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 .
Status of Claims
This application has been transferred to a new Examiner.
The amendments to the claims filed July 2, 2025 are acknowledged and entered. Claims 19-27 and 31-35 are pending.
Election/Restriction
The present examination is based on Applicant’s election without traverse of Group I (claims 19-27 and 31-33 drawn to an iridium complex of Formula (1) or Formula (2)) and the species of Formula (1) (pictured below for convenience) in the reply filed on November 20, 2025. Claims 34-35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 20, 2025.
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The elected species corresponds to Formula (1) wherein Lact is
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which corresponds to Formula (L-1) wherein CyD is a heteroaryl group which has 6 aromatic ring members (5 carbon atoms and 1 N atom, i.e. pyridinyl) substituted with biphenyl (Ph-Ph) and CyC is an unsubstituted aryl group having 6 aromatic ring atoms (6 carbon atoms, i.e. phenyl); and
L is
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which corresponds to Formula (L-1) wherein CyD is an unsubstituted heteroaryl group which has 6 aromatic ring atoms (5 carbon atoms and 1 N atom, i.e. pyridinyl) and CyC is an aryl group having 6 aromatic ring atoms (6 carbon atoms, i.e. phenyl) substituted with cycloalkanone corresponding to
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;
Applicant submits that claims 19, 21-27, 31-32 and 34-35 encompass the elected species.
The guidelines in MPEP § 803.02 provide that upon examination if prior art is found for the elected species, the examination will be limited to the elected species. See MPEP § 803.02.
The elected species was not found in the prior art and the search was expanded to include the subgenus of Formula (1) wherein
Lact is
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which corresponds to Formula (L-1) wherein CyD is a heteroaryl group which has 6 aromatic ring members (5 carbon atoms and 1 N atom, i.e. pyridinyl) substituted with biphenyl (Ph-Ph) and CyC is an optionally substituted aryl group having 6 aromatic ring atoms (6 carbon atoms, i.e. phenyl);
L corresponds to Formula (L-1) wherein CyD is an optionally substituted heteroaryl group which has 6 aromatic ring atoms (5 carbon atoms and 1 N atom, i.e. pyridinyl) and CyC is an optionally substituted aryl group having 6 aromatic ring atoms (6 carbon atoms, i.e. phenyl); and
Formula (1) wherein
Lact is
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which corresponds to Formula (L-1) wherein CyD is an unsubstituted heteroaryl group which has 6 aromatic ring members (5 carbon atoms and 1 N atom, i.e. pyridinyl) and CyC is an aryl group having 6 aromatic ring atoms (6 carbon atoms, i.e. phenyl) substituted with phenyl; and L corresponds to Formula (L-1) wherein CyD is an unsubstituted heteroaryl group which has 6 aromatic ring atoms (5 carbon atoms and 1 N atom, i.e. pyridinyl) and CyC is an unsubstituted aryl group having 6 aromatic ring atoms (6 carbon atoms, i.e. phenyl).
And art was found. Claims 19-27 and 31 read on the expanded subgenus. Claims 32-33 are drawn to Formula (2) and therefore are not included in the expanded subgenus.
Claims 32-33 (in full) and claims 19-27 and 31 (all in part, other than the above indicated subgenus) are additionally withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species.
Withdrawn Rejections
Applicant is notified that any outstanding rejection or objection that is not expressly maintained in this Office Action has been withdrawn or rendered moot in view of Applicant' s amendments and/or
remarks.
Maintained Rejections
Improper Markush Grouping Rejection
Claims 19-27 and 31 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984).
The reasons for this rejection were set forth in the previous office action mailed August 5, 2024 are incorporated herein by reference.
Response to Arguments
Applicant' s arguments filed October 29, 2024 have been fully considered but they are not persuasive.
Applicant states (page 16-17 of response):
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These remarks are not found persuasive because “oriented emission with an optical anisotropy” is a property and not a structural feature. The only feature which is shared by the claimed compounds is an iridium atom; however, this is not a substantial structural feature.
The rejection is still deemed proper and maintained.
Claim Rejections - 35 USC § 102
Claims 19-27 and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamamoto et al. (US 2014/0306205). The claims read on the compounds disclosed in pages 13-40 of the reference.
Claims 19-27 and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe et al. (US 2014/0252333). The claims read on the compounds disclosed in pages 11-24 of the reference.
The reasons for this rejection were set forth in the previous office action mailed March 5, 2025 are incorporated herein by reference.
Response to Arguments and Affidavit
The affidavit under 37 CFR 1.132 filed July 2, 2025 is insufficient to overcome the previous art rejection based upon Yamamoto et al. (U.S. Pub. No. 2014/0306205) or Watanabe et al. (US 2014/0252333) as set forth in the last Office action because: the prior art compounds tested by Applicant (see Table A, page 17 of response) do not represent the full scope of prior art compounds embraced by the instant claims.
