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 .
Claims 21-35 are currently pending and are the subject of this Office Action.
Priority
The Instant application claims priority as follows:
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The effective filing date of the instant claims 28-30 and 33-35 is determined to be December 12, 2024, as stated below.
Specification Objection-Abstract
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
The abstract of the disclosure is objected to because it is not illustrative of members of the claims. 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).
Specification Objection
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification contains no support for the subject matter of claims 28-30.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Vas-Cath Inc. V. Mahurkar, 19 USPQ2d 1111, states that Applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.
In Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc), the Federal Circuit noted the importance of an application's disclosure and stated, “the hallmark of written description is disclosure.” A disclosure adequately describes an invention when it “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. at 1351.
Sufficient description of a genus instead requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus. Id. at 1350; Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568-69 (Fed. Cir. 1997).
“A ‘mere wish or plan' for obtaining the claimed invention is not adequate written description.” Centocor Ortho Biotech, Inc. v. Abbott Labs, 636 F.3d 1341, 1348 (Fed. Cir. 2011). Describing a starting material or an approach does not describe the product that results. A description that merely renders the claim subject matter obvious does not satisfy the requirement. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). See MPEP 2163.
Claim 21 recites a poly(arylene ether) of enormous scope. It covers every combination of monomeric units comprising a benzothiazole TADF chromophore
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, in which Ar1 is an acceptor tuner benzene ring bearing one or more fluoro atoms, and Ar2 is an optionally substituted carbazole (carrying any substituent) and is attached at any of the four positions of the benzothiazole benzo ring; together with any one or more of thirteen listed co-monomers, in any ratio, at any TADF loading (x), at any chain length (n), and with any sequence (random, alternating or block); and any manner in which the TADF and “at least one monomer” are bound to the polymer chain. Additionally, the claims require that each chromophore unit in the polymer must be a “thermally activated delayed fluorescence chromophore.” Claims 22-30 narrow the polymer. Claim 31 recites a film, claim 32 a blue OLED and claims 33-35 a method of generating blue light by exciting the polymer (at 320nm; under nitrogen).
The specification does not describe a single poly(arylene ether) that falls within claim 21. No polymer was synthesized. The specification contains six examples; none of them make, characterize or test a polymer. The only polymer disclosure is generic. The specification states that a chromophore whose acceptor tuner carries F or Cl “may” be incorporated as formula PAE1, [{M1}x-[M2]1-x-M3}n, and one with OH or SH as formula PAE2 ([0024]-[0025]). It then shows two generic drawings in which M2 is represented by 4,4’-difluorodiphenyl sulfone and M3 is represented by bisphenol A. Para [0026]:
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. The generic drawings do not represent what is claimed. No reaction conditions, stoichiometry, value of x or n, molecular weight, solubility, film forming data, thermal data, photoluminescence, delayed- fluorescence lifetime, quantum yield, or device data are given for any polymer. Zero species is not a “representative number of species”.
According to MPEP 2163 (II)(A)(3):
“A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014).”
“If a representative number of adequately described species are not disclosed for a genus, the claim to that genus must be rejected as lacking adequate written description under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”
The disclosure does not show what the claimed polymer looks like. There is no identity of the product. No structural features common to the genus are described.
Regarding the only (prophetic) polymerization described in the specification: the specification says that the acceptor tuner allows covalent incorporation because poly(arylene ethers) are made by nucleophilic aromatic substitution, and that an F- or Cl- substituted tuner would serve as the electrophilic component (formula PAE1). In that reaction the ring fluorines are the leaving groups and are replaced by ether oxygens. However, claim 21 requires that the chromophore in the polymer has a benzene ring “substituted with one or more fluoro atoms.” For the only acceptor tuner the specification actually made, which is a 3,5-difluorophenyl (cl. 25-26), both fluorines are displaced during chain growth. The disclosure therefore describes no polymer in which the chromophore unit would retain fluorine as claimed, and it does not describe how the claimed fluorinated unit is connected to the chain at all.
