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 .
Election/Restrictions
In a requirement for election of species, dated 10/29/2025, Applicant was required to choose from:
A compound comprising ligand LA of Formula I wherein,
Species I, wherein M is iridium (claims 1-13 and 17-20),
Species II, wherein M is platinum or palladium (claims 1-11 and 14-20), or
Species III, wherein M is Os, Cu, Ag, or Au, (claims 1-11 and 17-20).
In the reply dated 12/18/2025, Applicant elected iridium (Species I), without traverse.
In light of the amendments to the claims, Species I was not identified in the prior art.
Under MPEP 803.02, the search was expanded to find an examinable species.
The requirement for election of species, as set forth in the Office action mailed on 10/29/2025, has been reconsidered in view of the state of claims to the elected species pursuant to MPEP § 821.04(a). The requirement for election of species is hereby withdrawn. Specifically, claims 14-16 are no longer withdrawn from consideration.
In view of the above noted withdrawal of the requirement for election of species, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a requirement for election of species is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claims 1-20 are examined herein.
Response to Amendment
In the response filed 08/27/2026, the claims and specification were amended.
These amendments are hereby entered.
In light of Applicant’s amendments to the claims and specification, the objections to claim 7 and the specification are withdrawn by the Office.
In light of Applicant’s amendments to the claims, the rejection under 35 U.S.C. 112(b) of claims 1-13 and 17-20 as failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention, and the rejections under 35 U.S.C. 103 of claims 1-5, 9-12, 17-18, and 20 as being unpatentable over Nishizeki et al. (JP 2016/219490 A), and of claim 19 as being unpatentable over Nishizeki as applied above and further in view of Metz et al. (US 2016/0072081 A1), are withdrawn by the Office.
Claims 1-20 were originally filed.
Claims 1, 7, 17, 19, and 20 are instantly amended.
Claims 1-20 are pending in the application.
Response to Arguments
Applicant’s arguments with respect to the rejection under 35 U.S.C. 112(d) of claim 18 as being of improper form have been considered and is persuasive. The rejection is withdrawn.
Applicant’s remaining arguments 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.
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 1-20 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.
With respect to independent claims 1, 17, and 20, the claims contain the proviso that LA does not comprise a structure of Formula IV, which is pictured below.
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Formula IV does not appear to be present in the originally filed specification, claims, or drawings, but rather was added after the application filing (MPEP 608.04), and thus represents new matter. Further, the instant specification does not provide the necessary support to include a negative limitation for every embodiment of ring A comprising a nitrogen atom at a position analogous to instant Z2 (MPEP 2173.05(i)), in order to arrive at such a formula.
For at least these reasons, Formula IV represents new matter.
Conclusion
Applicant's amendment necessitated any 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 RACHEL SIMBANA whose telephone number is (571)272-2657. The examiner can normally be reached Monday - Friday, 8:00 A.M. - 4:30 P.M..
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, Jennifer Boyd can be reached at 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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/RACHEL SIMBANA/Primary Examiner, Art Unit 1786
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