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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/2/2025 has been entered.
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 8, 14, 18, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Shih et al (US 2022/0106343).
Regarding claim 8, Shih et al discloses the following organic light emitting device (Figure 1):
PNG
media_image1.png
501
514
media_image1.png
Greyscale
,
where the anode (115) corresponds to the recited first electrode; the cathode (160) corresponds to the recited second electrode; and layer 135 corresponds to the recited light emitting layer ([0109]), disposed between the first electrode (115) and the second electrode (160).
The light emitting layer comprises an organometallic compound with the formula ([0067])::
Ir(LA)2(LC),
where ligand LA has the formula ([0054] – Formula II):
PNG
media_image2.png
214
274
media_image2.png
Greyscale
.
In Formula II:
K1 and K2 can be direct bonds ([0006]);
Z1 can be C ([0006]);
Z2 can be N ([0006]);
Ring D is a benzene ring ([0058]);
Ring C is an imidazole ring ([0058]):
Y can be O ([0054]);
X1 and X2 can be C;
W can be CRR’, where R and R’ are alkyls such as methyl ([0006], [0054], and [0033]); RC can be hydrogen ([0054]);
RA can be an alkyl such as methyl ([0054] and [0033]).
RD can be an alkyl as exemplified in the compounds ([0054] and Page 117);
PNG
media_image3.png
244
348
media_image3.png
Greyscale
and
PNG
media_image4.png
224
338
media_image4.png
Greyscale
.
Ligand LC is disclosed as ([0076]):
PNG
media_image5.png
136
220
media_image5.png
Greyscale
.
From the discussion above, the reference discloses Compound 483 of the claims:
PNG
media_image6.png
172
312
media_image6.png
Greyscale
.
While the reference fails to exemplify the presently claimed compound nor can the claimed compound be "clearly envisaged" from the reference as required to meet the standard of anticipation, nevertheless, in light of the overlap between the claimed compound and the compound disclosed by the reference, absent a showing of criticality for the presently claimed compound, it is urged that it would have been within the skill level of one of ordinary skill in the art, to use the compound which is both disclosed by the reference and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 14, Shih et al teaches all the claim limitations as set forth above. Additionally, the reference discloses that the light emitting layer comprises a host and a dopant, where the dopant included the disclosed organometallic compound ([0090] and [0124]).
Regarding claim 18, Shih et al teaches all the claim limitations as set forth above. As discussed above, the reference discloses the following organic light emitting device:
PNG
media_image1.png
501
514
media_image1.png
Greyscale
.
The device comprises a substrate (layer 110) ([0109]). Accordingly, the reference discloses an organic light emitting device comprising a substrate as recited in the present claims.
Regarding claim 27, Shih et al teaches all the claim limitations as set forth above. Additionally, it is noted that in the formula:
PNG
media_image2.png
214
274
media_image2.png
Greyscale
,
RD can be a methyl group ([0006], [0043]-[0044], and [0033]) and Y can be O ([0006]). Accordingly, the reference disclose compound 479 of the claims:
PNG
media_image7.png
134
246
media_image7.png
Greyscale
.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Shih et al (US 2022/0106343) as applied to claims 8, 14, 18, and 27 above, and in view of Kim et al (US 2015/0280159).
The discussion with respect to Shih et al as set forth in Paragraph 6 above is incorporated here by reference.
Regarding claims 15-16, Shih et al teaches all the claim limitations as set forth above. While Shih et al discloses an organic light emitting device, the reference does not disclose the organic light emitting device as recited in the present claims.
Kim et al discloses the following organic light emitting device (Figure 1):
PNG
media_image8.png
758
921
media_image8.png
Greyscale
.
This device comprises a first emitting part (100) disposed between the first (10) and second (20) electrodes; and a second emitting part (200) disposed between the first emitting part (100) and the second electrode (20). The device further comprises a first charge generation layer (410) disposed between the first emitting part (100) and the second emitting part (200). The first emitting part (100) comprises a first emitting layer (150); and the second emitting part comprises a second emitting layer (250). The second emitting layer (250) is formed where at least two emitting layer are deposited in sequence ([0041]). Accordingly, the reference discloses a lower light emitting layer disposed between the first charge generation layer (410) and the second electrode (20) and an upper light emitting layer disposed between the lower light emitting layer and the second electrode (20).
The reference discloses that when the first and second light emitting layers are formed of at least two emitting layers for emitting light with different wavelengths it is possible to realize high color reproduction range and high color purity ([0054]-[0055]). Furthermore, the first charge generation layer (410) adjusts the balance of charge between the first (100) and second light emitting parts (200) ([0048]) and the device as a whole provides for improved color reproduction range and emitting efficiency ([0008]).
