conflicting claims 14-17 claim the same OLED device structure for use of the compounds as instant claims 15-20. Instant claims 15-20 are therefore patentably indistinct from conflicting claims 14-17.
Terminal Disclaimer
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.
Subject Matter Free of the Art of Record
Claims 6, 7 and 14 are free of the art of record. Claims 6 and 7 are directed to the compound of claim 1 where ligand L1/Formula 1A is a phenanthrene of formula 2-1 to 2-3 as follows (i.e., the claim 1 variable X2 is carbon):
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Claim 14 is directed to 68 species where ligand L1/Formula 1A is also a phenanthrene. The closest art of record is W. Choi et al., US 2018/0273563 (2018) (“Choi”).
Choi discloses organometallic compounds of Formula 1 M(L1)n1(L2)n2 (Formula 1), where ligand L1 may be of Formula 2:
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Choi at page 1, [0009]-[0017]. Choi teaches that CY1 in Formula 2/ligand L1 may be a benzoquinoline group or a benzoisoquinoline group. Choi at page 1, [0015]. Choi teaches that ligand L2 in Formula 1 may be selected from ligands represented by Formulae 3-1 to 3-15; structure of ligand 3-1 depicted below
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Choi at pages 18-19, [0133]. Choi discloses species of the organometallic compounds of Formula 1 M(L1)n1(L2)n2. See Choi at pages 20-44 (listing Choi’s disclosed species).
For instance, in working Example 1, Choi discloses compound 2:
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Choir at page 69. Choi demonstrates the electrical characteristics and thermal stability, organic light-emitting devices including compound 2 in Evaluation Example 1. Choi at pages 73-74, [0304] (data in Table 2).
Note that Choi does not disclose any species wherein CY1 in the above ligand of Formula 2 is phenanthrene as required by instant claim 6. See Choi at pages 20-44 (listing Choi’s disclosed species).
Choi discloses that the organometallic compounds of Formula 1 M(L1)n1(L2)n2 are useful in an organic light-emitting device (OLED), having the following structure:
[0029] According to one or more embodiments, an organic light-emitting device includes:
[0030] a first electrode;
[0031] a second electrode; and
[0032] an organic layer disposed between the first electrode and the second electrode,
[0033] wherein the organic layer includes an emission layer and at least one organometallic compound described above.
Choi at page 3, [0029]-0033]. With respect to the OLED structure Choi teaches that:
[0166] In an embodiment, in the organic light-emitting device, the first electrode is an anode, and the second electrode is a cathode, and the organic layer further includes a hole transport region disposed between the first electrode and the emission layer and an electron transport region disposed between the emission layer and the second electrode, wherein the hole transport region includes a hole injection layer, a hole transport layer, an electron blocking layer, or any combination thereof, and wherein the electron transport region includes a hole blocking layer, an electron transport layer, an electron injection layer, or any combination thereof.
Choi at pages 44-45, [0166]. Choi teaches that the organometallic compound may act as a dopant in the emission layer. Choi at page 3, [0034]; Id. at page 44, [0156]. Choi teaches that:
For example, the organometallic compound represented by Formula 1 may be included in the emission layer. In this embodiment, the organometallic compound may act as a dopant, and the emission layer may further include a host (that is, in the emission layer, an amount of the organometallic compound represented by Formula 1 is smaller than an amount of the host).
Choi at page 44, [0162] (emphasis added).
Differences between Choi and Claim 6, 7 and 14
Choi’s organometallic compounds of Formula 1 M(L1)n1(L2)n2 differ from claims 6, 7 and 14 in phenanthrene versus benzoquinoline in the claimed ligand of Formula 1a.
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Claims 6, 7 and 14 Are Not Obvious in view of Choi
In the chemical arts, a claimed compound can be found obvious where there is 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).
Here claims 6, 7 and 14 are not obvious over Choi because neither Choi nor secondary art motivates one of ordinary skill to replace the nitrogen in the benzoquinoline group of Choi’s ligand L1 (e.g., in Choi compound 2) with carbon so as to arrive at a claimed compound comprising phenanthrene.
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Those portions of the specification which provide support for the conflicting claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application. MPEP § 804(II)(B)(1) (citing In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970)). The court in Vogel recognized ‘that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,’ but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. MPEP § 804(II)(B)(1).
Prosecution Insights