DETAILED ACTION
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 .
Specification
The disclosure is objected to because of the following informalities: various structures throughout the specification are blurry.
Appropriate correction is required.
Claim Objections
Claim 9 is objected to because of the following informalities: claim 9 contains blurry compounds. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 11-12 recite the limitation "the organic material layer" in line 2 rather than “the one or more organic material layers”. There is insufficient antecedent basis for the limitation of “the organic material layer” in the claims.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-4, 6-8, and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choi (English translation of KR 20150021861 A obtained from Espacenet), supporting evidence provided by Ossila (“Electron / Hole Transport Layer Materials | ETL Layer.” Ossila, 2025. Accessed 18 Aug. 2026.)
Regarding claims 1-4, 6-8, and 10-13, Choi teaches an organic light emitting device having improved luminous efficiency and lifespan by including an aromatic derivative represented by chemical formula 1 having excellent luminous efficiency and thermal stability (¶ [0001], [0012]-[0014], and [0272]). Choi teaches examples of such devices including that of HTL Experiment which includes an anode, a hole transport layer including compound G-12, a light emitting layer, a hole blocking layer, and a cathode (¶ [0269]; Table 20 on pg. 137). Compound G-12 is reproduced below in comparison to the claimed Chemical Formula 1.
G-12:
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Chemical Formula 1:
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Compound G-12 reads on the claimed Chemical Formula 1 wherein:
R1 is a group represented by Chemical Formula 2, R2 is a substituted C6 aryl group, and R3 is hydrogen;
a is 0 and b is 1;
m is 1, n1 is 1, and n2 is 6;
L1 is an unsubstituted C6 arylene group and L2 and L3 are each a single bond;
Ar1 and Ar2 are each an unsubstituted C6 aryl group (phenyl) (claim 6); and
p, q, and r are each 1.
Additionally, compound G-12 reads on the claimed Chemical Formula 1-c (claim 2), Chemical Formula 1-c-1 (claim 3) wherein R3 is hydrogen (claim 4), the structural formula
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(claim 7). Compound G-12 does not include deuterium and thus meets the limitations of claim 8.
Per claim 12, a hole transport layer blocks electrons from reaching the anode (see Ossila, middle of pg. 1). Accordingly, a hole transport layer is considered an electron blocking layer.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Choi (English translation of KR 20150021861 A obtained from Espacenet).
Regarding claim 5, Choi teaches compound G-12, as described above with respect to claim 3.
Compound G-12 fails to read on the limitations of claim 5 as the aryl group is substituted with an amine group. However, Choi teaches in chemical formula 1, X2 may be represented by a hydrogen atom or a substituted aryl group (as shown in compound G-12), among others.
chemical formula 1:
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Therefore, given the general formula and teachings of Choi, 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 the group
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in the location of X2 with hydrogen, because Choi teaches X2 may suitably be selected as hydrogen. The substitution would have been one known 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 in the hole transport layer of the device of Choi and possess the benefits taught by Choi above. See MPEP 2143.I.(B).
In particular, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to select hydrogen, because it would have been choosing from a list of groups taught by Choi as suitable for X2, which would have been a choice from a finite number of identified, predictable solutions of a compound useful in the hole transport layer of the device of Choi and possessing the benefits taught by Choi above. One of ordinary skill in the art would have been motivated to produce additional compounds represented by Choi’s chemical formula 1 having the benefits taught by Choi in order to pursue the known options within his or her technical grasp with a reasonable expectation of success. See MPEP 2143.I.(E).
The modified compound G-12 reads on the claimed Chemical Formula 1 wherein R1 is hydrogen. As one of R1 to R3 is not required to be a C6 to C60 aryl group, the limitations of claim 5 are met.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Choi (English translation of KR 20150021861 A obtained from Espacenet) as applied to claim 3 above, and further in view of Parham (US 2016/0308146 A1).
Regarding claim 9, Choi teaches compound G-12, as described above with respect to claim 3.
Compound G-12 fails to read on a claimed compound as it contains two amine groups. However, Choi teaches in chemical formula 1, X2 may be represented by a hydrogen atom or a substituted aryl group (as shown in compound G-12), among others.
chemical formula 1:
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Therefore, given the general formula and teachings of Choi, 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 the group
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in the location of X2 with hydrogen, because Choi teaches X2 may suitably be selected as hydrogen. The substitution would have been one known 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 in the hole transport layer of the device of Choi and possess the benefits taught by Choi above. See MPEP 2143.I.(B).
In particular, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to select hydrogen, because it would have been choosing from a list of groups taught by Choi as suitable for X2, which would have been a choice from a finite number of identified, predictable solutions of a compound useful as in the hole transport layer of the device of Choi and possessing the benefits taught by Choi above. One of ordinary skill in the art would have been motivated to produce additional compounds represented by Choi’s chemical formula 1 having the benefits taught by Choi in order to pursue the known options within his or her technical grasp with a reasonable expectation of success. See MPEP 2143.I.(E).
modified G-12:
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The modified compound G-12 fails to read on a claimed compound as it includes phenyl substituents on the nitrogen atom. However, Choi teaches X3 in chemical formula 1 may be represented by a substituted aryl group having 6 to 50 carbon atoms (¶ [0030]).
