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 .
Response to Amendment
In the response filed 07/16/2025, the claims were amended.
These amendments are hereby entered.
In light of Applicant’s amendments to the claims, the rejection under 35 U.S.C. 103 of claims 1-14 and 16-21 as being unpatentable over Yoo et al. (US 2019/0218240 A1) is withdrawn by the Office.
In light Applicant’s amendments to the claims, the provisional non-statutory double patenting rejection of claims 1-11 and 16-20 over claims 1, 3-5, 7, and 13-20 of application No. 17/036,769 is withdrawn.
Claims 1, 5-9, 11, 13-14, and 21 have been amended.
Claim 12 has been canceled.
Claims 1-11, 13-14, and 16-21 are pending in the application.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4 and 14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With respect to claim 4, the claim references Y11 which has been eliminated from parent claim 1.
With respect to claim 14, the claim contains the limitation that X21-X24 are all carbon atoms while parent claim 1 requires that at least one of X21 through X24 is a nitrogen atom.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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(s) 1-11, 13-14, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (U.S. Pat. No. 6,687,266 B1) in view of Kang et al. (US 2022/0333008 A1) and Beers et al. (US 2014/0131676 A1).
With respect to claim 1, Ma discloses Formula 7 (Col. 11) and Compound 9 (Table 1, Col. 16) which are pictured below.
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552
602
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134
1206
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This compound is derived from the formula in Column 2, which is pictured below.
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358
418
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In this formula, Ma also teaches that A is a heteroaryl ring (Col. 2, lines 66-67) and X is an ancillary ligand (Col.2 lines 65-66).
Ma also teaches that R’4 of Formula 7 is any substituent (Col. 11, lines 37-39) and gives examples of phenyl (C6H5) as a substituent in many of the compounds found in Table 1.
Absent a showing of unexpected results, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound described above since the combination of elements would have yielded the predictable result of a highly tunable phosphorescent light emitting material (Col. 8, lines 66-67), commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
However, while Ma teaches that the X ligand is any mono-anionic ancillary ligand (Col 9, lines 64-66) believed to modify the photoactive properties of the material (Col. 10, lines 1-4), Ma does not teach nor fairly suggest an ancillary ligand that conforms to instant Formula 1-1.
In analogous art, Kang teaches an iridium phosphorescent material for use in an organic electroluminescent device (abstract).
Kang teaches that the iridium phosphorescent material may be a hetero-ligand having a main ligand and an auxiliary ligand, and that the auxiliary ligand may finely adjust the emission wavelength of the hetero-ligand. For example, the auxiliary ligand may be acetylacetonate (acac) or phenylpyridine.
The compound of Ma and the instant claimed invention differ in the identity of the ancillary ligand, however, Kang teaches that the ability of ancillary ligands to fine tune the emissive wavelength of iridium complexes was known in the art prior to the effective filing date of the claimed invention. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention substitute the one known element of an acetylacetonate ligand for a phenylpyridine ligand with the predictable result of fine tuning the emissive wavelength of the highly tunable iridium organometallic compound of Ma, as taught by Kang (MPEP 2143).
However, Ma in view of Kang does not teach nor fairly suggest that the heteroaryl ring of Ma is an aza-dibenzofuran.
In analogous art, Beers teaches an iridium complex for use in an organic light emitting device that comprises a phenylpyridine ancillary ligand and a pyridyl-aza-benzo fused ligand which is useful as an emitter (abstract).
Beers teaches that compounds of the inventive Formula I, which introduce an azadibenzofuran substitution, demonstrate a lowering in the LUMO of the complex due to the electron deficient nature of the azadibenzofuran group, as well as an unexpected blue-shifted emission spectra, which makes them suitable for use as a saturated green color in display applications (paragraph 0045).
Examiner would like to note that the compound of Ma has a PL (nm) of 584 nm, which is green emission.
Ma teaches a highly tunable green-light emitting iridium organometallic complex. Beers teaches a comparable green-light emitting iridium organometallic complex with an aza-dibenzofuran moiety which results in lowering of the LUMO of the complex, as well as tuning of the emissive wavelength to saturated green when used in display applications. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to incorporate an aza-dibenzofuran moiety into the compound of Ma in order to lower to LUMO of the organometallic compound as well as further tune the emitted color, as taught by Beers.