In addition, the drawn repeat units of claims 29 and 30 are not the product of the (prophetic) described chemistry. They show Ar1 joined to the aryl ring of the sulfone (claim 29), or phosphine oxide (claim 30) unit by a direct carbon-carbon bond, with no ether oxygen, and a repeat unit that terminates in “OH” inside the bracket. Nucleophilic aromatic substitution forms aryl-O-aryl bonds, not aryl-aryl bonds, and a unit capped with OH cannot repeat. No synthetic route to these structures was described, so the drawings do not show possession of them.
In addition, a monofluoro tuner cannot form a repeat unit. Claim 21 reads on a chromophore with a single fluoro atom. A monofunctional electrophile can only cap a chain end, it cannot be present in “each monomeric unit” of a poly(arylene ether). The specification itself says that the ring is substituted with “at least two” R1 groups in the incorporated embodiments. Nothing describes a polymer built from a monofluoro chromophore. In addition, many claimed monomer combinations cannot form a poly(arylene ether). Claim 21 requires that the poly(arylene ether) contains the fluorinated benzothiazole chromophore and any “at least one” listed monomer. Six of the 13 monomers are themselves activated dihalides. Note the 4,4’-difluorodiphenyl sulfone, 4,4’-difluorobenzophenone, 4,4’-difluorotriphenylphopsphine oxide, and the three bis (4-fluorophenyl) heterocycles). An electrophilic chromophore such as that described in claim 26 (
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), combined only with an electrophilic co-monomer, has no nucleophile and cannot give a polymer. The specification gives no indication that the inventor had such combinations, and the claim provides no structure that would. The chromophore loading and chain structure are undescribed. Claims 27 to 30 recite x and n without any value or range. The specification gives none.
The specification, then, is considered devoid of sufficiently detailed, relevant, identifying characteristics demonstrating that Applicant was in possession of the entirety of the claimed genus and how to make it.
The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention. See In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming rejection because the specification does "little more than outlin[e] goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate"). Accordingly, the specification does not reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention.
Claims 28-30 and 33-35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a New matter rejection. The subject matter of these claims was not present in the specification, claims or drawings as of the filing date of the application. The original specification would not have reasonably lead those skilled in the art to the now claimed limitations. The new recitation would not have been obvious from the application description. See MPEP 2163 I. A and B.
The effective filing date of the instant claims 28-30 and 33-35 is determined to be December 12, 2024.
Claims 21-35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
As a general rule, enablement must be commensurate with the scope of claim language. MPEP 2164.08 states, “The Federal Circuit has repeatedly held that “the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.” In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)” (emphasis added).
The test of enablement is whether one skilled in the art could make and use the claimed invention from the disclosures in the specification coupled with information known in the art without undue experimentation (United States v. Telectronics, 8 USPQ2d 1217 (Fed. Cir. 1988)). Patent protection is not granted for the mere germ of an idea; the specification, not the knowledge of the skilled artisan must supply the novel aspects. Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997). Whether undue experimentation is needed is not based upon a single factor but rather is a conclusion reached by weighing many factors. These factors were outlined in Ex parte Forman, 230 USPQ 546 (Bd. Pat. App. & Int. 1986) and again in In re Wands, 8 USPQ2d 1400 (Fed. Cir. 1988). In unpredictable arts, more disclosure is required.
Pursuant to In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), one considers the following factors to determine whether undue experimentation is required: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. Some experimentation is not fatal; the issue is whether the amount of experimentation is “undue”; see In re Vaeck, 20 USPQ2d 1438, 1444.
The analysis is as follows:
(1) Breadth of claims:
The breadth of the claims is enormous. Counting only fluorine patterns on the tuner ring, carbazole attachment positions, and co-monomer selections, claim 21 covers more than 600,000 combinations with an unsubstituted carbazole, before any carbazole substitution as in claim 23, loading x, chain length n, sequence, or linkage is selected. Claims 32 through 35 add a functional result (blue light).
