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's arguments filed 11/17/2025 have been fully considered but they are not persuasive. Applicant argues that the references do not disclose the new limitations of the claims. This argument is not convincing, see the amended rejections below.
Claim Rejections - 35 USC § 112
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.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites the limitation "LAi wherein i is an integer from 1 to 2, 6 to 17, 21, 23, 24, 26, 27, 29 to 33, and 35 to 37, " in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. This is presumed to be the "LAi" of claim 22 rather than claim 21.
Claim 15 is also directed to a compound wherein base claim 21 is directed to a consumer product, again it appears that claim 15 was intended to depend from claim 21
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 16 is 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. Several embodiments in claim 16 do not fit within the scope of the new limitation of claim 1, for instance at the bottom of p35 of the claims:
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and these compounds do not include two of RA, RB, R',R1, R2, or R3 are independently a partially or fully deuterated alkyl group, a partially or fully fluorinated alkyl group, a partially or fully fluorinated cycloalkyl group, cycloalkyl, or a partially or fully deuterated cycloalkyl group. 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
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) 1-2, 7-11, 13-15, 17-18 and 21 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Boudreault et al (US 20180097179 A1). 4
Boudreault discloses various Ligands LA having the formula:
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[0073, p6]
Wherein in following embodiments:
LA20 - R4 = R5 = RB7 which is a cyclopentanyl group [0078, p12], which reads on the claimed Formula 1 wherein R2 and R3 are both a cycloalkyl group,
LA23 - R4 = R5 = RA34 which is a partially fluorinated t-butyl group [0078, p13], which reads on the claimed Formula 1 wherein R2 and R3 are both a partially fluorinated alkyl group,
among other examples. The ligand is complexed to a metal and preferably iridium with other ligands that read on the other claimed ligands such as the alkyl substituted AcAc ligands, and the examples include a compound of the general claimed formula:
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[p82].
Boudreault explicitly discloses that any specifically listed substituent, such as, without limitation, methyl, phenyl, pyridyl, etc. may be undeuterated, partially deuterated, and fully deuterated versions thereof. Similarly, classes of substituents such as, without limitation, alkyl, aryl, cycloalkyl, heteroaryl, etc. also may be undeuterated, partially deuterated, and fully deuterated versions thereof [0168]. The compound is used as a dopant in the light emitting layer of an OLED, which also includes the same host compounds as the claims [0116, p20]. For additional optional substituents, see [0022, 0168, 0048].
Claim(s) 1-4, 7-11, 13-15, 17-18 and 21 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Su et al (US 20180097185 A1).
Su discloses OLEDs having a host and dopant in the emissive layer including the wherein the dopant is a metal complex of iridium [0081, p292] ligands such as:
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[p473] as well as the additional AcAc ligands of the present claims [claims 13 and 14] complexed with Iridium [claim 13] and the same host materials [claim 15].
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) 3-4 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Boudreault et al (US 20180097179 A1).
As discussed above, examples of the compound of include a compound of the general claimed formula:
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[p82].
Boudreault also explicitly discloses that any specifically listed substituent, such as, without limitation, methyl, phenyl, pyridyl, etc. may be undeuterated, partially deuterated, and fully deuterated versions thereof. Similarly, classes of substituents such as, without limitation, alkyl, aryl, cycloalkyl, heteroaryl, etc. also may be undeuterated, partially deuterated, and fully deuterated versions thereof [0168]. So this is an explicit disclosure wherein the methyl groups of Compound 3,393 can be partially or fully deuterated, which will read on the claims 3-4 wherein R2 and R3 are partially or fully deuterated alkyl groups.
Alternatively, Boudreault discloses the various Ligands LA having the formula:
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[0073, p6]
Wherein the R4 and R5 include specific embodiment with two alkyl or cycloalkyl groups, and as discussed above Boudreault discloses that these substituents may be partially or fully deuterated. Furthermore, many of the explicit embodiments LA1 to LA260 include one of R4 or R5 as a partially or fully deuterated alkyl or cycloalkyl group, such as RB2. Many of the other substituents for R4 and R5 are partially or fully deuterated alkyl and cycloalkyl groups [see RA and RB lists, p12-15].
This rejection is made under both 35 USC 102 anticipation and 35 USC 103 obviousness. Examiner holds the opinion that the finite number of disclosed substituents RA and RB for positions R4 and R5 would allow the ordinarily skilled artisan to readily envisage the claimed R2 and R3 groups as each a partially or fully deuterated alkyl or cycloalkyl group, 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
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boudreault et al (US 20180097179 A1).
Regarding claims 5 and 6, the above discussed embodiments of LA compounds that have 2 substituents that read on the required substituents in the R2 and R3 positions of the claimed Formula 1 are position isomers of the compounds of claims 5 and 6, which require the disclosed groups at different positions in claimed Formula 1.
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 12, the aforementioned exemplified complex
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[p82] is the same as claimed LA1, only that the methyl groups on the isoquinoline moiety are deuterated. Again, Boudreault discloses that any alkyl group may be deuterated.
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. The claimed structures would be obvious to one having ordinary skill in the art at the time of filing 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) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Su et al (US 20180097185 A1).
Su discloses OLEDs having a host and dopant in the emissive layer including the wherein the dopant is a metal complex of iridium [0081, p292] ligands such as:
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[p473]
the above discussed embodiments of compound has 2 substituents that read on the required substituents in the R2 and R3 positions of the claimed Formula 1, and is a position isomer of the compounds of claims 5 and 6, which require the disclosed groups at different positions in claimed Formula 1. As discussed above, the position isomers are obvious variants of the disclosed compounds.
Allowable Subject Matter
Claims 16 and 22-23 are 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 15, as well, if amended to be dependent from claim 22, would be objected to.
The following is a statement of reasons for the indication of allowable subject matter: the art is replete with iridium complexes as well as deuteration of these emitter compounds. However, given the specificity of each compound, it would require excessive hindsight to pick-and-choose the elements of each compound from the general disclosure of the closest prior art, Boudreault et al (US 20180097179 A1) and Su et al (US 20180097185 A1).
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.
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MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/ Primary Examiner, Art Unit 1766