Semiconductor Energy Laboratory Co., Ltd.

Patent Trials and Appeals Board

Jan 21, 2022

2020005288 (P.T.A.B. Jan. 21, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/212,842 07/18/2016 Satoshi Seo 0553-1338 1147 24628 7590 01/21/2022 HUSCH BLACKWELL LLP HUSCH BLACKWELL SANDERS LLP WELSH & KATZ 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 EXAMINER YANG, JAY ART UNIT PAPER NUMBER 1786 MAIL DATE DELIVERY MODE 01/21/2022 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SATOSHI SEO, TATSUYOSHI TAKAHASHI, TAKEYOSHI WATABE, and SATOMI MITSUMORI Appeal 2020-005288 Application 15/212,842 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREY B. ROBERTSON, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-14. See Final Act. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Semiconductor Energy Laboratory Co., Ltd. Appeal Br. 3. Appeal 2020-005288 Application 15/212,842 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A light-emitting element comprising: a first organic compound; a second organic compound; and a guest material, wherein a lowest unoccupied molecular orbital level of the first organic compound is lower than a lowest unoccupied molecular orbital level of the second organic compound, wherein a highest occupied molecular orbital level of the first organic compound is lower than a highest occupied molecular orbital level of the second organic compound, wherein a highest occupied molecular orbital level of the guest material is higher than the highest occupied molecular orbital level of the second organic compound, wherein an energy difference between a lowest unoccupied molecular orbital level of the guest material and the highest occupied molecular orbital level of the guest material is larger than an energy difference between the lowest unoccupied molecular orbital level of the first organic compound and the highest occupied molecular orbital level of the second organic compound, wherein the guest material converts triplet excitation energy into light emission, and wherein the first organic compound and the second organic compound form an exciplex. Claims Appendix (Appeal Br. 16). REFERENCES The Examiner’s rejections rely on the following prior art references: Name Reference Date Seo US 2013/0292656 Al Nov. 7, 2013 Otsu JP 2014-152151 A Feb. 12, 2013 Appeal 2020-005288 Application 15/212,842 3 REJECTIONS The Examiner maintains the following rejections: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1-14 103 Seo, Otsu OPINION We review the appealed rejections for error based upon the issues Appellant identifies and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that Appellant has identified reversible error, and we affirm the Examiner’s rejection under 35 U.S.C. § 103 for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. In rejecting claim 12, the Examiner finds that Seo teaches an electron- transporting material corresponding to the “first organic compound” recited in claim 1. Final Act. 3. The Examiner finds that Seo teaches examples of such material including 2mDBTPDBq-II. Id. at 4 (citing Seo ¶ 124). The Examiner finds that 2mDBTPDBq-II is “specifically preferred” in the Specification. Id. at 5 (citing the pending Specification as published ¶¶ 206, 2 Appellant argues against the obviousness rejection of claims 1-14 as a group with claim 1 as the representative claim. See Appeal Br. 5-15. Claims 2-14 stand or fall together with claim 1. See id. Appeal 2020-005288 Application 15/212,842 4 207, 210, 211, 217). The Examiner also finds that Seo teaches the “second organic compound” and the “guest material” recited in claim 1 and that Ostu teaches BD-58 as a specific example of the recited “guest material” as “a blue-emitting, phosphorescent iridium-based organometallic complex comprising a triazole skeleton and cyano group in its ligands as preferred” in cited parts of the Specification. Id. at 4-5. Based on the finding that the Specification provides specific examples of the recited first organic compound, second organic compound, and guest material and these specific compounds/materials are known in the art for their respective uses in a light- emitting element, the Examiner finds that the recited properties would be inherently taught. Id. at 4. Appellant acknowledges that “the Examiner cites 2mDBTPDBq-II in the rejection” but argues that a different compound known as “2mDBTBPDBq-II” differs “merely in the central unit being a phenyl group in the Examiner's contention and a biphenyl group” and “the two compounds are structurally similar and would be expected to have similar properties.” Appeal Br. 8. On this premise, Appellant argues that “the light emitted from 2mDBTBPDBq-II at 515 nm would clearly be green light” whereas the prior art compound corresponding to the “guest material” recited in claim 1 is a blue light emitting material. Id. at 9-10. Appellant argues that a skilled artisan would not have combined the green light emitting material, which is of a lower emission energy with the blue light emitting material of a higher emission energy because “the energy of the guest material which contributes to light emission would be quenched by the host compound.” Id. at 10. Appellant argues that doing so would be “contrary to the principle described in Otsu, Seo, and the present application.” Id. (emphases removed). Appeal 2020-005288 Application 15/212,842 5 Appellant also argues that Seo “teaches away from a combination resulting in the guest material being quenched by the first organic compound as such a combination is undesirable as emission efficiency decreases with such an alleged combination.” Id. at 11 (citing Seo ¶ 75). Appellant’s arguments are unpersuasive because they do not identify reversible error in the Examiner’s fact findings in support of the rejection. Appellant acknowledges that the rejection is based on the finding that 2mDBTPDBq-II teaches the first organic compound recited in claim 1 (Appeal Br. 9) and Appellant’s arguments based on a different compound therefore do not address the Examiner’s findings. See Appeal Br. 9-14 (arguing that a skilled artisan would not have combined a different compound known as 2mDBTBPDBq-II for various reasons such as Seo “does not disclose the viability of emitting blue light using the green- emitting host”). Appellant’s argument that these compounds are similar does not show that they would have identical properties such as wavelength emission energy and therefore the arguments based on the wavelength and emission energy of 2mDBTBPDBq-II are not persuasive to show that the Examiner erred in the findings with regard to 2mDBTPDBq-II. Appellant also argues that the Examiner has not shown that the Examiner’s proposed combination would emit blue light. Appeal Br. 13. Appellant’s argument is unpersuasive. From the outset, Appellant’s argument is incommensurate in scope with the claim language which recites a composition without requiring the composition to achieve a particular functionality. Moreover, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a Appeal 2020-005288 Application 15/212,842 6 predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appellant does not dispute that the recited compounds and material are known in the prior art for their respective uses in a light-emitting element and does not argue that the combination of the known prior art compounds would yield unexpected results. The Examiner’s rejection is supported by a preponderance of the evidence and is sustained. CONCLUSION The Examiner’s rejection is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-14 103 Seo, Otsu 1-14 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED