DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/27/2026 has been entered.
Claim Objections
Claim 17 is objected to because of the following informalities: Claim 17 recites “benzothiphene” which appears to be a typographical error of “benzothiophene”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10, 13-14, 17, and 19-25 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation “the sensitizer contains a metal-carbene bond”. However, while there is support in the Specification as originally filed to recite specific organometallic complexes containing a metal carbene bond such as those disclosed on Pages 9-10 of the as-filed Specification, e.g.
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there is no support in the Specification as originally filed for the relatively broader limitation “the sensitizer contains a metal-carbene bond”. That is, the limitation “the sensitizer contains a metal-carbene bond” encompasses not only the specific organometallic complexes disclosed in the instant Specification as comprising a metal-carbene bond, but all such complexes, including those not disclosed in the instant Specification.
Furthermore, claim 1 recites the limitation “the acceptor comprises a boron atom”. However, while there is support in the Specification as originally filed to recite specific boron atom comprising compounds such as those disclosed on Pages 10-11 of the as-filed Specification, e.g.
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there is no support in the Specification as originally filed for the relatively broader limitation “the acceptor comprises a boron atom”. That is, the limitation “the acceptor comprises a boron atom” encompasses not only the specific boron acceptor compounds disclosed in the instant Specification, but all such compounds, including those not disclosed in the instant Specification.
Claim 13 recites the limitation “the sensitizer contains a metal-carbene bond”. However, while there is support in the Specification as originally filed to recite specific organometallic complexes containing a metal carbene bond such as those disclosed on Pages 9-10 of the as-filed Specification, e.g.
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there is no support in the Specification as originally filed for the relatively broader limitation “the sensitizer contains a metal-carbene bond”. That is, the limitation “the sensitizer contains a metal-carbene bond” encompasses not only the specific organometallic complexes disclosed in the instant Specification as comprising a metal-carbene bond, but all such complexes, including those not disclosed in the instant Specification.
Claim 20 recites the limitation “the sensitizer contains a metal-carbene bond”. However, while there is support in the Specification as originally filed to recite specific organometallic complexes containing a metal carbene bond such as those disclosed on Pages 9-10 of the as-filed specification, e.g.
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there is no support in the Specification as originally filed for the relatively broader limitation “the sensitizer contains a metal-carbene bond”. That is, the limitation “the sensitizer contains a metal-carbene bond” encompasses not only the specific organometallic complexes disclosed in the instant Specification as comprising a metal-carbene bond, but all such complexes, including those not disclosed in the instant Specification.
Furthermore, claim 20 recites the limitation “the acceptor comprises a boron atom”. However, while there is support in the Specification as originally filed to recite specific boron atom comprising compounds such as those disclosed on Pages 10-11 of the as-filed Specification, e.g.
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there is no support in the Specification as originally filed for the relatively broader limitation “the acceptor comprises a boron atom”. That is, the limitation “the acceptor comprises a boron atom” encompasses not only the specific boron acceptor compounds disclosed in the instant Specification, but all such compounds, including those not disclosed in the instant Specification.
Claim 25 recites the limitation “the sensitizer is a Pt-complex comprising a Pt-carbene bond”. However, while there is support in the Specification as originally filed to recite specific Pt complexes comprising a Pt-carbene bond such as those disclosed on Pages 9-10 of the as-filed Specification, e.g.
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there is no support in the Specification as originally filed for the relatively broader limitation “the sensitizer is a Pt-complex comprising a Pt-carbene bond”. That is, the limitation “the sensitizer is a Pt-complex comprising a Pt-carbene bond” encompasses not only the specific organometallic complexes disclosed in the instant Specification as comprising a Pt-carbene bond, but all such complexes, including those not disclosed in the instant Specification.
