DETAILED ACTION
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election without traverse of Au as the metal and monodentate ligands as the denticity of the ligand LA in the reply filed on 2 March 2026 is acknowledged.
Claims 5 and 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2 March 2026.
With regard to the instant claims 15-16 only, a search of the prior art did not show the elected species. As none of the claims were specifically drawn to the elected species in combination with the limitations of one of claims 15-16 in independent form, none of these claims have been indicated as allowable. However, claims written in independent form which require all the limitations of claims 15-16 as well as being limited to the elected species along with any dependent claims which require all the limitations of claims 15-16 as well as being limited to the elected species would be allowable.
Claims 15-16 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 as well as being limited to the elected species. This objection to the claims is only with respect to the elected species.
It is noted that the potential allowability of claims 15-16 has not been determined with respect to species beyond the elected species, i.e. potential examinable species that could found once the search is expanded beyond the elected species.
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 1-4, 6-10, and 17-20 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-4, 6-10, and 17-20: Claims 1-4, 6-10, and 17-20 require a first ligand LA comprising a 5-membered heterocycle joined to a metal M by a M-C or M-N bond; wherein the 5-membered heterocycle comprises at least one boron atom; wherein M is selected from the group consisting of Os, Ir, Pd, Pt, Cu, Ag, Rh, Re, Ru, and Au.
Several exceptions are included: LA does not comprise a structure of Formula I; the 5-membered heterocycle does not include a B-B bond; when M is Pd or Pt and the 5-membered heterocycle is fused to a benzene ring, the benzene ring is not part of a 6-membered chelate ring comprising M.
The above description is included in the instant specification, and several examples and subsets of chemical structures are described in detail. However, these detailed descriptions do not encompass the entire scope of the claims. For instance, paragraphs [0087]-[0094] of the instant specification provide detailed descriptions and examples of compounds of the current claims. However, these descriptions and examples do not encompass or provide detailed descriptions for all compounds comprising all 5-membered heterocycles containing a boron atom in a ligand LA that meets the current claim limitations. For example, it is not clear that the compounds of the rejections outlined below were in possession of Applicant at the time of the invention, because they are outside the scope of the more detailed description provided paragraphs [0087]-[0094] of the instant specification and do not have a similar construction to any of the described compound or compound structures of paragraphs [0087]-[0094] of the instant specification. Thus, the specification does not provide a representative number of species sufficient to show that Applicant was in possession of the entire claimed genus (see MPEP 2163-II-A-3-a-ii).
Claim Rejections - 35 USC § 102
(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kausamo et al. (“N-Heterocyclic Carbenes with Inorganic Backbones: Electronic Structures and Ligand Properties” Inorganic Chemistry (2008) vol. 47, pp. 1145-1154.) (hereafter “Kausamo”).
Regarding claims 1-3: Kausamo discloses the compound shown below {p. 1149, 1st col., 3rd paragraph: Description of a gold complex using a ligand of structure 3 of Kausamo}.
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Claim(s) 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shang et al. (“Facile reactions of gold(I) complexes with tri(tert butyl)azadiboriridine” Dalton Transactions (2018) vol. 47, pp. 5181-5188.) (hereafter “Shang”).
Regarding claims 1-3: Shang discloses the compound shown below {Scheme 6}.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DYLAN CLAY KERSHNER whose telephone number is (303)297-4257. The examiner can normally be reached M-F, 9am-5pm (Mountain).
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/DYLAN C KERSHNER/Primary Examiner, Art Unit 1786
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