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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 1, 2026 has been entered.
Status of Claims
This action is in reply to the communication filed on September 1, 2026.
Claims 1, 3 – 5, 7, 12, 13, 16, 20, and 23 have been amended and are hereby entered.
Claim 34 has been added.
Claims 2, 15, 30 and 31 have been canceled. Claims 6, 8 – 10, 21 and 22 have been cancelled previously.
Claims 1, 3 – 5, 7, 11 – 14, 16, 17, 20, 23 – 29, and 32 – 34 are currently pending and have been examined.
Response to Amendments
Applicant’s amendments to the claims, filed September 1, 2026, caused the withdrawal of the rejection of claims 1 – 5, 7, 11 – 17, 20, and 23 – 33 under 35 U.S.C. 112(a) as failing to comply with the written description requirement as set forth in the office action filed June 1, 2026.
Applicant’s amendments to the claims, filed September 1, 2026, caused the withdrawal of the rejection of claim 13 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention as set forth in the office action filed June 1, 2026.
Applicant’s amendments to the claims, filed September 1, 2026, caused the withdrawal of the rejection of claims 1 – 5, 7, 11 – 17, 20, 23 – 26, and 29 – 33 under 35 U.S.C. 103 as being unpatentable over Tsai in view of Bae as set forth in the office action filed June 1, 2026.
Applicant’s amendments to the claims, filed September 1, 2026, caused the withdrawal of the rejection of claims 27 and 28 under 35 U.S.C. 103 as being unpatentable over Tsai in view of Bae and further in view of Nishmae as set forth in the office action filed June 1, 2026.
Response to Arguments
Applicant's arguments filed September 1, 2026 have been fully considered but they are not persuasive.
Applicant argues that the currently pending claims are patentably distinct over the claims of the copending ‘358 application as the instant application requires both a structural generic formula and functional parameter limitations as opposed to the copending application which is only defined by structural features. Applicant notes that the specific compound common to both Applications has been removed. Examiner respectfully disagrees. Compound 223 has not been cancelled in the copending Application. Therefore, compounds of the ‘358 Application read on both the structural and functional parameter limitations of the instant Application and the scope of the Applications overlap.
Applicant argues that the specific embodiments provides multiple representative examples of compounds having AR values within the claimed range and that the specification supports the ranges of AR values in the claims as currently amended. Examiner respectfully disagrees. The emission spectrum area ratio claimed is less than or equal to 0.145, but the 5 specific compounds taught have an area ratio between 0.129 – 0.138 in the green light spectrum, and 0.088 – 0.110 in the red light spectrum. Neither of the two red-emitting compounds fall within the scope of claim 1 as amended, as the compounds are not represented by Formula 3. It is not clear that Applicant had possession of compounds with an AR ratio (AR2) in the green light range less than 0.129, or any compounds of Formula 3 with an AR ratio (AR3) emitting in the red light range within the range. Therefore, Applicant has not demonstrated possession of the claimed genus as required by the MPEP.
Applicant argues that the present inventors have discovered that metal complexes having an emission spectrum area ratio of less than 0.145 exhibit substantially higher device efficiency than metal complexes having an emission spectrum area ratio greater than 0.145. Applicant submits that the superior technical advantages are demonstrated by the device examples disclosed in the instant specification. Examiner respectfully disagrees. Overcoming a rejection based on unexpected results requires at least the combination of three different elements: (i) the results must fairly compare with the closest prior art in an affidavit or declaration under 37 CFR 1.132, (ii) the claims must be commensurate in scope, and (iii) the results must truly be unexpected. MPEP 716.02. Additionally, the burden rests with Applicant to establish the results are unexpected and significant. MPEP 716.02(b). As it relates to requirement (i), Examiner notes that Tsai is considered the closed prior art, yet results are not shown compared to the compounds of Tsai. As it relates to requirement (ii), Examiner notes that the results are not commensurate in scope with the claimed invention for at least the reason that the claims are directed to a compound, not the use of the compound in a device, whereas the derived properties are the result of using the compound in a device.