Given that both Shih et al and Kim et al are drawn to organic light emitting devices, in light of the particular light emitting device disclosed by Kim et al, it would therefore have been obvious to one of ordinary skill in the art to include the compound disclosed by Shih et al in any of the light emitting layers of the organic light emitting device disclosed by Kim et al with a reasonable expectation of success.
Regarding claims 15 and 17, Shih et al teaches all the claim limitations as set forth above. While Shih et al discloses an organic light emitting device, the reference does not disclose the organic light emitting device as recited in the present claims.
Kim et al discloses the following organic light emitting device (Figure 1):
PNG
media_image9.png
758
921
media_image9.png
Greyscale
.
This device comprises a first emitting part (100) disposed between the first (10) and second (20) electrodes; a second emitting part (200) disposed between the first emitting part (100) and the second electrode (20); and a third emitting part (300) disposed between the second emitting aper (200) and the second electrode (20). The device further comprises a first charge generation layer (410) disposed between the first emitting part (100) and the second emitting part (200); and a second charge generation layer (420) disposed between the second emitting part (200) and third emitting part (300). The first emitting part (100) comprises a first emitting layer (150); the second emitting part comprises a second emitting layer (250); and the third emitting part comprises a third emitting layer (350).
The reference discloses that when the first, second, and third light emitting layers are formed of at least two emitting layers for emitting light with different wavelengths it is possible to realize high color reproduction range and high color purity ([0054]-[0055]). Furthermore, the first charge generation layer (410) adjusts the balance of charge between the first (100) and second light emitting parts (200) ([0048]); the second charge generation layer (420) adjusts the charge between the second (200) and third light emitting parts (300) ([0049]); and the device is a whole provides for improved color reproduction range and emitting efficiency ([0008]).
Given that both Shih et al and Kim et al are drawn to organic light emitting devices, in light of the particular light emitting device disclosed by Kim et al, it would therefore have been obvious to one of ordinary skill in the art to include the compound disclosed by Shih et al in any of the light emitting layers of the organic light emitting device disclosed by Kim et al with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 12/2/2025 have been fully considered but they are not persuasive.
Applicants argue that starting from the compounds on Page 117 in Shih as pointed to in the previous Office Action, i.e.
PNG
media_image3.png
244
348
media_image3.png
Greyscale
and
PNG
media_image4.png
224
338
media_image4.png
Greyscale
.
one of ordinary skill in the art would not have had a reason to modify the benzene moiety of the mono-cyclic ring fused to the 7-membered ring to the quinoline moiety, or modify the isoquinoline moiety of the poly-cyclic ring fused to the 7-memebered ring. However, it is noted that as set forth in the previous Office Action and maintained in the rejections above, the compounds disclosed on Page 117 of the reference were not modified, but rather these compounds were pointed to specifically for the specific RD substituent, i.e. 2,2-dimethylpropyl exemplified in those compounds.
Applicants argue that Shih does not disclose any specific compounds corresponding to the organometallic compound in the claimed organic light emitting diode. However, while the reference may not disclose specific compounds corresponding to the claimed organometallic compound, it is noted that, as discussed above, the general disclosure of the reference teaches compounds encompassed by the present claims. To that end it is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicants argue that the teachings in Shih would not have provided one of ordinary skill in the art a reason to consider the organic light emitting diode or the device including the organic metal compound as defined in claim 8. However, it is the Office’s position, absent evidence to the contrary, that it would have been obvious to one ordinary skill in the art to select any of the substituents/formulas disclosed by the reference and arrive at the claimed organometallic complex with a reasonable expectation of success.
Applicants argue that the fact that a claimed species or subgenus is encompassed by a prior art genus is not sufficient by itself to establish a prima facie case of obviousness. In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) ("The fact that a claimed compound may be encompassed by a disclosed generic formula does not by itself render that compound obvious."). However, it is the Office’s position that the reference does not disclose a genus, but rather the explicit disclosure of the reference teaches compounds encompassed by the present claims.
Applicants argue that the deficiencies in Shih means that one of ordinary skill in the art would not have been sufficiently guided to select substituents from the broad teachings of Shih to meet the claimed organic metal compound even though Shih allegedly discloses a generic Formula 2 covering many possible combinations of substituents. However, as discussed above, it is the Office’s position, absent evidence to the contrary, that it would have been obvious to one ordinary skill in the art to select any of the substituents/formulas disclosed by the reference and arrive at the claimed organometallic complex with a reasonable expectation of success.
