DETAILED ACTION
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 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.
(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 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (KR 20180066855 A).
Regarding claim 1, Kim teaches an organic compound represented by formula (1) wherein two of Ar1, Ar2, and Ar3 are represented by formula (2) (Chemical Formula 1, [0011]-[0015]), reproduced below:
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410
632
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Regarding the limitation “for a photoelectric conversion element for imaging”, a preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02. Here, the prior art meets the structural limitations required by the claim and is suitable for use in an organic photosensitive device (Kim, [0110]). The prior art meets the limitation by being capable of the intended use.
Regarding claims 2-4 and 8, Kim does not explicitly teach the claimed properties. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, regarding claimed properties or functions, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01(I).
Regarding claim 5, Kim teaches wherein at least two groups of Ar1 to Ar3 has any one of the aromatic ring structure has any one of the aromatic ring structure represented by formula (2) (Chemical Formula 1) and formula (3) ([0033], L3 may be pyrene).
Regarding claim 6, Kim teaches wherein at least two groups of Ar1 to Ar3 has any one of the aromatic ring structure has any one of the aromatic ring structure represented by formula (2) (Chemical Formula 1) and formula (4) ([0016], Ar1 may be dibenzofuran).
Regarding claim 7, Kim teaches wherein at least one group of Ar1 to Ar3 is the aromatic ring structure represented by formula (2), and at least another group of Ar1 to Ar3 has any one of the aromatic ring structure represented by formula (2) or (4) (Chemical Formula 1; [0016], Ar1 may be dibenzofuran).
Regarding claim 9, regarding the limitation “wherein the material is used as a hole transport material”, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114(II). The intended use of the material does not structurally distinguish it from the prior art, which teaches all the structural limitations of the claim. The prior art can meet this future limitation by merely being capable of such intended use. Kim teaches where the material may be used as a hole transport material ([0094]).
Claim Rejections - 35 USC § 103
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 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 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 of this title, 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 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 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR 20180066855 A) in view of Tokuhara (U.S. PGPub 2018/0219047).
Regarding claims 10-11, Kim teaches the material according to claim 1 (see rejection of claim 1). Kim teaches where the material can be used as an electron transport material ([0019]).
Tokuhara teaches a photoelectric conversion element for imaging ([0309]) comprising a photoelectric conversion layer and electron blocking layer between two electrodes (conversion layer 23B, electron blocking layer 20e, [0210]), where the photoelectric conversion layer may comprise a hole transport layer (230p, [0211], [0213]), wherein the hole transport/electron blocking compound is an organic compound ([0213], [0219]).
Therefore it would have been obvious to a person having ordinary skill in the art before the time of the effective filing date to combine the teachings of Tokuhara with Kim such that at least one layer of the photoelectric conversion layer or the electron blocking layer contains the material according to claim 1 for the purpose of providing an appropriate organic compound with improved properties (Kim, [0019]).
Regarding claim 12, the combination of Kim and Tokuhara teaches wherein the photoelectric conversion layer contains an electron transport material (Tokuhara, 230n, [0212], [0214]). It would have been obvious to a person having ordinary skill in the art to further combine the teachings of Kim and Tokuhara for the reasons set forth in the rejection of claim 10.
Conclusion
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/ALIA SABUR/Primary Examiner, Art Unit 2812