DETAILED ACTION
Notice of AIA Status
The instant application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ).
If the status of the application as subject to AIA or pre-AIA is incorrect, any correction of the statutory basis (e.g., changing from AIA to pre-AIA ) for a rejection under 35 U.S.C. §§ 102 and/or 103 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.
Status of the Claims
The listing of claims filed 5 December 2024 has been examined.
Claims 1–20 are pending.
Benefit of Earlier Filing Date
The instant application was filed on 5 December 2024 and claims the benefit of an earlier filing date of U.S. Prov. Pat. App. Serial No. 63/606,279, filed on 5 December 2023. Applicant’s claim is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) received on 16 January 2025 and 19 February 2026 are acknowledged and have been considered.
Claim Objections
Claims 9–15 are objected to for referring to claim 1, which does not recite or provide antecedent bases for “Formula Ia,” “Formula Ib,” “Formula Ic,” “Formula Id,” “R3,” and “R4.”
Appropriate correction is required.
Examiner recommends amending the claims to refer to claim 8.
Claim Rejections - 35 U.S.C. § 112
The following is a quotation 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.
Claims 1–17, 19, and 20 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. The claims contain subject matter that was not described in the Specification in such a way as to reasonably convey to one of ordinary skill in the art that Applicant, when the application was filed, had possession of the claimed invention.
In Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc), the Federal Circuit stated, “the hallmark of written description is disclosure.” A specification adequately describes an invention when it “reasonably conveys to those skilled in the art the inventor had possession of the claimed subject matter as of the filing date.” (Id.). “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).
What is required to meet the written description requirement “varies with the nature and scope of the invention at issue, and with the scientific and technologic knowledge already in existence.” Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). In Ariad, the Federal Circuit explained what is required to meet the written description requirement:
This inquiry, as we have long held, is a question of fact. Ralston Purina, 772 F.2d at 575. Thus, we have recognized that determining whether a patent complies with the written description requirement will necessarily vary depending on the context. Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005). Specifically, the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Id. For generic claims, we have set forth a number of factors for evaluating the adequacy of the disclosure, including “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. at 1359.
(Ariad, at 1351).
The written description of a genus, such as a chemical genus, “requires a precise structure, formula, [or] chemical name” of the claimed subject matter sufficient to distinguish it from other materials. Regents of the Univ. of Cal. v. Eli Lilly & Co., 199 F.3d 1559, 1568 (Fed. Cir. 1997). The Federal Circuit commented on that case in the Ariad decision:
We held that a 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 1568-69. We explained that an adequate written description requires a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials. Id. at 1568 (quoting Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993)). We have also held that functional claim language can meet the written description requirement when the art has established a correlation between structure and function. See Enzo, 323 F.3d at 964 (quoting 66 Fed. Reg. 1099 (Jan. 5, 2001)). But merely drawing a fence around the outer limits of a purported genus is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.
(Ariad, at 1350).
The factors outlined in the above Federal Circuit cases are analyzed below for the claimed invention.
(A) The nature and scope of the claimed invention in view of the specification: the claimed invention relates generally to the chemical art and more specifically to an organic electroluminescent device or consumer product comprising a compound of Formula I having the structure below, in which variables X1–X4 and Y1–Y4 can be C, N, O, S, or Si provided that at least one is N.
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The specification discloses compounds according to Formula I. (Spec., ¶¶5; 65–70). In each disclosure, the compounds correspond to Formula I when each of the variables X1–X4 and Y1–Y4 is C or N.
The specification discloses processes for the synthesis of the compounds of Formula I. (Id. ¶¶112–131). In each disclosure, the compounds correspond to Formula I when each of the variables X1–X4 and Y1–Y4 is C or N.
The specification does not disclose any compounds in which one or more of the variables X1–X4 and Y1–Y4 is O, S, or Si; and the specification does not provide details for preparing such compounds.
(B) The extent and content of the prior art: Examiner is not aware of any prior art showing the claimed but not described subject matter would have been known or obvious to one of ordinary skill in the art. Accordingly, Applicant’s disclosure is critical to show possession.
(C) The maturity of the science or technology: the specification states that OLEDs have “attracted great attention” in recent years. (Spec., ¶3). Most of the references cited in the IDSs submitted by Applicant were published within the last 15 years. Accordingly, the science is best characterized as ascending but not fully mature.
(D) The predictability of the aspect at issue: the chemical art is generally recognized as unpredictable. In re Fisher, 427 F.2d 833, 839 (CCPA 1970). The instant specification notes generally that OLED materials can be modified to tune the wavelength, and further that blue phosphorescent OLEDs suffer from low lifetimes. (Spec., ¶¶2–3). Accordingly, the issues of color wavelength and lifetime must be balanced, and the result as applied in an OLED device is not necessarily predictable. Further, there is no evidence suggesting the claimed invention is highly predictable.
The question of written description
When the above factors and the evidence of record are considered as a whole, the specification (in view of the prior art) does not adequately describe a representative number of species to support the claimed invention to a compound of Formula I in which one or more of the variables X1–X4 and Y1–Y4 is O, S, or Si. Accordingly, the specification would not reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.
Examiner recommends amended the claims to the subject matter supported by the disclosures in the specification; i.e., when each of the variables X1–X4 and Y1–Y4 is C or N.
Claim Rejections - 35 U.S.C. § 102
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.
