DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application has been filed as a divisional of US applications 15/717414, 16/583990, and 17/355801. Claims 1-15 as filed on 11/15/2023 are pending.
Claim Objections
Claim 4 is objected to because of the following informalities:
The chemical structures in claim 4 are not printed clearly. Bonding lines and heteroatoms are blurry.
Appropriate correction is required.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Adamovich et al. (US 2016/0093808 A1).
Adamovich et al. teaches compounds for a light emitting device. Formula I is taught (see par. 78) per instant compounds of claims 1-4:
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In the formula, G2 and G3 may be selected as phenyl or biphenyl per instant R1 and R2 and L2 and L3 may be direct bond (see par. 80, 82). L1 may be direct bond and G1 may be selected as dibenzofuran or dibenzothiophene per instant L1 (see par. 79-80). Integer n may be zero (see par. 85). Group G4 may be pyridine and integer m may be 1 or 2 (see par. 84).
While an example compound is not shown with the above discussed selected groups in combination for a Formula I, given the teachings of the reference, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to have formed compounds as described above, wherein the resultant compounds would also meet the limitations of the instant claims.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Parham et al. (US 2019/0165282 A1).
Parham et al. (US 2019/0165282 A1) teaches compounds of Formula (I) per instant compounds of instant claims 1-4 (see par. 11):
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In the formula, Y may be O or S and X may be CR1 (see par. 12-13) per instant L1 dibenzothiophenylene or dibenzofuranylene groups. Q1 and Q2 groups may include triazine (see Q-18 of par. 48) or pyridine (Q-26 to Q-28 of par. 48). R1 can be phenyl or pyridine (see par. 16, 27). The bonding position of the Parham -L1-Q1 is at a positional isomer position per specific compounds in instant claim 4; however, it would have been obvious to one of ordinary skill prior to the effective filing date to form an isomer compound because per MPEP 2144.09, 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. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
Regarding a device of claims 5 to 7, the compounds of formula (I) may be used in a position of an electron transport layer (see par. 156) and layers of a light emitting device are discussed at par. 106-108 and 213. Regarding claim 8, LiQ alkali metal compound may be used in an electron transport zone layer (see Table 1 at page 100). Regarding claim 9, a layer comprising Formula I and/or Formula I with LiQ could be included in duplicate in a device structure, because mere duplication of parts has no patentable significance unless a new and unexpected result is produced (see MPEP 2144.04).
While an example compound is not shown with the above discussed selected groups in combination for a Formula I, given the teachings of the reference, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to have formed compounds as described above and to have used the compounds in a light emitting device structure, wherein the resultant compounds would also meet the limitations of the instant claims. One would expect to achieve an operational device within the disclosure of Parham with a predictable result and a reasonable expectation of success.
Claims 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Parham et al. (US 20190165282 A1) in view of Kim et al. (US 2015/0280159 A1).
Parham et al. is relied upon as set forth above for the rejection of claim 1.
Regarding a device, the compounds of formula (I) are used in device layers. The compounds may be used in a position of an electron transport layer (see par. 156) and layers of a light emitting device are discussed at par. 106-108 and 213. LiQ alkali metal compound may be used in an electron transport zone layer (see Table 1 at page 100). A layer comprising Formula I and/or Formula I with LiQ could be included in duplicate in a device structure, because mere duplication of parts has no patentable significance unless a new and unexpected result is produced (see MPEP 2144.04). It is not seen where a structure having multiple emitting layers with charge generation layers is specifically discussed in Parham per instant claims 10-15. In analogous art, Kim et al. teaches a light emitting device structure may include multiple emitting parts and charge generating layers with p-type and n-type layers (see Kim claims 1-20). N-type material may include alkali metals (see Kim par. 50). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to have included functional layers of a device structure as taught by Kim et al., wherein the resultant device would also meet the limitations of the instant claims. One would expect to achieve an operational device with materials and layers according to Parham and Kim with a predictable result and a reasonable expectation of success.
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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,856,846 (claim 1 is not included at the present time, because the instant claims do not appear to be clearly defined within ‘846 claim 1). [While the present application is indicated as a divisional application and the parent application had an election of species, it is noted that the present claims include two compounds identical to two compounds claimed in ‘846.] Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1-4 set forth compounds that encompass compounds “ET-211” and “ET-212” set forth in claim 3 of US 11,856,846:
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Therefore, given the overlap between the present claims and the patented claims, it would have been within the skill level of, as well as obvious to, one of ordinary skill in the art to form compounds which are both disclosed by patent US 11,856,846 and encompassed by the scope of the present claims and thereby arrive at the present invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Tanabe et al. US 2009/0131673 A1 discusses dibenzofuran derivatives for an electroluminescent device. The reference is considered relevant to the field of the endeavor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dawn Garrett whose telephone number is (571)272-1523. The examiner can normally be reached Monday through Thursday (Eastern Time).
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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/DAWN L GARRETT/Primary Examiner, Art Unit 1786
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