Applicant argues that Tsai neither specifically disclosed nor suggests the emission spectrum area ratio of the presently disclosed and claimed metal complexes and that Tsai fails to recognize that the claimed emission spectrum contributes to the overall device improvement. Examiner respectfully disagrees. The claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Furthermore, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that Bae merely teaches the introduction of a cyano substituent at a particular position within its own specific ligand framework and that the teachings of Bae are not applicable to the structure of Tsai. Examiner respectfully disagrees. The teachings of Bae do not appear to be limited to the particular ligand claimed or the particular phenyl substituent. Bae teaches the relationship of the cyano group with the Ir-C binding site and how this provided a deep HOMO energy level.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3 – 5, 7, 11 – 14, 16, 17, 20, 23 – 29,and 32 – 34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 – 12, 14 – 24, and 36 – 32 of copending Application No. 17/526358 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds within the scope of Formula 3 in claim 1 in the instant application overlap in scope with compounds of Formula 1A and Formula 1Ba in claim 1 of the ‘358 application as evidenced by compound 223 in claim 31 of the ‘358 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
Claims 1, 3 – 5, 7, 11 – 14, 16, 17, 20, 23 – 29, and 32 – 34 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.
The claims define an organometallic compound by the emission spectrum area ratio of the metal complex. In Table 1, three representative compounds 1, 12, and 21 that emit in the green light spectrum are compared to comparative compounds GD1, GD2, and GD3 and two representative compounds 41 and 90 that emit in the red light spectrum are compared to comparative compounds RD1 and RD2. In the green light spectrum, the compounds have an area ratio between 0.129 – 0.138. This represents only a portion of the claimed “less than or equal to 0.138” range, i.e. 0 – 0.138. Compounds 41 and 90 are Ir-based organometallic compounds with an extended polycyclic group, whereas compound RD1 and RD2 contain an aza-naphthyl group. Compounds 41 and 90 do not fall within the scope of Formula 3 because compound 41 does not contain a dibenzoheterole group and compound 90 does not contain a cyano group. Applicant has not provided any guidance as to how to form red-emitting materials within the scope of Formula 3 that that would meet the claimed limitations. Therefore, the specification does not appear to present a representative number of species sufficient to show that Applicant was in possession of the claimed genus as required by the MPEP (see MPEP 2163-II-A-3-a-ii).
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, 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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 1, 3 – 5, 7, 11 – 14, 16, 17, 20, 23 – 26, 29, 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Tsai (US20210054010A1) in view of Bae (US20160233440A1).
As per claims 1, 3 – 5, 7, 11 – 14, 16, 17, 20, 23, and 32, Tsai teaches compounds of Formula I
PNG
media_image1.png
176
188
media_image1.png
Greyscale
in [0006]. A particular compound Tsai teaches is
PNG
media_image2.png
197
318
media_image2.png
Greyscale
on Page 156. RA as taught by Tsai is an optional substitution ([0006]), therefore the teachings of Tsai encompass a ligand without a CD3 group. Another phenyl pyridine ligand taught by Tsai is ligand LB183
PNG
media_image3.png
190
214
media_image3.png
Greyscale
. Therefore, the teachings of Tsai encompass compounds with other phenyl pyridine ligands. Additionally, RC in Formula I of Tsai lists cyano as an option for RC (Claim 1) and the teachings of Tsai encompass compounds with cyano substitutents on the dibenzofuran ring. In analogous art, Bae teaches cyano group substitutions on organometallic ligands (Abstract). Bae teaches that by supplying a cyano group substitution to the ligand, the organometallic compound may have a deep HOMO energy level creating high triplet energy levels due to an increased band gap ([0185]). This provides a deep emission color ([0185]).
When modified in this way, with the removal of the CD3 group, the substitution of the LB ligand, and the addition of a cyano group, the modified compound reads on the claimed Formula wherein ligand A-B has a structure represented by Formula 3
PNG
media_image4.png
228
168
media_image4.png
Greyscale
, wherein X represents an O atom; X1 to X12 are CRx, wherein the Rx at X9 represents a substituted aryl group having 6 carbon atoms, the Rx at X10 is a cyano group, and the remaining Rx atoms are hydrogen. The metal complex has a structure represented by Formula I in claim 4
PNG
media_image5.png
212
202
media_image5.png
Greyscale
, wherein the metal M is selected from Ir as required by claim 5; ligand C-D and ligand
PNG
media_image6.png
50
50
media_image6.png
Greyscale
are different monoanionic bidentate ligands than ligand A-B, where Xa is a C and Xb is a N. Both of the ligands C-D and
PNG
media_image6.png
50
50
media_image6.png
Greyscale
are represented by Formulae in claim 11
PNG
media_image7.png
176
90
media_image7.png
Greyscale
, where RA represents a monosubstitution of an alkyl having 5 carbon atoms and RB represented non-substitution; The complex is represented by Formula 6 in claim 12.