Applicant argues (see pages 16-17 of response filed July 2, 2025) the Declaration states that the above parameters for several complexes disclosed in Yamamoto and Watanabe were previously calculated using the methods described in Part 1 and Part 2 of the Examples section in the as filed Specification; these calculations were first presented in response to an Office Action in the corresponding EP application (EP20703046.1A). The complexes and their calculated optical orientation anisotropy theta and angle values are reproduced in Table A below. As shown in the calculation results in Table A, none of the compounds in either Yamamoto or Watanabe meet the claimed requirements regarding optical orientation anisotropy and angle.
Examiner respectfully disagrees with Applicant’s argument that none of the compounds in either Yamamoto or Watanabe meet the claimed requirements for the reason that Applicant has only provided data for six select prior art compounds (Table A) and these six compounds do not represent the full scope of compounds disclosed in each reference which are embraced by the claims.
Applicant, for instance, provides data for compound
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of Yamamoto (Table A, Reference D5); however, Yamamoto discloses hundreds of additional compounds which are embraced by Formula (1) (see pages 14-39). The chemical arts are highly unpredictable and there is no reason to expect that the prior art compounds tested by Applicant are representative of the hundreds of distinct compounds disclosed in the reference.
One skilled in the art would understand that the properties recited in the claims (e.g. optical orientation anisotropy) are determined based on chemical structure. One skilled in the art would therefore expect that all compounds that meet the structural requirements of instant Formula (1) will also have the recited properties. For instance, Yamamoto teaches a mononuclear iridium complex (page 39, top of right column; pictured below for convenience) which corresponds to Formula (1) wherein Lact is Formula (L-1) wherein CyD is a substituted heteroaryl group which has 5 aromatic ring members and CyC is an substituted aryl group having 6 aromatic ring atoms; and L corresponds to Formula (L-1) wherein CyD is substituted heteroaryl group which has 5 aromatic ring atoms and CyC is a substituted heteroaryl group having 6 aromatic ring atoms. There is no evidence in the record to suggest that this compound of instant Formula (1) disclosed by Yamamoto, and which is distinct from the compound tested by Applicant, does not have the claimed properties.
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The rejection is still deemed proper and therefore maintained.
Claim Rejections - 35 USC § 112a
Claims 19-27 and 31 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.
The reasons for this rejection were set forth in the previous office action mailed March 5, 2025 are incorporated herein by reference.
Response to Arguments
Applicants’ arguments filed July 2, 2025 have been fully considered but they are not persuasive.
Applicants states they have amended claim 19 to recite that the mononuclear iridium complex has a structure of one of the formulae (1) and (2) and to define Lact and L to each independently represent a structure of the formulae (L-1) or (L-2). Applicants respectfully submit that the as-filed Specification provides adequate written description of the claimed genus in amended claim 19.
This argument and amendments are not found persuasive because the scope of the claimed compounds of Formula (1) or Formula (2) is incredibly broad and there is no evidence to show that Applicants were in possession of the entire genus at the time the application was filed. Applicant has not provided sufficient disclosure of identifying characteristics of the claimed compounds to show that Applicants were in possession of the claimed genus.
Moreover, MPEP §2163 II 3 i) provides that “for inventions in emerging and unpredictable technologies, or for inventions characterized by factors not reasonably predictable which are known to one of ordinary skill in the art, more evidence is required to show possession….Conception does not occur unless one has a mental picture of the structure of the chemical, or is able to define it by its method of preparation, its physical or chemical properties, or whatever characteristics sufficiently distinguish it. It is not sufficient to define it solely by its principal biological property, e.g., encoding human erythropoietin, because an alleged conception having no more specificity than that is simply a wish to know the identity of any material with that biological property. We hold that when an inventor is unable to envision the detailed constitution of a gene so as to distinguish it from other materials, as well as a method for obtaining it, conception has not been achieved until reduction to practice has occurred, i.e., until after the gene has been isolated.” (citations omitted)). In such instances the alleged conception fails not merely because the field is unpredictable or because of the general uncertainty surrounding experimental sciences, but because the conception is incomplete due to factual uncertainty that undermines the specificity of the inventor’s idea of the invention. Burroughs Wellcome Co. v. Barr Labs. Inc., 40 F.3d 1223, 1229, 32 USPQ2d 1915, 1920 (Fed. Cir. 1994). Reduction to practice in effect provides the only evidence to corroborate conception (and therefore possession) of the invention”. In the present case, the structure of a compound of Formula (1) or Formula (2) that has the claimed properties cannot be predicted.
The rejection is still deemed proper and maintained.
Claim Rejections - 35 USC § 112b
Claims 19-27 and 31 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 metes and bounds of the “mononuclear iridium complex” cannot be ascertained. One skilled in the art cannot say what this looks like, which atoms are present, what structural formula is intended and how many atoms are present. The claim is defined using experimental data. However, this requires experimentation to understand the metes and bounds of the mononuclear iridium complex.
Response to Arguments
Applicants’ arguments filed July 2, 2025 have been fully considered but they are not persuasive.
Applicants states they have amended claim 19 to recite that the mononuclear iridium complex has a structure of one of the formulae (1) and (2) and to define Lact and L to each independently represent a structure of the formulae (L-1) or (L-2). Applicants respectfully submit that the above formulae sufficiently define the mononuclear iridium complex of amended claim 1 (page 15 of response).