As evidence of unexpected results of the claimed compounds, Applicants point to Table 1 (Paragraph [212] of the as-filed Specification) which compares Comparative Compounds 52, 137, and 827 to Inventive Compounds 479, 700, 800, and 839. However, Applicants’ arguments and data presented in the Specification are not found to be persuasive for the reasons discussed in the previous Office Action and reiterated below.
Comparative Compounds 52, 137, and 827 are as follows:
PNG
media_image10.png
200
392
media_image10.png
Greyscale
PNG
media_image11.png
268
406
media_image11.png
Greyscale
PNG
media_image12.png
292
456
media_image12.png
Greyscale
,
while Inventive Compounds 479, 700, 800, and 839 are as follows:
PNG
media_image13.png
266
416
media_image13.png
Greyscale
PNG
media_image14.png
346
458
media_image14.png
Greyscale
PNG
media_image15.png
260
422
media_image15.png
Greyscale
PNG
media_image16.png
300
456
media_image16.png
Greyscale
.
Firstly, it is noted that the comparison of the comparative to inventive compounds is not a proper side-by-side comparison given that all the comparative compounds differ from the inventive compounds in more than one aspect.
For example, the comparison of Comparative Compound 52 to Inventive Compounds 479, 700, 800, and 839, i.e.
PNG
media_image10.png
200
392
media_image10.png
Greyscale
PNG
media_image13.png
266
416
media_image13.png
Greyscale
PNG
media_image14.png
346
458
media_image14.png
Greyscale
PNG
media_image15.png
260
422
media_image15.png
Greyscale
PNG
media_image16.png
300
456
media_image16.png
Greyscale
,
reveals that Comparative Compound 52 possesses a thiophene ring, while the inventive compounds possess either a furan ring or a fluorene ring. The comparative compound possesses a pyridine ring, while the inventive compounds possess a quinoline ring. The comparative compound possesses a different substituted acac co-ligand than is present in inventive Compounds 479, 700 and 829. The comparative compound does not possess any alkyl substituents found present on the inventive compounds. Finally, the comparative compound possesses a 1,1-dimethylcycloheptane ring, while Inventive Compound 800 possesses an oxepane ring.
The comparison of Comparative Compound 137 to Inventive Compounds 479, 700, 800, and 839, i.e.
PNG
media_image11.png
268
406
media_image11.png
Greyscale
PNG
media_image13.png
266
416
media_image13.png
Greyscale
PNG
media_image14.png
346
458
media_image14.png
Greyscale
PNG
media_image15.png
260
422
media_image15.png
Greyscale
PNG
media_image16.png
300
456
media_image16.png
Greyscale
,
reveals that the comparative compound differs from the inventive compounds in more than one aspect. Comparative Compound 137 possesses a thiophene ring, while the inventive compounds possess either a furan ring or a fluorene ring. The comparative compound possesses a pyridine ring, while the inventive compounds possess a quinoline ring. The comparative compound possesses a different substituted acac co-ligand than found present in inventive compound 800. Finally, the comparative compound possesses a 1-phenylazepane ring, while the inventive compounds possess either a 1,1-dimethylcycloheptane ring or an oxepane ring.
The comparison of Comparative Compound 827 to Inventive Compounds 479, 700, 800, and 839, i.e.
PNG
media_image12.png
292
456
media_image12.png
Greyscale
PNG
media_image13.png
266
416
media_image13.png
Greyscale
PNG
media_image14.png
346
458
media_image14.png
Greyscale
PNG
media_image15.png
260
422
media_image15.png
Greyscale
PNG
media_image16.png
300
456
media_image16.png
Greyscale
,
reveals that the comparative compound differs from the inventive compounds in more than one aspect. Comparative Compound 827 possesses a thiophene ring, while the inventive compounds possess either a furan ring or a fluorene ring. The comparative compound possesses a pyridine ring, while the inventive compounds possess a quinoline ring. The comparative compound possesses a different substituted acac co-ligand than found in present in inventive compound 800, and further, the comparative compound does not possess any alkyl substituents found in Inventive Compounds 479, 700, 800, or 829. Finally, the comparative compound possesses an oxepane ring, while Inventive Compounds 799, 800 and 829 possess a 1,1-dimethylcycloheptane ring
Even if the comparative and inventive compounds were proper side-by-side comparisons, it is noted that the inventive examples only exemplify four (4) compounds encompassed by the present claims. Accordingly, it is unclear if the obtained results are indicative of all compounds encompassed by the present claims, or only for the particular compounds exemplified in the Specification.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER C KOLLIAS/Primary Examiner, Art Unit 1786
Prosecution Insights