Parham teaches a compound represented by general formula (1) for use in a hole transporting layer of an organic electronic device (¶ [0009]-[0010] and [0083]). The compound comprises a hole-transporting group HTG, wherein the HTG may be a triaylamine (¶ [0083]-[0084]). Examples of general formula (1) include Formula (A-149) and Formula (A-150) (pg. 56).
A-149:
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A-150:
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Accordingly, Parham teaches the hole-transporting group
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is a suitable substitute for the hole-transporting group
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in a hole transporting compound of an organic electronic device.
Therefore, given the general formula and teachings of Choi and the teachings of Parham, 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
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with
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in the modified compound G-12, because Choi teaches X3 in chemical formula 1 may be represented by a substituted aryl group having 6 to 50 carbon atoms and because Parham teaches the hole-transporting group
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is a suitable substitute for the hole-transporting group
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in a hole transporting compound of an organic electronic device. The substitution would have been one known 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 in the hole transport layer of the device of Choi and possess the benefits taught by Choi and Parham. See MPEP 2143.I.(B).
The modified compound G-12 reads on the claimed compound 191 (claim 9).
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/290,481 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of ‘491 recites compounds and a device that meets the limitations of claims 1 ,6-8, and 10-13 of ‘180.
For example claim 9 of ‘481 recites compound 474 which reads on the limitations of claims 1 and 6-8 of ‘180.
474 of ‘481:
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Chemical Formula 1 of ‘180
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Compound 474 of ‘481 reads on the Chemical Formula 1 of ‘180 wherein:
R1 is an unsubstituted C6 aryl group, R2 is a group represented by Chemical Formula 2, and R3 is hydrogen;
a is 0 and b is 1;
m is 1, n1 is 1, and n2 is 6;
L1 to L3 are each a single bond;
Ar1 and Ar2 are each an unsubstituted C12 aryl group (biphenyl) (claim 6); and
p, q, and r are each 1.
Additionally, compound 474 reads on the structural formula
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(claim 7), and does not include deuterium (claim 8).
Claim 8 of ‘481 corresponds to claim 8 of ‘180.
Additionally, ‘481 recites Chemical Formula 1 in claims 1-4 and Chemical Formulas 1-1 to 1-3 in claims 5-7. As evidenced by the compounds in claim 9 of ‘481, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to select variables of Chemical Formula 1 and Chemical Formulas 1-1 to 1-3 to arrive at the instant claimed Chemical Formula 1, because it would have been choosing from a list of variables specifically taught, which would have been a choice from a finite number of identified, predictable solutions of a compound possessing the benefits taught by ‘481. One of ordinary skill in the art would have been motivated to produce additional compounds represented by Chemical Formula 1 and Chemical Formulas 1-1 to 1-3 of ‘481 having the benefits taught by ‘481 in order to pursue the known options within his or her technical grasp with a reasonable expectation of success. See MPEP 2143.I.(E).
Additionally, the device of claims 10-14 of ‘481 correspond to the device of claims 10-13 of ‘180, respectively. 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 a compound of ‘481 (for example, compound 474) as described in claims 10-14 of ‘481 and thus comprising the limitations of 10-13 of ‘180, because one of ordinary skill in the art would reasonably have expected the elements of the compound represented by Chemical Formula 1 and the device to predictably maintain their respective properties or functions after they have been combined, and this would have been combining prior art elements according to known methods to yield predictable results. See MPEP 2143.I.(A).
With respect to claims 2-5 and 9 of ‘180, while compound 474 of ‘481 fails to read on one of the claimed Chemical Formulas 1-a, 1-b, or 1-c, ‘481 does recite in claim 1 that any two or more groups adjacent to each other in Chemical Formula 1 may bond to each other to form a substituted or unsubstituted C6 to C60 aromatic hydrocarbon ring or a substituted or unsubstituted C2 to C60 heterocycle.
Chemical Formula 1 of ‘481:
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Therefore, given the general formula and teachings of ‘481, 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 compound 474 wherein R9 and R10 form a ring rather than R10 and R11. One of ordinary skill in the pertinent art would have been motivated to produce additional compounds represented Chemical Formula 1 of ‘471 in order to pursue the known options within his or her technical grasp and would expect the isomeric compounds to possess the properties taught by ‘471. A prima facie case of obviousness exists when chemical compounds have very close structural similarity and similar utilities. See MPEP 2144.09 I. Compounds which are positional isomers or homologs are of sufficiently close structural similarity that there is an expectation that such compounds possess similar properties. See MPEP 2144.09 II.
The resulting modified compound reads on the limitations of claims 2-5 of ‘180 and reads on compound 331 (claim 9) of ‘180.
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.
Compound 126 of US 2018/0366647 A1 anticipates the claimed Chemical Formula 1 (see pg. 150).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRAELYN R WATSON whose telephone number is (571)272-1822. The examiner can normally be reached M-F 7:30am-5pm.
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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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/BRAELYN R WATSON/Primary Examiner, Art Unit 1786
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