Claims 1-10, 19, and 21-25 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 1-10, 19, and 21-25 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for specific boron comprising acceptor compounds possessing a first moiety with a lowest singlet excitation state ES1A and a lowest triplet excitation state ET1A and a second moiety with a lowest single excitation state ES1B and a lowest triplet excitation state ET1B , where ES1A < ES1B and ET1A > E T1B and specific metal-carbene bond containing sensitizers having a lowest excitation state ET1, where ET1 > ES1A , does not reasonably provide enablement for any combination of boron comprising acceptor and metal-carbene bond containing sensitizer compounds. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with this claim.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to : (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Applying these factors to claim 1, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)) for any acceptor and sensitizer compounds other than the acceptor and sensitizer compounds disclosed in Paragraphs [0070]-[0071] and [0062]-[0063], respectively, of the instant Specification. Thus, the only portions of the Specification that describe the acceptor and sensitizer compounds recited in claim 1 are Paragraphs [0070]-[0071] and [0062]-[0063], respectively and these sections of the instant Specification disclosed only compounds such as:
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and not any other acceptor and sensitizer compounds.
Furthermore, in view of the breadth of claim 1 (cf. factor (a)) which encompasses innumerable boron atom containing acceptor and metal-carbene containing sensitizer compounds, all of which are mutually structurally different, it is urged that the quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment would be great. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed.
Claims 13-14 and 17 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 13-15 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for specific metal-carbene bond comprising sensitizer compounds with a lowest excited energy state ET1 and an acceptor compound having a lowest singlet excited state ES1F such that ES1F < E T1, does not reasonably provide enablement for any combination of acceptor and sensitizer compounds. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with this claim.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to : (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Applying these factors to claim 13, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)) for any acceptor and sensitizer compounds other than the acceptor and sensitizer compounds disclosed in Paragraphs [0076]-[0077], [0079]-[0080], [0082]-[0083], [0085]-[0086] and [0087]-[0088], respectively, of the instant Specification. Thus, the only portions of the specification that describe the acceptor and sensitizer compounds recited in claims 13-15 are Paragraphs [0076]-[0077], [0079]-[0080], [0082]-[0083], [0085]-[0086] and [0087]-[0088], respectively and these sections of the instant Specification disclosed only compounds such as:
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and not any other acceptor and sensitizer compounds.
Furthermore, in view of the breadth of claim 13 (cf. factor (a)) which encompasses innumerable acceptor and metal-carbene containing sensitizer compounds, all of which are mutually structurally different, it is urged that the quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment would be great. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed.
Claim 20 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 20 is rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for specific metal-carbene containing sensitizer compounds with a lowest excited energy state ET1 and specific boron atom comprising acceptor compounds having a lowest singlet excited state ES1F such that ES1F < E T1, where the acceptor compound has a first group and a second and where at least 80 % of the singlet excited state population of the lowest singlet are localized on the first group and at least 80 % of the triple excited state population are localized on the second group, does not reasonably provide enablement for any combination of boron atom comprising acceptor and metal-carbene containing sensitizer compound. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with this claim.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to : (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Applying these factors to claim 20, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)) for any acceptor and sensitizer compounds other than the sensitizer compounds disclosed in Paragraphs [0087]-[0088] and the acceptor compounds disclosed in Table 1 Pages 84-87, respectively, of the instant Specification. Thus, the only portions of the specification that describe the acceptor and sensitizer compounds recited in claim 20 are Paragraphs [0087]-[0088] and Table 1, respectively and these sections of the instant Specification disclosed only compounds such as:
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and not any other acceptor and sensitizer compounds.
Furthermore, in view of the breadth of claim 20 (cf. factor (a)) which encompasses innumerable boron atom containing acceptor and metal-carbene containing sensitizer compounds, all of which are mutually structurally different, it is urged that the quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment would be great. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed.
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 6 and 24 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 pre-AIA the applicant regards as the invention.
Claim 6 recites Formula IV as:
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which renders the scope of the claim indefinite for the following reasons. Claim 6 depends from claim 1, and claim 1 requires that the sensitizer contains a boron compound. However, Formula IV, unlike Formulas I-III of the claim, does not contain a boron atom. Accordingly, it is unclear how one can simultaneously satisfy the requirement that the acceptor comprise a boron as required in claim 1 and utilize the compound of Formula IV in Claim 6 which does not possess a boron atom recited in claim 6.