PNG
media_image8.png
242
318
media_image8.png
Greyscale
, wherein m is 1, Rc is a monosubstitution of an alkyl having 5 carbon atoms and Rd is non-substitution.; This compound is the same as compound 14
PNG
media_image9.png
152
244
media_image9.png
Greyscale
in claim 23.
Tsai includes each element claimed, with the only difference between the claimed invention and Tsai being a lack of the aforementioned combination being explicitly stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of compounds for use in devices with improved efficiency, lifetime and manufacturing (Abstract), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
Regarding the claimed maximum emission wavelength of the metal complex at room temperature, the AR2 and/or of the metal complex, as required by claims 1 and 3, the prior art combination is silent with respect to the claimed properties. However, since the prior art combination teaches substantially the same compound as disclosed by Applicant, the property of maximum emission wavelength of the metal complex at room temperature and the AR2 of the metal complex is considered to naturally flow from the product of the prior art combination (and would be expected to fall within the range in the claim), absent evidence otherwise. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. When the structure recited in the prior art reference is substantially identical to that of the claims, claimed properties or functions are presumed to be present. Applicant bears responsibility for proving that the reference composition does not possess the characteristics recited in the claims.
As per claim 24, Tsai teaches:
An electroluminescent device comprising an anode, a cathode, and an organic layer disposed between the anode and the cathode wherein the organic layer comprises the metal complex of claim 1 ([0094]: “In some embodiments, the OLED comprises an anode, a cathode, and a first organic layer disposed between the anode and the cathode. The first organic layer can comprise a compound of formula Ir(L1)x(L2)y(L3)z wherein L1 has Formula I.”)
As per claim 25, Tsai teaches:
Wherein the organic layer is a light-emitting layer and the metal complex is a light-emitting material ([0096]: “In some embodiments, the organic layer may be an emissive layer and the compound as described herein may be an emissive dopant or a non-emissive dopant.”)
As per claims 26, 29, and 33 Tsai teaches:
Wherein the light emitting layer further comprises at least one host compound ([0097 – 0099]: “In some embodiments, the organic layer may further comprise a host… the host may be selected from the HOST group consisting of
PNG
media_image10.png
148
286
media_image10.png
Greyscale
” The combination of the host and the organometallic compound is interpreted as the claimed composition in claim 29. As claim 33 requires at least two host compounds but does not require that the host compounds are different, a second molecule of the same compound is interpreted as the claimed host compound. The compound contains a carbazole group as claimed.)
Tsai teaches an anode, a cathode, and an organic layer and that the compound is in the organic layer as discussed above. It would have been obvious to use the compound in the organic layer with the device structure of Tsai as Tsai demonstrates this device structure was known prior to the effective filing date of the claimed invention.
Claims 27, 28 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Tsai (US20210054010A1) in view of Bae (US20160233440A1) as applied to claims 1, 3 – 5, 7, 11 – 14, 16, 17, 20, 23 – 26, 29, 32 and 33 above, and further in view of Nishmae (US20200102329A1).
As per claims 27 and 28, the prior art combination does not teach:
wherein the electroluminescent device is a bottom-emitting device
Wherein the electroluminescent device is a top-emitting device.
Nishimae teaches that OLEDS can use a transparent anode and substrate to create a bottom-emitting device or the anode can be made of a reflective material to create a top-emitting device ([0173]).
It would have been obvious to use the compound in the organic layer of an electroluminescent device wherein the device is a bottom-emitting device or a top-emitting device as Nishimae demonstrates this device structure was known prior to the effective filing date of the claimed invention.
Regarding the claimed EQE, the prior art combination is silent with respect to the claimed property. However, since the prior art combination teaches substantially the same compound as disclosed by Applicant, the property EQE is considered to naturally flow from the product of the prior art combination (and would be expected to fall within the range in the claim), absent evidence otherwise. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. When the structure recited in the prior art reference is substantially identical to that of the claims, claimed properties or functions are presumed to be present. Applicant bears responsibility for proving that the reference composition does not possess the characteristics recited in the claims.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA N CHANDHOK whose telephone number is (571)272-5780. The examiner can normally be reached on Monday through Friday from 6:30 - 3:30.
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, Marla McConnell can be reached on 571-270-7692. 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.
/JENNA N CHANDHOK/Primary Examiner, Art Unit 1789
Prosecution Insights