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 Arguments
Applicant argues that the 112a new matter rejection should be withdrawn in view of the amendments to claims 1, 17 and 20. Examiner agrees that the previous rejection is moot and withdrawn. The 112b rejection of claim 15 is also withdrawn in view of the amendment.
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive.
Applicant argues that Kim does not disclose the claimed Ligands LC. This argument is not convincing. As discussed below, Kim discloses oxalate and picolinate ligands that read on the claimed LC:
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.
Applicant argues that the skilled artisan would not apply the teachings of near infrared region emitters in Kim to the teachings of visible light emitters in Marguiles and Pflumm. This argument is not convincing. The ligands taught in Kim and applied to Marguiles and Pflumm are ancillary ligands. As disclosed by Ise et al (US 20120126692 A1) [0107]:
(X--Y) represents an ancillary ligand. It is thought that such a ligand has no direct contribution to photoactive properties but can make modifications to photoactive properties of molecules. Such a ligand is therefore referred to as an "ancillary" ligand. Definitions of "photoactive" and "ancillary" given to the ligand are aimed at a nonattributive theory. For instance, as to the bidentate ligand in the case of Ir, n may stand for 0, 1 or 2. Ancillary ligands usable in light emitting materials can be selected from those heretofore known in the field. . . Suitable examples of an ancillary ligand include acetylacetonate (acac), picolinate (pic) and their derivatives.
The ordinarily skilled artisan would understand that ancillary ligands could be used interchangeably with emitters that emit light at different wavelengths, i.e. visible and infrared.
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.
Claim 13, 16 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. The claims include embodiments which do not fall in the scope of base claim 1:
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[claim 13, p45 of 74]
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[clm 16, p63]
which are not withing the scope of in claim 1 genera:
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[clm 16, p63]
which include P as a coordinating atom in the Lc
. 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 § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-6, 10, 12-14 and 17-20 is/are rejected under 35 U.S.C. 102(a1) and 102(a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kim et al (US 20200235319 A1).
Kim discloses organic light emitting diodes comprising a phosphorescent dopant including Osmium and three ligands of the formula:
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wherein M include Os [0016-0017]. Preferred examples include specific compounds such as:
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Compound 2 [p26, 0111].
wherein left-hand ligand reads on the claimed LA while the right-hand side ligand reads on the first Lc from claim 16 [p47 of 60 of the claims of 07/14/2025]. The ligand L2 of Kim may also include oxalate (which has two O coordinating atoms) and picolinate (which has O and N as coordinating atoms) [0091 p25], picolinate having the structure:
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The organic layer may also include a host including H47 and other compounds that read on the claims:
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[p46] wherein H47 reads on the compound of claim 16 on p51 of 60 of the claims, third embodiment of the third row.
This rejection is made under both 35 USC 102 anticipation and 35 USC 103 obviousness. Examiner holds the opinion that the limited number of disclosed ancillary ligands would allow the ordinarily skilled artisan to readily envisage the claimed structures of LC, therefore the claims are anticipated. In the alternative, the claims are certainly obvious over the combination of elements disclosed, and the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 7-8, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US 20200235319 A1).
Kim, discussed above, also discloses ligand moieties of the claims A and B rings [see 0071-0083 and 0060-0070, respectively, as well as 0111 for specific examples].
If Applicant argues that the claimed embodiments are not disclosed with sufficient specificity and that examiner is picking and choosing with improper hindsight, Examiner notes that the rejection is made under 35 USC 103 obviousness. Examiner holds the opinion that there a finite number of disclosed ligands that would allow the ordinarily skilled artisan to prepare the claimed combination of ligands. The claims are obvious over the combination of elements disclosed, and the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Claim(s) 1-15 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Marguiles et al (US 20170365801 A1) in view of Kim et al (US 20200235319 A1).
Marguiles discloses compounds of the formulae:
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wherein M includes Os [0099, 130] and the ligands L1, L2, and L3 read on the claimed ligands LA, LB, and LC [0128]. Particular attention is drawn to disclosures of ligands that read on the claimed LA and LB:
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[0123]
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[p19]
As well as those that read on claimed LC:
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[0123].
While the preferred metal atom for M is Iridium, the Osmium atom (Os) is explicitly listed as an equivalent alternative [0099, 0130, 0154, 0194].