Claim 24 recites the following formula:
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However, the claim does not define or recite what chemical groups or species are encompassed by the variables A, B,C, Y, Z1, RA, RB, or RC, thereby rendering the scope of the claim indefinite.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-10, 13-14, 17, and 19-25 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al (US 2019/0058124) in view of Li et al (US 2015/0105556).
Regarding claim 1, Hatakeyama et al discloses an organic light emitting device comprising a positive electrode ([0127] - Figure 1 – 102), i.e. an anode, a negative electrode ([0127] – Figure 1 – 108), i.e. a cathode, and a light emitting layer ([0127] – Figure 1 – 105), i.e. an emissive region, disposed between the positive and negative electrodes. The light emitting layer comprises a delayed fluorescence compound with the formula ([0144] and [0034] – Formula (2)):
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where R1 to R11 are hydrogen ([0035]); Y1 is a boron atom ([0036]); and X1 and X2 are N-R, where R is an aryl such a naphthyl ([0037] and [0089]). Thus, the reference discloses a boron comprising compound with the formula:
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This compound possesses a first moiety, i.e. the polycyclic boron core, and a second moiety, i.e. a naphthyl group. The reference does not explicitly disclose that the first moiety, i.e. the naphthyl group, has a lowest singlet excitation state ES1A and a lowest triplet excitation energy state ET1A and the second moiety has a lowest singlet excitation energy state ES1B and a lowest triplet excitation energy state ET1B, where ES1A < E S1B and E T1A > E T1B; however, given that the reference discloses a compound encompassed by the present claims, it is the Office’s position that the first and second moieties possess the excitation states recited in the present claims.
Given that the reference discloses that the compound is a thermally activated delayed fluorescence compound, it is clear that the compound disclosed by the reference is functioning as a fluorescent emitter at room temperature. Furthermore, while the reference does not explicitly disclose the compound as an acceptor capable of receiving energy from a sensitizer, given that the reference discloses the identical compound encompassed by the present claims, it is the Office’s position that the compound disclosed by the reference necessarily functions as a sensitizer.
The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed acceptor compound, and therefore, the claimed effects and physical properties of the acceptor compound would naturally arise. "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. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
While the reference discloses that the light emitting layer can comprise additional dopants ([0145]), the reference does not disclose that the light emitting layer comprises a sensitizer as recited in the present claims.
Li et al discloses an organic light emitting device where the light emitting layer comprises a platinum complex with a metal-carbene bond (Abstract, [0075], [0078] and Page 58):
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where R is hydrogen, aryl cycloalkyl, alkyl, etc. ([0102]). The reference discloses that the complexes have improved stability and efficiency over traditional emission complexes ([0078]).
While the reference does not explicitly disclose this compound as a sensitizer and is capable of harvesting triplet excitons, given that the reference discloses a compound encompassed by the present claims, it is the Office’s position that the compound disclosed by the reference necessarily functions as a sensitizer and is capable of harvesting triplet excitons as recited in the present claims. Furthermore, while the reference does not disclose that the compound has a lowest excitation energy state ET1 given that the reference discloses a compound encompassed by the present claims, it is the Office’s position that the compound disclosed by the reference necessarily possesses a lowest excitation state as recited in the present claims.
The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed sensitizer compound, and therefore, the claimed effects and physical properties of the sensitizer would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Given that both Hatakeyama et al and Li et al are drawn to organic light emitting devices where the light emitting layers comprise host and dopant compounds, and given that Hatakeyama et al does not explicitly prohibit other ingredients, in light of the particular advantages provided by the use and control of the metal complexes as taught by Li et al, it would therefore have been obvious to one of ordinary skill in the art to include such compounds in the light emitting layer of the device disclosed by Hatakeyama et al in order to obtain an organic light emitting device with improved stability and efficiency with a reasonable expectation of success.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components, and therefore, the claimed effects and physical properties, i.e. ET1 > ES1A, would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 2, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. Additionally, Li et al discloses that the compound is a phosphorescent emitter ([0077]). Given that the reference discloses the compound as being utilized in an organic light emitting device, it is clear that that the compound is capable of functioning as a phosphorescent emitter at room temperature as recited in the present claims.