Examiner respectfully disagrees for the reason that the scope of the intended structure of Formula (1) and Formula (2) is not clear based on the specification and the scope of the claim includes a massive number of distinct compounds. “[A] Markush group may be so expansive that persons skilled in the art cannot determine the metes and bounds of the claimed invention. For example, if a claim defines a chemical compound using one or more Markush groups, and that claim encompasses a massive number of distinct alternative members, the claim may be indefinite under 35 U.S.C. 112(b) if one skilled in the art cannot determine its metes and bounds due to an inability to envision all of the compounds defined by the Markush group(s). In such a circumstance, a rejection of the claim for indefiniteness under 35 U.S.C. 112(b) is appropriate.” See MPEP 2173.05(h). This is clearly the case here.
The rejection is deemed proper and maintained.
New Rejections
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 19-20, 22-27 and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Margulies et al. (US2017/0365801 A1) (herein after “Margulies”).
Margulies teaches a mononuclear iridium complex (page 21, compound 13, pictured below for convenience) which corresponds to Formula (1) wherein Lact is
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which corresponds to Formula (L-1) wherein CyD is a heteroaryl group which has 6 aromatic ring members (5 carbon atoms and 1 N atom, i.e. pyridinyl) substituted with biphenyl (Ph-Ph) and CyC is an unsubstituted aryl group having 6 aromatic ring atoms (6 carbon atoms, i.e. phenyl); and the two ligands L are different. One L corresponds to Formula (L-1) wherein CyD is an unsubstituted heteroaryl group which has 6 aromatic ring atoms (5 carbon atoms and 1 N atom, i.e. pyridinyl) and CyC is an unsubstituted aryl group having 6 aromatic ring atoms (6 carbon atoms, i.e. phenyl), and the second L corresponds to Formula (L-1) wherein CyD is an unsubstituted heteroaryl group which has 6 aromatic ring atoms (5 carbon atoms and 1 N atom, i.e. pyridinyl) and CyC is an aryl group having 6 aromatic ring atoms (6 carbon atoms, i.e. phenyl) substituted with CD3.
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The compound of Margulies teaches all structural limitations of Formula (1) and therefore would intrinsically have the claimed properties recited in claims 19, 22-27. Margulies thus anticipates the claimed invention.
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.
A non-statutory obviousness-type 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); and In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985).
Obviousness-type double patenting requires rejection of an application claim when the claimed subject matter is not patentably distinct from the subject matter claimed in a commonly owned patent, or a non-commonly owned patent but subject to a joint research agreement as set forth in 35 U.S.C. 103 (c)(2) and (3), when the issuance of a second patent would provide unjustified extension of the term of the right to exclude granted by a patent. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001); Ex parte Davis, 56 USPQ2d 1434, 1435-36 (Bd. Pat. App. & Inter. 2000).
One having ordinary skill in the art at the time of the invention would have noted that subject matter exists in both the instant invention and the copending application and patents disclosed below that is not patentably distinct from each other. It has also been held that a prior art disclosed genus of useful compounds is sufficient to render prima facie obvious a species falling within a genus. In re Susi, 440 F.2d 442, 169 USPQ 423, 425 (CCPA 1971), followed by the Federal Circuit in Merck & Co. v. Biocraft Laboratories, 847 F.2d 804, 10 USPQ 2d 1843, 1846 (Fed. Cir. 1989).
Claims 19-27 and 31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-26 of copending Application No. 18/028,770 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The reference claims are drawn to an iridium complex of formula Ir(L) wherein L has the structure of Formula (2).
One skilled in the art can clearly see that the iridium complex Ir(L) of the reference application corresponds to instant Formula (1) wherein CyC and CyD of Formula (L-1) correspond to aryl or heteroaryl groups having 6 aromatic ring atoms and which coordinates to the Ir atom via a nitrogen or carbon atom. The reference claims teach the claimed compound and therefore anticipate the instant claims.
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Claims 19-27 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 10,340,471 B2 or claims 1-3 of U.S. Patent No. 10,854,835 or claims 1-15 of U.S. Patent No. 11,631,825 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the claims of the patents.
U.S. Patent No. 10,340,471 B2
The patent claims are drawn to electroluminescent device comprising a compound of general formula (I).
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U.S. Patent No. 10,854,835 B2
The patent claims are drawn to a compound having the general formula (I).
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U.S. Patent No. 11,631,825 B2
The patent claims are drawn to a compound having the general formula (I).
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General formula (I) of the patents represents a narrower genus of compounds which are included in the scope of instant Formula (1). General formula (I) of the patent corresponds to instant Formula (1) wherein CyC and CyD of Formula (L-1) correspond to aryl or heteroaryl groups having 6 aromatic ring atoms and which coordinates to the Ir atom via a nitrogen or carbon atom. One having ordinary skill in the art before the effective filing date of the instant application would have recognized that the compounds disclosed in the patent claims are embraced by instant Formula (1) and are included in the broader genus presently claimed. The patent claims therefore teach the instant compounds and thus anticipate the claimed invention.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN MARTIN whose telephone number is (571)270-0917. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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January 13, 2026
/K.S.M./Examiner, Art Unit 1624
/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624