(i) Claims 1, 8, 11, 13, 17, 19, and 20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by JP 2010215759 (“Merck”). An English language machine translation is attached.
Merck discloses materials for an OLED. (Merck, English Trans. Title; ¶1).
The following compound was indexed in the Registry database for Merck:
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(RN 1246880-79-4).
The compound anticipates instant Formula I when Y2 = N, Ar1 = substituted heteroaryl (Formula Ic); Ar2 = substituted aryl (Formula Ia).
Merck discloses the use of the compounds in an OLED device. (Id., ¶¶27, 62; 73; 74; 557–745). Merck discloses the use of the compounds in a consumer device. (Id., claims 14).
(ii) Claims 1–5, 8, 10, 11, 13, and 17–20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by US 2021/0323963 (“Li et al.”).
Li et al. discloses compounds within the scope of instant Formula I. For example, the following compounds anticipate instant Formula I when X1 = N; Y1 = N, Ar1 and Ar2 = unsubstituted or substituted aryl (Formula Ia) or heteroaryl (Formulae Ib or Ic):
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(Li et al., p.311);
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,
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(Id., p.312);
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(Id., p.313);
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(Id., p.314);
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,
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(Id., p.315); and
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(Id., p.316).
Li et al. discloses the use of the compounds in an OLED device and/or consumer product. (Id., ¶¶20; 71–73; 127–159).
Claim Rejections - 35 U.S.C. § 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.
Graham v. John Deere Co., 383 U.S. 1, 17 (1966); MPEP § 2141(II).
Claims 6, 7, and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Li et al.
Claim 18 includes at least the following subgenera/species that are particularly relevant to this rejection:
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The Graham factors are addressed in turn below.
Determining the scope and contents of the prior art
Li et al. discloses compounds that anticipate instant Formula I, including at least the compounds identified in the above rejection.
Li et al. discloses substituting any of the hydrogen atoms with deuterium (Id., ¶158).
Li et al. discloses, “each of R1, R2, R3, R4, R5, R21 and R22 independently represents hydrogen, deuterium . . .”; each of R1, R2, R3, R4, R5, R21 and R22 independently represents hydrogen, deuterium . . .”; and “each occurrence of R4, R5, R6, R21 and R22 independently represents hydrogen, deuterium . . . (Id., ¶¶16; 88; 97; 108; 114; 124; claims 1–3, 7, 8).
Li et al. discloses that OLED materials can be modified to tune the wavelength at which the emissive layer emits light, and further that blue phosphorescent OLEDs suffer from low lifetimes. (Id., ¶¶2–3).
Ascertaining the differences between the prior art and the claims at issue
Li et al. does not disclose a specific species with deuterium.
Resolving the level of ordinary skill in the pertinent art
The level of one of ordinary skill may be found by inquiring into: (i) the type of problems encountered in the art; (ii) prior art solutions to those problems; (iii) the rapidity with which innovations are made; (iv) the sophistication of the technology; and (v) the education level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 855, 962 (Fed. Cir. 1986). All of the factors may not be present in every case, and one or more of them may predominate. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983). Based on the typically high education level of workers in the pharmaceutical art and the high degree of sophistication required to solve problems encountered in the art, Examiner finds a person having ordinary skill in the art would have at least a college degree in chemistry, biology, biochemistry, pharmacology, or a related field, and several years of experience.
Considering objective evidence present in the application indicating obviousness or nonobviousness
The instant application does not include evidence showing that deuterium results in any unexpected results or significantly improved properties.
The question of obviousness
Based on the above factors, it would have been prima facie obvious for a person having ordinary skill in the art prior to the filing of the instant application to use the teachings of Li et al. to arrive at the claimed subject matter because all of the claim elements are explicitly disclosed and suggested in the reference. One of ordinary skill in the art would have been motivated to substitute deuterium for one or more hydrogen atoms on the species in of Li et al. to tune the wavelength or lifetime of an OLED material comprising the compounds. There would have been a reasonable expectation of success at arriving at the claimed invention because Li et al. discloses and suggests all of the claim elements.
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 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (CCPA 1969).
Please note the following information regarding terminal disclaimers:
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(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.
Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending App. No. 18/054,209 (reference claim).
18/970,142
18/054,209
An organic electroluminescent device comprising a compound of Formula I:
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wherein Ar1 and Ar2 are aryl or heteroaryl
A white organic light emitting device comprising:
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wherein Y1 and Y2 are each selected from the group consisting of alkyl, aryl, heteroaryl, and combinations thereof.
Although the claims at issue are not identical, they are not patentably distinct from each other because they cover the same devices when Y1 and Y2 are aryl or heteroaryl. Although the reference claim also includes alkyl, there are only six combinations for Y1 and Y2 (aryl-heteroaryl; alkyl-aryl; alkyl-heteroaryl; alkyl-alkyl; aryl-aryl; heteroaryl-heteroaryl) and one of ordinary skill in the art would be able to immediately envision instant claim 19 in view of the reference claim. As such, it would have been prima facie obvious to select any one of the six combinations in the reference claim to arrive at the claimed device comprising such compounds. Based on the substantial overlap in claimed subject matter, an infringer of a patent granted based on the claims of one of the instant application or the reference application would also be an infringer of the other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Nolan at (571) 272-2480. The examiner can normally be reached Monday through Friday between 9:00–5:00.
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/JASON M. NOLAN/Patent Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623
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