Regarding claim 3, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. Additionally, Hatakeyama et al discloses that the light emitting layer is formed of a single layer and can comprise a plurality of kinds of compounds ([00145]). Accordingly, the combined disclosures of Hatakeyama et al and Li et al discloses that the acceptor and sensitizer are present as a mixture in the light emitting layer.
Regarding claim 4, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. As discussed above, Li et al discloses the following compound:
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This compound possesses the ligands:
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and
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where Y1 to Y11 are C; Ra1 is hydrogen, alkyl, etc.; and Ra, Rb, and Rc are hydrogen.
Regarding claim 5, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. As discussed above, Li et al discloses the following compound:
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This compounds corresponds to the recited formula:
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where RX is hydrogen, alkyl or aryl; RC, RD, RE, and RF are H; and RB represents a two (2) alkenyls that join to form a benzene ring.
Regarding claim 6, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. As discussed above, Hatakeyama et al discloses the following compound:
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This compound corresponds to Formula I of the claims:
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where moieties A, B, and C and are monocyclic 6-membered aromatic rings; Z is B; Y is NR, where R is a naphthyl group; and RA, RB, and RC are H.
Regarding claim 7, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. From the discussion above, Hatakeyama et al discloses a compound corresponding to the recited formula:
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Regarding claim 8, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. From the discussion above, Hatakeyama et al discloses that the second moiety corresponds to:
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Regarding claim 9, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. From the discussion above, Hatakeyama et al discloses that the second moiety corresponds to:
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,
where R1 to R4 are hydrogen.
Regarding claim 10, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. From the discussion above, Hatakeyama et al discloses a compound where the recited first and second moieties are linked by a direct bond.
Regarding claim 19, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. Additionally, Hatakeyama discloses a flat panel display comprising the organic light emitting device ([0001] and [0323]).
Regarding claim 21, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. From the discussion above, Hatakeyama et al discloses a compound with the formula:
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,
where RA, RB, and RC are hydrogen; and Rx is the aryl:
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R1 to R4 are hydrogen.
Regarding claim 22, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. From the discussion above, Hatakeyama et al discloses the compound:
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.
Regarding claim 23, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. From the discussion above, Hatakeyama et al discloses that the compound comprises naphthalene.
Regarding claim 24, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. From the discussion above, Hatakeyama et al discloses a compound where the first moiety corresponds to Formula I:
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,
and the second moiety corresponds to:
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Regarding claim 25, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. From the discussion above, Li et la discloses a Pt-organometallic complex.
Regarding claim 13, Hatakeyama et al discloses an organic light emitting device comprising a positive electrode ([0127] - Figure 1 – 102), i.e. an anode, a negative electrode ([0127] – Figure 1 – 108), i.e. a cathode, and a light emitting layer ([0127] – Figure 1 – 105), i.e. an emissive region, disposed between the positive and negative electrodes. The light emitting layer comprises a delayed fluorescence compound with the formula ([0144] and [0034] – Formula (2))
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where R1 to R11 are hydrogen ([0035]); Y1 is a boron atom ([0036]); and X1 and X2 are N-R, where R is an aryl such a naphthyl ([0037] and [0089]). Thus, the reference discloses a compound with the formula:
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.
This compound corresponds to Formula I of the claims:
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where moieties A, B, and C and are monocyclic 6-membered aromatic rings; Z is B; Y is NR, where R is a naphthyl group; and RA, RB, and RC are H. The compound disclosed by the reference comprises the moiety:
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.
The reference does not explicitly disclose that the compound is an acceptor compound. However, given that the reference discloses a compound encompassed by the present claims, it is the Office’s position that the compound is necessarily an acceptor capable of harvesting excitons as recited in the present claims.
The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed acceptor compound, and therefore, the claimed effects and physical properties of the acceptor would naturally arise and be achieved by the compound. "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. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
Given that the reference discloses that the compound is a thermally activated delayed fluorescence compound, it is clear that the compound disclosed by the reference is functioning as a fluorescent emitter at room temperature.
