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 .
Election/Restrictions
Claims 20, 24-26, 32 and 34-36 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/14/2025.
Examiner would like to point out that the Response to Election Requirement did not include claim 24 in the withdrawn claims, but it is directed to a withdrawn species.
Priority
The claimed subject matter does not appear to be supported by the documents in Provisional application 63/196,878. The claims will be given the effective filing date of 04/11/2022, the filing date of Provisional application 63/329,536.
Response to Arguments
Applicant’s arguments with respect to the previous rejections have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The rejections over Hatekayama et al (US 20190181350 A1), Cao et al (CN 108191916 A), Xia et al (US 20140231755 A1), Ji et al (US 20180287070 A1), and Xia ‘916 (US 20100270916 A1) in view of Xia ‘755 (US 20140231755 A1) or Li et al (US 6699599 B2) are withdrawn
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 17-19,21,23 and 27-31 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Tsai et al (US 20210054010 A1).
Tsai discloses a compound that may be used as phosphorescent sensitizer in an OLED where one or multiple layers in the OLED contains an acceptor in the form of one or more fluorescent and/or delayed fluorescence emitters [0126,0101] wherein the compound may be fully deuterated [0158], with specific embodiments including [pp101,105]:
PNG
media_image1.png
253
237
media_image1.png
Greyscale
PNG
media_image2.png
213
154
media_image2.png
Greyscale
. Tsai also discloses the same hosts [0099].
Claim Rejections - 35 USC § 102/103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 33 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tsai et al (US 20210054010 A1).
Tsai discloses that the compounds include:
PNG
media_image3.png
219
192
media_image3.png
Greyscale
[p101] which, when fully deuterated, anticipates claim 33.
Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). Once a product appearing to be substantially identical is found and a 35 USC 102/103 rejection is made, the burden shifts to the Applicant to show an unobvious difference. “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show
that the claimed product appears to be the same or similar to that of the prior art,
although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP § 2113.
This rejection is made under both 35 USC 102 anticipation and 35 USC 103 obviousness. Tsai teaches a precise iridium complex of claim 33 that is not deuterated and explicitly teaches that it can be fully deuterated. Examiner holds the opinion that the ordinarily skilled artisan to readily envisage the claimed compounds, therefore the claims are anticipated.
In the alternative, the claims are certainly obvious over the combination of elements disclosed. It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have prepared the claimed combination of deuterated iridium complex from the disclosure in Tsai of the same iridium complex structure and the explicit teaching to fully deuterated it because each of the claimed elements is disclosed and used in the same capacity, and the skilled artisan would only need to choose between the disclosed options without any modification to the teachings of Tsai.
Case law confirms that 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) 17-19,21,23 and 27-31 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over So et al (US 20140077172 A1).
So discloses a compound that may be used as phosphorescent sensitizer in an OLED where one or multiple layers in the OLED contains an acceptor in the form of one or more fluorescent and/or delayed fluorescence emitters [abstract,0027] wherein the compound may be fully deuterated [0089], with specific embodiments including [p6]:
PNG
media_image4.png
141
219
media_image4.png
Greyscale
PNG
media_image5.png
106
118
media_image5.png
Greyscale
. So discloses the same hosts [p24].
Claim Rejections - 35 USC § 103
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over So et al (US 20140077172 A1).
The compounds of So, while not anticipatory of the compounds of claim 33, include the same types of ligands in iridium complexes and the same substituents.
The claimed compounds would have been obvious to one having ordinary skill in the art before the effective filing date of Applicant’s invention because the skilled artisan would have expected the claimed and disclosed compounds to have similar and overlapping properties based on the structural similarities of the compounds. Case law confirms that 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).
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 at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/Primary Examiner, Art Unit 1766
Prosecution Insights