Marguiles discussed above, does not disclosed the claimed ligand Lc with the new provisos of claims 1, 17 and 20. Marguiles does disclose the ligand that corresponds to Lc as an acetylacetonate (AcAc), see the citation above from [0123], which are currently excluded from the claim scope.
Kim, discussed above, discloses the claimed ligands Lc with N and O coordinating atoms including oxalates and picolinate [0091, p25]. Kim teaches that these ligands may also be acetylacetonate (AcAc) ligands [0091, p25]. So Kim teaches that the oxalates and picolinates that read on the claims are functionally equivalent to the AcAc of Marguiles as ancillary ligands in the Ir or Os dopant compounds.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the ligand Lc of the claims in the composition of Marguiles because Kim teaches that the claimed picolinate and oxalate containing ligands and the AcAc ligands of Marguiles are functionally equivalent for complexing with an Osmium based dopant in an OLED and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Particular attention is drawn to Compound 1 of Marguiles:
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[p20]
Which is a good example of a compound with the claimed structure M(LA)2(LB),
And to Compound 57:
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[p129]
Which is a good example of a compound with the claimed structure M(LA)(LB)(LC).
The compound is used as light emitting compound in a consumer product an OLED having an anode, cathode, and organic layer according to the claims [0016-0019] and including a host material:
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[p82]
And other hosts according to the claims 18-19 [0205 et seq].
Claim(s) 1-15 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pflumm et al (US 20130053558 A1) in view of Kim et al (US 20200235319 A1).
Pflumm discloses phosphorescent dopants for OLEDs [0113, including the formula:
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[p35]
Wherein the iridium may alternatively be osmium [0115]. The OLED is used in consumer products [0135] and includes the anode, cathode, and organic layer structure of the claims [0119] as well as a host material which includes carbazole among other moieties of claim 18 [0027, 0190].
Pflumm discussed above, does not disclosed the claimed ligand Lc with the new provisos of claims 1, 17 and 20. Pflumm does disclose the ligand that corresponds to Lc as an acetylacetonate (AcAc), see the citation above from [p35], which are currently excluded from the claim scope.
Kim, discussed above, discloses the claimed ligands Lc with N and O coordinating atoms including oxalates and picolinate [0091, p25]. Kim teaches that these ligands may also be acetylacetonate (AcAc) ligands [0091, p25]. So Kim teaches that the oxalates and picolinates that read on the claims are functionally equivalent to the AcAc of Pflumm as ancillary ligands in the Ir or Os dopant compounds.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the ligand Lc of the claims in the composition of Pflumm because Kim teaches that the claimed oxalate and picolinate ligands and the AcAc ligands of Pflumm are functionally equivalent for complexing with an Osmium based dopant in an OLED and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Regarding claim 16, Pflumm discloses the compound
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[p35]
Wherein the iridium may alternatively be osmium [0115]. This is the
This compound is very similar to several of the compounds of claim 16:
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Differing only in that the claimed compounds have osmium and additional methyl groups.
One having ordinary skill in the art at the time the invention was made would have expected the compound of Pflumm and the claimed compounds to have similar if not indistinguishable properties based on the structural similarities of the two compounds. Any difference due to the osmium would be predictable. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991).
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).
Regarding claim 19, as discussed above, Kim discloses the claimed host compounds.
Double Patenting
There is currently no Double Patenting rejection over the claims of US 10862046 B2 or US 10680187 B2 because there is no single claim that requires the Osmium metal atom with the claimed ligands.
Allowable Subject Matter
Claim 16 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim 16 must also be amended to overcome the 112d rejection detailed above.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art, Kim et al (US 20200235319 A1), discloses the claimed L-A and LB ligands used in the claims, but does not disclose the claimed LC. Kim, in the place of LC as an ancillary ligand, discloses the common AcAc, oxalate, and picolinate ligands, which are not included in the scope of claim 16. It would require excessive hindsight on the part of the office to use the less common Osmium atom, the Ligand LA, and the specific and less common LC ligands of claim 16 with their specific substituents on the less common ligand structures. Other common examples of ancillary ligands are shown in US 20050170209 A1 [p2].
Conclusion
Applicant's amendment necessitated the 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 MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm M-F.
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, Randy Gulakowski can be reached on 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/ Primary Examiner, Art Unit 1766