While the reference discloses that the light emitting layer can comprise additional dopants ([0145]), the reference does not disclose that the light emitting layer comprises a sensitizer as recited in the present claims.
Li et al discloses an organic light emitting device where the light emitting layer comprises a platinum complex with a metal-carbene bond (Abstract, [0075], [0078] and Page 58):
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where R is hydrogen, aryl cycloalkyl, alkyl, etc. ([0102]). The reference discloses that the complexes have improve stability and efficiency over traditional emission complexes ([0078]).
While the reference does not explicitly disclose this compound as a sensitizer and is capable of harvesting triplet excitons, given that the reference discloses a compound encompassed by the present claims, it is the Office’s position that the compound disclosed by the reference necessarily functions as a sensitizer and is capable of harvesting triplet excitons as recited in the present claims.
The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed sensitizer compound, and therefore, the claimed effects and physical properties of the sensitizer would naturally arise and be achieved by the compound. "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. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
Given that both Hatakeyama et al and Li et al are drawn to organic light emitting devices where the light emitting layers comprise host and dopant compounds, and given that Hatakeyama et al does not explicitly prohibit other ingredients, in light of the particular advantages provided by the use and control of the metal complexes as taught by Li et al, it would therefore have been obvious to one of ordinary skill in the art to include such compounds in the light emitting layer of the device disclosed by Hatakeyama et al in order to obtain an organic light emitting device with improved stability and efficiency with a reasonable expectation of success.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components, and therefore, the claimed effects and physical properties, i.e. the lowest excited energy state (ES1F ) of the acceptor is less than the lowest excited energy state of the sensitizer (ET1) or ES1F < ET1, would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 14, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. Additionally, Li et al discloses that the compound is a phosphorescent emitter ([0077]). Given that the reference discloses the compound as being utilized in an organic light emitting device, it is clear that that the compound is capable of functioning as a phosphorescent emitter at room temperature as recited in the present claims.
Regarding claim 17, the combined disclosures of Hatakeyama et al and Li et al teach all the claim limitations as set forth above. Additionally, Hatakeyama et al discloses that the light emitting layer comprises a carbazole host ([0148]).
Regarding claim 20, Hatakeyama et al discloses an organic light emitting device comprising a positive electrode ([0127] - Figure 1 – 102), i.e. an anode, a negative electrode ([0127] – Figure 1 – 108), i.e. a cathode, and a light emitting layer ([0127] – Figure 1 – 105), i.e. an emissive region, disposed between the positive and negative electrodes. The light emitting layer comprises a delayed fluorescence compound with the formula ([0144] and [0034] – Formula (2))
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,
where R1 to R11 are hydrogen ([0035]); Y1 is a boron atom ([0036]); and X1 and X2 are N-R, where R is an aryl such a naphthyl ([0037] and [0089]). Thus, the reference discloses a compound with the formula:
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.
This compound is a boron atom comprising compound that possesses a first group, i.e. the boron polycyclic core, and a second group, i.e. naphthyl substituents, and therefore the first and second groups do not overlap, i.e. are different.
The reference does not explicitly disclose that 80 % of the single excited state population of the lowest singlet excitation state are localized on first group, i.e. the boron polycyclic core and at least 80 % of the triplet excited state population of the lowest triplet states are localized in the second group, i.e. the naphthyl substituents. However, given that the reference discloses a compound encompassed by the present claims, it is clear that that 80 % of the single excited state population of the lowest singlet excitation state are localized on first group, i.e. the boron polycyclic core and at least 80 % of the triplet excited state population of the lowest triplet states are localized in the second group, i.e. the naphthyl substituents as recited in the present claims.
Furthermore, the reference does not explicitly disclose that the compound is an acceptor compound capable of receiving energy from a sensitizer as recited in the present claims. However, given that the reference discloses a compound encompassed by the present claims, it is the Office’s position that the compound necessarily is an acceptor that is capable of receiving energy from a sensitizer and possesses a lowest excitation state as recited in the present claims.
