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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because “Provided are”. The abstract recites parenthesis, and it is unclear if the language in the parenthesis is part of the abstract. Examiner suggests deleting parenthesis as well as the language included. The abstract recites formula (4) or (5) ; however, there is no formula 4 or formula 5 shown in the abstract. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1-14 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.
Claim 1 recites [C1] and [C2], claim 4 recites [C3], and claim 5 recites [C4]; however, there is no definition in the claims or specification for [C1], [C2]. [C3], and [C4]. The claims as written are indefinite and unclear. Examiner suggests deleting the recitation in each claim.
Claim 1 recites “wherein a ring A represents a heterocyclic ring represented by formula (5)…” However, there is no formula (5) disclosed in the claim. The claim as written is unclear and indefinite . Appropriate correction is required.
Claims 2-14 depend on claim 1; therefore, the claims are also indefinite and rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Appropriate correction is required.
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.
Claim(s) 1-5 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morimoto et al. (US 2016/0380197 A1).
Regarding claims 1-5 and 10, Morimoto et al. ( see abstract, claims , examples and paragraphs [0097-0113]) disclose 2,7-bis(carbazole-3-yl)triphenylene , which is represented by general formula (1), as a hole transport material that is used in an organic electroluminescent element (see claim 1 and [0097-0113]). The 2,7-bis(carbazole-3-yl)triphenylene represented by general formula (1) disclosed in Morimoto et al. is the same as instantly claimed represented general formula (1), (2) or (3).
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.
Claim(s) 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Morimoto et al. (US 2016/0380197 A1) as applied to claim 1 above.
Regarding claims 6-9, Morimoto et al. do not explicitly recite the material of claim 1 has an energy level of HOMO obtained by structural optimization calculation with a density functional calculation B3LYP/6-31G(d) is -4.5 eV or lower as instantly recited in claim 6 or an energy level of LUMO obtained by the structural optimization calculation with a density functional calculation B3LYP/6-31G(d) is -2.5 eV or higher as instantly recited in claim 7 or has a hole mobility of 1x10-6 cm2/Vs or more as instantly recited in claim 8 or is amorphous as recited in claim 8. However, it is noted that the material disclosed by instant independent claim 1 and 2,7-bis(carbazole-3-yl)triphenylene , which is represented by general formula (1) disclosed by Morimoto et al. is the same chemical compound. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. [MPEP 2112.01 In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)].
Also, claims 6 and 7 recite product by process claim language “obtained by structural optimization calculation with a density functional calculation B3LYP/6-31G(d)”. Applicant is reminded of MPEP 2113: "[E]ven though product-by-process claims are limited by and defined by the process; determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Therefore, it would have been obvious to one of ordinary skills in the art to modify the material of Morimoto et al. to include a HOMO value of -4.5 eV or lower and LUMO value of -2.5 eV or higher and hole mobility of 1x10-6 cm2/Vs and is amorphous as instantly claimed, absent in evidence in the contrary.
Claim(s) 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Morimoto et al. (US 2016/0380197 A1) as applied to claim 1 above, and further in view of Mitsui et al. (US 2010/0308311 A1).
Regarding claims 11-14, Morimoto et al. do not explicitly disclose the photoelectric conversion layer and an electron blocking layer between two electrodes, wherein the electron blocking layer contains the material as recited in claim 1 and the photoelectric conversion layer contains a fullerene derivative as instantly claimed. Nonetheless, the examiner has added Mitsui et al. teach ( see abstract, claims, examples and paragraphs [0021, 0024, 0075-0125 and 0349-0363]) the photoelectric conversion layer and an electron blocking layer between two electrodes, wherein the electron blocking layer contains carbazole compound and the photoelectric conversion layer contains a fullerene derivative is used as an electron transport material. Considering that the hole transport material comprises the carbazole compound material in Morimoto et al., it would have been obvious to one of ordinary skilled in the art at the time of the invention to easily conceive of using the hole transport material comprising a carbazole compound in Morimoto et al. as a material for an electron blocking layer as taught by Mitsui et al. in a known photoelectric conversion element for imaging.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANCEITY N ROBINSON whose telephone number is (571)270-3786. The examiner can normally be reached Monday-Friday (8:00 am-6:00 pm; IFP; PHP).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHANCEITY N ROBINSON/Primary Examiner, Art Unit 1737
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