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 .
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.
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 2, 5 and 9-18 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 2 contains a formular 3a-3k and 3m but does not contain a formula 3l and it is unclear if a 3l is missing from the claim. Additionally, claim 2 does not contain a period at the end of the claim.
Claim 5 is additionally rejected as being dependent on a rejected base claim and including all of the claim limitations thereof.
Claims 9-13 contains the limitation “a photoelectric conversion device” which does not have clear antecedent basis. For the purpose of this Office Action, “a photoelectric conversion device” in claims 9-13 will be treated as if it reads “the photoelectric conversion device”.
Claim 14 contains the limitation “wherein the photoelectric conversion device is a photoelectric conversion device for imaging, comprising a photoelectric conversion layer and an electron blocking layer as organic layers between two electrodes, and the electron blocking layer contains the material for a photoelectric conversion device represented by the general formula (1)” which has unclear antecedent basis. For the purpose of this Office Action, claim 14 will be treated as if it reads “wherein the photoelectric conversion device is a photoelectric conversion device for imaging, comprising a photoelectric conversion layer and an electron blocking layer as the organic layers between the two electrodes, and the electron blocking layer contains the material for the photoelectric conversion device represented by the general formula (1)”.
Claims 15-18 are additionally rejected as being dependent on a rejected base claim and including all of the claim limitations thereof.
Claims 15 and 18 contain the limitation “the hole transport material” which does not have antecedent basis. For the purpose of this Office Acton, “the hole transport material” in claims 15 and 18 will be treated as if it reads “a hole transport material”.
Claim Rejections - 35 USC § 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.
Claims 1-16 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Heil et al. (US 2018/0240983).
Regarding claims 1 and 2, Heil discloses a photoelectric conversion device comprising one or two or more organic layers between two electrodes ([97]-[98]) wherein at least one of the organic layers contains a material for a photoelectric conversion device represented by the claimed general formula 1 (claim 17, see example on Page 14, compound 5).
Regarding claim 3, Heil discloses all of the claim limitations as set forth above. Heil additionally discloses that in the general formula (1), X2 is represented by a single bond, O, or S (See Formula 1 in claim 17 and formula Arl-1, E0 can be a single bond, O or S).
Regarding claim 4, Heil discloses all of the claim limitations as set forth above. Heil additionally discloses that in the general formula (1), Ar1 contains at least one substituted or unsubstituted heteroaromatic group having 3 to 17 carbon atoms and containing an oxygen or sulfur atom ([21]-[23] and [33]).
Regarding claim 5, Heil discloses all of the claim limitations as set forth above. Heil additionally discloses that in the general formula (1), Ar1 is any ring structure represented by the general formulae (3a) to (3m) ([58]-[59], see formulas listed for Ar).
Regarding claims 6-8, Heil discloses all of the claim limitations as set forth above. Heil additionally discloses that in the general formula (1), "a" is 1 and at least two of Ar1 to Ar3 contain the group having the tricyclic condensed-ring structure represented by any of the formulae (2a) to (2e) (See Formula 1 in claim 17, [23]-[24] and formula Arl-1 to Arl-4 and [30]), wherein in the general formula (1), "a" is 1 and at least one of Ar1 to Ar3 contains the group having the tricyclic condensed-ring structure represented by the formula (2c) (See Formula 1 in claim 17, [23]-[24] and formula Arl-1 to Arl-4 and [30]), and wherein in the general formula (1), at least two of Ar1 to Ar3 contain the group having the tricyclic condensed-ring structure represented by the formula (2c) (See Formula 1 in claim 17, [23]-[24] and formula Arl-1 to Arl-4 and [30]).
Regarding claims 9-12, Heil discloses all of the claim limitations as set forth above. Heil discloses a material for a photoelectric conversion device represented by the general formula (1) as discussed above. Since the material of Heil has the same composition as the material claimed and disclosed in the instant specification, it will necessarily display the claimed properties of “wherein, in the material for a photoelectric conversion device represented by the general formula (1), an energy level of highest occupied molecular orbital (HOMO) obtained by structural optimization calculation with a density functional calculation B3LYP/6-31G(d) is -4.0 eV or less”, “wherein, in the material for a photoelectric conversion device represented by the general formula (1), an energy level of lowest unoccupied molecular orbital (LUMO) obtained by structural optimization calculation with a density functional calculation B3LYP/6-31G(d) is -2.5 eV or more” and “wherein the material for a photoelectric conversion device represented by the general formula (1) has a hole mobility of 1 x 10-6 cm2/Vs or more” and “wherein the material for a photoelectric conversion device represented by the general formula (1) is amorphous”.
As discussed in MPEP 2112.01, “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
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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, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Additionally, if the composition is physically the same, it must have the same properties. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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”.
Regarding claim 13, Heil discloses all of the claim limitations as set forth above. Heil additionally discloses that the material for a photoelectric conversion device represented by the general formula (1) is used as a hole transport material ([102] and [109]).
Regarding claim 14, Heil discloses all of the claim limitations as set forth above. Heil additionally discloses that the photoelectric conversion device is a photoelectric conversion device for imaging ([135] and [137]), comprising a photoelectric conversion layer ([98]) and an electron blocking layer as organic layers between two electrodes ([98]), and the electron blocking layer contains the material for a photoelectric conversion device represented by the general formula (1) ([109]-[110] and claim 35).
Regarding claim 15, Heil discloses all of the claim limitations as set forth above. Heil discloses a material for a photoelectric conversion device represented by the general formula (1) as discussed above. Since the material of Heil has the same composition as the material claimed and disclosed in the instant specification, it will necessarily display the claimed properties of “wherein an absolute value of a difference in energy level of HOMO between the material for a photoelectric conversion device represented by the general formula (1) and the hole transport material contained in the photoelectric conversion layer is 1.0 eV or less”.
As discussed in MPEP 2112.01, “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
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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, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Additionally, if the composition is physically the same, it must have the same properties. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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”.
Regarding claim 16, Heil discloses all of the claim limitations as set forth above. Heil additionally discloses that the photoelectric conversion layer contains an electron transport material ([127]-[128]).
Regarding claim 18, Heil discloses all of the claim limitations as set forth above. Heil additionally discloses that the photoelectric conversion layer contains a material having a backbone containing at least two thiophene rings, as the hole transport material ([181], PEDOT:PSS).
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.
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.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Heil et al. (US 2018/0240983), as applied to claim 16 above, in view of Matsui et al. (US 2009/0223566).
Regarding claim 17, Heil discloses all of the claim limitations as set forth above. Heil does not disclose that the photoelectric conversion layer contains a fullerene derivative as the electron transport material.
Mitsui discloses a photoelectric conversion device in Figure 1 containing a fullerene derivative as the electron transport material ([267]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to use a fullerene derivative as the electron transport material in the device of Heil, as taught by Mitsui, because it would result in the simple substitution of one known electron transport material for another to obtain predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDSEY A BUCK whose telephone number is (571)270-1234. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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, Matthew Martin can be reached at (571)270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDSEY A BUCK/Primary Examiner, Art Unit 1728