The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed acceptor compound, and therefore, the claimed effects and physical properties of the acceptor compound would naturally arise. "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. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
Given that the reference discloses that the compound is a thermally activated delayed fluorescence compound, it is clear that the compound disclosed by the reference is functioning as a fluorescent emitter at room temperature.
While the reference discloses that the light emitting layer can comprise additional dopants ([0145]), the reference does not disclose that the light emitting layer comprises a sensitizer as recited in the present claims.
Li et al discloses an organic light emitting device where the light emitting layer comprises a platinum complex with a metal-carbene bond (Abstract, [0075], [0078] and Page 58):
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,
where R is hydrogen, aryl cycloalkyl, alkyl, etc. ([0102]). The reference discloses that the complexes have improve stability and efficiency over traditional emission complexes ([0078]).
While the reference does not explicitly disclose this compound as a sensitizer and is capable of harvesting triplet excitons, given that the reference discloses a compound encompassed by the present claims, it is the Office’s position that the compound disclosed by the reference necessarily functions as a sensitizer and is capable of harvesting triplet excitons as recited in the present claims.
The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed sensitizer compound, and therefore, the claimed effects and physical properties of the sensitizer would naturally arise. "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. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
Given that both Hatakeyama et al and Li et al are drawn to organic light emitting devices where the light emitting layers comprise host and dopant compounds, and given that Hatakeyama et al does not explicitly prohibit other ingredients, in light of the particular advantages provided by the use and control of the metal complexes as taught by Li et al, it would therefore have been obvious to one of ordinary skill in the art to include such compounds in the light emitting layer of the device disclosed by Hatakeyama et al in order to obtain an organic light emitting device with improved stability and efficiency with a reasonable expectation of success.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components, and therefore, the claimed effects and physical properties, i.e. the lowest excited energy state (ES1F ) of the acceptor is less than the lowest excited energy state of the sensitizer (ET1) or ES1F < ET1, would naturally arise and be achieved by a composition with all the claimed ingredients. "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. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Response to Arguments
Applicant's arguments filed 3/27/2026 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 112 (a) rejection of claims 1-12 and 16-19, Applicants argue that no undue experimentation is required to make and use the OLEDs described in the amended claims and, as a result, these claims are enabled by the Specification as filed. However, for the reasons discussed above, the 35 U.S.C. 112 (a) as set forth in the previous Office Action is maintained.
Regarding the 35 U.S.C. 112 (a) rejection of claims 13-15, Applicants argue that no undue experimentation is required to make and use the OLEDs described in the amended claims and, as a result, these claims are enabled by the Specification as filed. However, for the reasons discussed above, the 35 U.S.C. 112 (a) as set forth in the previous Office Action is maintained.
Regarding the 35 U.S.C. 112 (a) rejection of claim 20, Applicants argue that no undue experimentation is required to make and use the OLEDs described in the amended claims and, as a result, these claims are enabled by the Specification as filed. However, for the reasons discussed above, the 35 U.S.C. 112 (a) as set forth in the previous Office Action is maintained.
Regarding the 35 U.S.C. 103 rejection of the claims, Applicants argue that there is no motivation to modify Hatakeyama with Li given that Paragraph [0145] of Hatakeyama does not appear to reference a dopant with a structure other than Formula (1) or (2). However, Paragraph [0145] discloses the following:
The light emitting layer may be formed of a single layer or a plurality of layers, and each layer is formed of a material for a light emitting layer (a host material and a dopant material). Each of the host material and the dopant material may be formed of a single kind, or a combination of a plurality of kinds (emphasis added). The dopant material may be included in the host material wholly or partially. Regarding a doping method, doping can be performed by a co-deposition method with a host material, or alternatively, a dopant material may be mixed in advance with a host material, and then vapor deposition may be carried out simultaneously.
To that end it is noted that this section of the reference does not disclose that the dopant must necessarily fall within the scope of Formula (1) or (2). That is, any disclosure of the dopant necessarily being encompassed by either formula is conspicuous by its absence in this section of the reference. Rather, the disclosure that the dopant material may be formed of a single kind or a combination of a plurality of kinds, indicates that the reference contemplates various kinds of dopant (and host compounds) to be present in the light emitting layer and does not limit the dopant compounds to those encompassed by the disclosed formulas.