Such a modification produces a compound that meets the requirements of instant Formula 1 when M1 is iridium, L1 is represented by Formula 1-1, n1 is 1, n2 is 2, and L2 is represented by Formula 1-2(4).
In Formula 1-1, Y2 is carbon, Y1 is nitrogen, CY2 is C6 carbocyclic (benzene) group and CY1 is a C5 heterocyclic (pyridine) group, T1 is a single bond, and b1 and b2 are 0 so that R1 and R2 are not present.
In Formula 1-2(4), X11 and X13 are C(R12) and C(R14) respectively, R12 and R14 are hydrogen atoms, X12 is C(R13) and R13 is a C6 aryl (phenyl) group and X14 is a nitrogen atom, a11 is 1 and L11 is a single bond, R16 is a C6 aryl (phenyl) group, X31 is an oxygen atom, X21 is a nitrogen atom, X22 through X24 are C(R35) through C(R38) respectively, and R31 and R32 are hydrogen atoms.
With respect to claim 2, Ma, Kang, and Beers teach the compound of claim 1, and M1 is iridium, as discussed above.
With respect to claim 3, Ma, Kang, and Beers teach the compound of claim 1, and X11 through X13 are C(R12) through C(R14) respectively and X14 is a nitrogen atom, as discussed above.
With respect to claim 4, Ma, Kang, and Beers teach the compound of claim 1, and Y1 is nitrogen and Y2 is carbon.
With respect to claim 5, Ma, Kang, and Beers teach the compound of claim 1 and CY1 and CY2 are each a benzene group or a pyridine group, as discussed above.
With respect to claim 6, Ma, Kang, and Beers teach the compound of claim 1, and R1 to R4 are not present and R12 and R14 are hydrogen atoms, R13 is a C6 aryl (phenyl) group and R16 is a C6 aryl (phenyl) group. R15 is not present, as discussed above.
With respect to claim 7, Ma, Kang, and Beers teach the compound of claim 1, as discussed above.
Ma also teaches that R’4 is a hydrogen atom (Col. 11, lines 37-39).
Such a modification produces a compound that meets the requirements of the instant claim when R12 to R15 are hydrogen atoms and R16 is a C6 aryl (phenyl) group.
Ma teaches each element claimed with the only difference being a lack of the aforementioned selections being explicitly stated. Absent a showing of unexpected results, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound described above since the combination of elements would have yielded the predictable result of a highly tunable phosphorescent light emitting material (Col. 8, lines 66-67), commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
With respect to claim 8, Ma, Kang, and Beers teach the compound of claim 1, ad R31, R32 and R35 to R39 are not linked to R16, as pictured above.
With respect to claim 9, Ma, Kang, and Beers teach the compound of claim 1, and L1 in Formula 1 is a ligand represented by Formula 1-1(1), for the reasons discussed above.
With respect to claim 10, Ma, Kang, and Beers teach the compound of claim 9, and ligand L1 is a phenylpyridine ligand meaning that R21 to R24 are each hydrogen atoms, as discussed above.
With respect to claim 11, Ma, Kang, and Beers teach the compound of claim 1, and L1 in Formula 1 is represented by Formula 1-1(2) for the reasons discussed above.
With respect to claim 13, Ma, Kang, and Beers teach the compound of claim 1, and X31 is an oxygen atom, as discussed above.
With respect to claim 14, Ma, Kang, and Beers teach the compound of claim 1, and in Formula 1-2(4), X21 is nitrogen and all other X characters are carbons atoms.
With respect to claims 16-18, Ma, Kang, and Beers teach the compound of claim 1, and Ma also teaches an organic light emitting device comprising a first electrode (an anode), a hole injection layer, a hole transport layer, an emissive layer, an electron transport layer, and a second electrode (a cathode), in that order (Col. 4, lines 34-44), and the compound is in the emissive layer (abstract).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to use the compound in the emissive layer of a device with the claimed structure, as taught by Ma.
With respect to claim 19, Ma, Kang, and Beers teach the compound of claim 18, and Ma gives an example of a device of the invention and the emission layer further comprises a host (CBP) in a greater weight amount (94%) than the organometallic compound (6%) (Col. 17, lines 61-64).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to use the compound as a dopant and in combination with a host material as taught by Ma.