(2) The nature of the invention and predictability in the art:
The nature of the invention appears to be light-emitting conjugated donor-acceptor chromophores covalently bound to form a “polyarylene ether” for OLEDs. The art is unpredictable. "In cases involving unpredictable factors, such as most chemical reactions and physiological activity, the scope of enablement obviously varies inversely with the degree of unpredictability of the factors involved." See In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).
The predictability seems to be low. Small changes to donor-acceptor, substituents or environment, change emission color and quantum yield. Monomer reactivity in nucleophilic aromatic substitution depends on activation (para vs. meta). Whether a given chromophore survives polymerization, keeps TADF and stays blue cannot be predicted from its structure. Ren et al. (Macromolecules 9 August 2016; 49 (15): 5452–5460) illustrates this: with the same pendant TADF unit, changing only the styrene spacer content moved the maximum EQE from 1.4% (homopolymer) to 20.1% and shifted the emission maximum from 533 to 556nm.
(3) Direction or Guidance: The direction is minimal. Two generic formulae (PAE1, PAE2) and two generic drawings were provided. No polymerization procedure, solvent, base, temperature, stoichiometry, end-capping, or purification were disclosed. No guidance on x, n, or which co-monomers work with which chromophores.
(4) State of the Prior Art: As of October 2018, TADF in polymers was an emerging area. Ren et al. disclose “only a few reported examples of polymeric TADF materials” and that synthesizing TADF polymers “is challenging and there are no clear guidelines for their optimal molecular structures”, because triplets in polymers are easily quenched by triplet-triplet annihilation. Retention of the TADF on incorporation depends on backbone triplet energy, conjugation through the linkage, chain packing and charge transfer geometry, and was established case by case.
No reference of record teaches a poly(arylene ether) as claimed.
(5) Working Examples: There are no working examples for any polymer, film of polymer, OLED, or emission from a polymer. The only working examples are four-small molecule syntheses and two small-molecule films.
As stated in MPEP §2164.04[R-1], “Doubt may arise about enablement because information is missing about one or more essential parts or relationships between parts which one skilled in the art could not develop without undue experimentation."
(6) Skill of those in the art: A POSA is a Ph.D.-level polymer or materials chemist with OLED photophysics experience.
(7) The quantity of experimentation needed: The claimed product cannot be made by the specification’s mechanism of incorporation (nucleophilic aromatic substitution on the fluorinated acceptor tuner). That reaction removes the fluorine atoms that claim 21 requires to remain in each unit. In addition, the claimed product cannot be obtained from reacting the tuner ligand of claim 25 together with the chromophore of claim 26. There is no nucleophile in them and thus, cannot give a polymer. The artisan would have to invent a synthesis. Each combination would have to be synthesized, polymerized, characterized for structure and molecular weight, and tested for TADF and color, then built into devices. The artisans would have to figure it all out by themselves. That is not routine optimization.
Blue emission was shown only for the small molecule, and TADF was never shown for anything. Whether that emission survives covalent incorporation into a poly(arylene ether) is an unpredictable step, and it was not tested. The spectra in the specification does not establish TADF. The specifications quantum efficiency statements are unsupported by any measurement.
Weighing all of the factors, the breadth of the claims, the low predictability of the art, the absence of any working polymer example, the minimal direction, and the fact that the disclosed chemistry appears unable to produce a product as claimed, establishes that practicing the full scope of claims 21-35 would require undue experimentation.
MPEP 2164.01(a) states, “A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).” That conclusion is clearly justified here.
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 27-30 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.
The claims lack the definitions for variables x and n.
Conclusion
Claims 21-35 are rejected. No claim is in condition for allowance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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/VALERIE RODRIGUEZ-GARCIA/ Primary Examiner, Art Unit 1621
