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 .
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)(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 1-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Park (US 2023/0165145 A1).
Regarding claims 1-8, Park teaches an organic light emitting device having improved driving voltage, efficiency, and lifetime by comprising a heterocyclic compound represented by Chemical Formula 1 (abstract; ¶ [0038]). Examples of such devices include Example 33 which includes an anode, a light emitting layer comprising compound 274, and a cathode (¶ [0341]-[0346]; see Table 10 on pg. 199). Compound 274 is reproduced below in comparison to the claimed Chemical Formula 1 (see structure on pg. 75).
274:
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361
250
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1:
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126
317
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Compound 274 reads on the claimed Chemical Formula 1 wherein:
n is an integer of 6 (claim 2);
X is S;
Ar1 is a substituted C6 aryl and particularly a phenyl substituted with deuterium (claim 3); and
Ar2 and Ar3 are each an unsubstituted C12 aryl of biphenyl (claims 4-5).
Park teaches alternative compounds represented by Chemical Formula 1 including compound 393 (see structure on pg. 101).
393:
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237
305
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Compound 393 is identical to the first claimed compound on pg. 30 of claim 6 and thus additionally meets the limitations of claims 1-5.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/272,067 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of ‘067 recites compounds and devices comprising such compounds that meet the limitations of claims 1-8 of ‘707.
For example, claim 1 of ‘067 recites an organic light emitting device including an anode, a cathode, and a light emitting layer, wherein the light emitting layer includes a compound represented by Chemical Formula 1, and claim 6 of ‘067 recites specific examples of compounds represented by Chemical Formula 1 including the compound below (see pg. 33).
Compound of ‘067:
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123
171
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The compound above reads on the limitations of claims 1-5 of ‘707 and a device thereof reads on the limitations of claims 7-8 of ‘707.
‘067 recites Chemical Formula 1 in claims 1-5. As evidenced by the compounds in claim 6 of ‘067, 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 to arrive at the instant claimed Chemical Formula 1, because it would have been choosing from a list of variables specifically taught by ‘067, which would have been a choice from a finite number of identified, predictable solutions of a compound useful possessing the benefits of ‘067. One of ordinary skill in the art would have been motivated to produce additional compounds represented by Chemical Formula 1 of ‘067 having the benefits taught by ‘067 in order to pursue the known options within his or her technical grasp with a reasonable expectation of success. See MPEP 2143.I.(E).
While ‘067 fails to specifically teach a compound that reads on a compound of claim 6 of ‘707, ‘067 does recite in Chemical Formula 1 of claim 1 that n may be an integer from 1 to 6 and Ar1 and Ar2 may each be unsubstituted phenyl groups, as exemplified by the first compound of claim 6 of ‘067.
Therefore, given the general formula and teachings of ‘067, 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 n being 4 with n being 6 (and thus arrive at a compound comprising a fully deuterated dibenzofuran) and to substituted biphenyl with phenyl in the locations of Ar1 and Ar2, because ‘067 teaches the n may suitably be selected as 6 and Ar1 and Ar2 may suitably be selected as phenyl. 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 as the compound represented by Chemical Formula 1 of ‘067 and possess the benefits taught by ‘067. See MPEP 2143.I.(B).
The resulting modified compound reads on the seventh claimed compound of claim 6 of ‘707.
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.
US 2023/0115134 A1 teaches compound P-18 (see structure on pg. 42) which reads on the claimed Chemical Formula 1.
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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