With respect to claim 20, Ma, Kang, and Beers teach the device of claim 16, and Ma also teaches that one application for the inventive phosphorescent emissive materials is a full color display (Col. 2, lines 21-22).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to use the device of Ma, Kang, and Beers in an electronic apparatus such as a full color display, as taught by Ma.
With respect to claim 21, Ma, Kang, and Beers teach the compound of claim 1, as discussed above.
Beers also teaches that the azadibenzofuran portion of the ligand may have substituent, R1, which may be alkyl, such as a methyl group (paragraph 0066).
Such a modification produces a compound identical to instant Compound 117, which is pictured below.
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314
304
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Beers includes the claimed methyl group, with the only difference between the claimed invention and Beers being a lack of the aforementioned combination being explicitly stated. Absent a showing of unexpected results, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable result of a compound with an aza-dibenzofuran moiety which has lowered LUMO as well as possible saturated green color, commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
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 1-11, 13-14 and 16-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 and 19 of copending Application No. 17/683,671 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because Formula 1B of ‘671 is identical to instant Formula 1-2 of independent claim 1 when CY1 of ‘671 is a heterocyclic group as demonstrated by formula 1-2(4) of claim 14 of ‘671. Instant Formula 1-1 of independent claim 1 also overlaps in scope with formula 1A of ‘671 when Formula 1-1 is a phenylpyridine group. Similarly the transition metals of instant claim 2 overlap in scope with the transition metals of claim 2 of ‘671. The instant compounds may comprise a fluorine group which is a required aspect of ‘671.
Claims 1-11, 13-14 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, and 9-20 of copending Application No. 17/217,638 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because Formula 2 of ‘638 is identical to instant Formula 1-2 of independent claim 1 when instant R11 is a carbazole group (T1 of ‘638). Instant formula 1-1 of independent claim 1 overlaps in scope with L2 of ‘638 which is any bidentate ligand. The narrowing limitations of dependent claims 2-11 and 13-14 overlap with the narrowing limitations of claims 2-5 and 9-16 of ‘638. Similarly, the device claims of instant claims 16-20 overlap in scope with the device claims of claims 17-20 of ‘638.
Claims 1-11, 13-14 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-19 of copending Application No. 17/201,067 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because Formula 1-2A of ‘067 is identical to instant Formula 1-2 when CY11 is a dibenzoheterole, and Formula 1-1 of ‘067 is identical to instant Formula 1-1 when instant R1 is silicon or germanium, which is within the limitation of instant R1. The narrowing limitations of instant dependent claims 2-11 and 13-14 overlap in scope with the narrowing limitations of claims 2-10 of ‘067. Similarly, the device claims of instant claims 16-20 overlap in scope with the device claims of claims 17-19 of ‘067.
Claims 1-11, 13-14 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 and 19-20 of copending Application No. 17/032,392 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because Formula 3 of ‘392 is identical to instant Formula 1-2 when CY11 is a dibenzoheterole, and Formula 2 of ‘392 is identical to instant Formula 1-1 when instant R1 is silicon or germanium, which is within the limitation of instant R1. The narrowing limitations of instant dependent claims 2-11 and 13-14 overlap in scope with the narrowing limitations of claims 2-14 of ‘392. Similarly, the device claims of instant claims 16-20 overlap in scope with the device claims of claims 15-17 and 19-20 of ‘392.
Claims 1-11, 13-14 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-9, 11-12, 15-17, 19, 21-22, and 25-27 of copending Application No. 17/016,806 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because Formula 3 of ‘806 is identical to instant Formula 1-2 when CY11 is a dibenzoheterole, and Formula 2 of ‘806 is identical to instant Formula 1-1 when instant R1 is silicon or germanium, which is within the limitation of instant R1. The narrowing limitations of instant dependent claims 2-11 and 13-14 overlap in scope with the narrowing limitations of claims 2-6, 8-9, 11-12, 15-17, 19, and 21-22 of ‘806. Similarly, the device claims of instant claims 16-20 overlap in scope with the device claims of claims 25-27 of ‘806.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Applicant's amendment necessitated any new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL SIMBANA whose telephone number is (571)272-2657. The examiner can normally be reached Monday - Friday, 8:00 A.M. - 4:30 P.M..
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/R.S./Examiner, Art Unit 1786
/JENNIFER A BOYD/Supervisory Patent Examiner, Art Unit 1786