Applicants argue that Hatakeyama does not suggest randomly selecting dopants that do not read on Formula (1) or Formula (2) and the reference does not disclose or suggest changing the mechanism of the emissive layer to use a phosphorescent emitter or a sensitized device. However, firstly it is noted that as discussed above, this section of the reference does not disclose that the dopant must necessarily fall within the scope of Formula (1) or (2). That is, any disclosure of the dopant necessarily being encompassed by either formula is conspicuous by its absence in this section of the reference. Rather, the disclosure that the dopant material may be formed of a single kind or a combination of a plurality of kinds, indicates that the reference contemplates various kinds of dopant (and host compounds) to be present in the light emitting layer and does not limit the dopant compounds to those encompassed by the disclosed formulas. Secondly, it is noted that there nothing within the scope of the reference that explicitly prohibits the addition of phosphorescent compounds, i.e. dopants, from being present in the light emitting layer. Thirdly, it should be noted that the present claims only require that the acceptor “[i]s capable (emphasis added) of receiving energy from the sensitizer and function as a fluorescent emitter at room temperature” and that the sensitizer “[i]s capable (emphasis added) of harvesting triplet excitons”. Thus, the present claims only require that the sensitizer and acceptor compound have the capacity or ability of receiving energy from the sensitizer and function as a fluorescent emitter at room temperature and harvesting triplet excitons, respectively. Given that the references disclose the sensitizer and acceptor compounds recited in the present claims, it is the Office’s position that the compound disclosed by the references are capable of the recited functionalities, and there is no requirement that these compounds necessarily change the functionality of the light emitting layer. To that end it is noted that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding unexpected results of the claimed organic light emitting device, Applicants point to the 37 C.F.R. 1.132 Declaration filed on 12/16/2024 which points to Paragraphs [0172]-[0173] of the as-filed Specification which compares an inventive light emitting device comprising phosphor 1 as the sensitizer:
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and Compound 10 as the acceptor:
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to a comparative example with the same sensitizer (phosphor 1) and Compound 1 as an acceptor:
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However, while the comparison of the inventive and comparative examples is a proper side-by-side comparison, the inventive example is not commensurate in scope with the scope of the claims for the reasons set forth below.
The inventive example only exemplifies a single sensitizer compound and a single acceptor compound encompassed by the present claims, while the claims encompass innumerable sensitizer and acceptor compounds that possess the recite properties. Accordingly, it is unclear if the obtained results are indicative of all sensitizer and acceptor compounds encompassed by the present claims or only for the particular combination exemplified in the inventive example.
Furthermore, the comparative example is not commensurate in scope with the scope of the cited prior art given that, as discussed above, Hatakeyama discloses the following acceptor compound:
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while Li discloses the following sensitizer compound:
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where R is hydrogen, aryl cycloalkyl, alkyl, etc., and neither of these compounds are present in the comparative example.
As further evidence of unexpected results, Applicants point to the 37 C.F.R. 1.132 Declaration filed on 3/27/2026 which compares Inventive Example 1 (IE 1) with sensitizing Phosphor 1 and acceptor Compound 10, i.e.
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and
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to the following comparative examples:
(a) Comparative Examples 1 (CE1) comprising sensitizing Phosphor 1 and Comparative 1:
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and
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(b) Comparative Example 2 (CE2) comprising only Compound 10:
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; and
(c) Comparative Example 3 comprising only compound Comparative 1:
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However, while the comparison is a proper side-by-side comparison, the inventive example only exemplifies a single sensitizer compound and a single acceptor compound encompassed by the present claims, while the claims encompass innumerable sensitizer and acceptor compounds that possess the recite properties. Accordingly, it is unclear if the obtained results are indicative of all sensitizer and acceptor compounds encompassed by the present claims or only for the particular combination exemplified in the inventive example.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER C. KOLLIAS whose telephone number is (571)-270-3869. The examiner can normally be reached on Monday-Friday, 8:00 AM – 5:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached on 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER C KOLLIAS/Primary Examiner, Art Unit 1786
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