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
Applicant’s election without traverse of compound 6:
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in the reply filed on 04/29/2026 is acknowledged.
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 04/29/2026.
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) 1-15 and 17-20 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Ma et al (US 20130119354 A1).
Ma discloses an OLED comprising the claimed organic layer [claim 21-25, abstract] comprising a dopant exemplified by compound 3 and 11
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[p69-70]
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[p69] wherein the R1 to R4 groups include deuterium [claim 1] and in general, any of the groups may include partial and full deuteration [0102]. Ma also discloses the claimed host materials [0025].
(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) 1-15 and 17-20 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Li et al (US 20220194956 A1).
Li discloses an OLED [abstract, examples] comprising the claimed organic layer comprising a dopant exemplified by:
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[p38, reads on compound of claim 15, p65 of claims, last embodiment] as well as a host material including the claimed host compounds including for example H2:
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[p35].
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.
Claim(s) 1-15 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cai et al (US 20200251666 A1, CN 111518139).
Cai discloses an OLED comprising the claimed organic layer comprising a dopant exemplified by:
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[p38] and a host compound of the claims:
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[p40].
The difference between the claimed compounds and the disclosed compounds is that the disclosed compounds include an additional CN functional group, which is not included in the RA, RB and RX functional groups of the claimed Formula I. As taught by Cai, the additional CN group is added in order to make predictable changes to the iridium complex, such as blue shift in the emission spectrum [0008].
If the cyano group improved compounds of Cai would have been obvious to the ordinarily skilled artisan, then it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of Applicant’s invention to have prepared the claimed compounds without the cyano group modification.
Claim(s) 1-15 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cai496 (US 20210403496 A1) discloses a metal complex of Formula 1:
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[claim 1, p25] wherein Ar is an aryl or heteroaryl group, with an exemplary formula includes fully deuterated phenyl group:
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[p44].
The difference between the claimed compounds and the disclosed compounds is that the disclosed compounds include an additional CN functional group, which is not included in the RA, RB and RX functional groups of the claimed Formula I. As taught by Cai, the additional CN group is added in order to make predictable changes to the iridium complex, such as blue shift in the emission spectrum [0009].
If the cyano group improved compounds of Cai496 would have been obvious to the ordinarily skilled artisan, then it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of Applicant’s invention to have prepared the claimed compounds without the cyano group modification.
Other References
CN 114773399 A, CN 113773349 A and CN 114106056 A disclose the claimed compounds, but are not available as prior art under 35 USC 102.
CN 111808143 A discloses all of the claimed limitations, but also requires an adamantyl group, which is excluded from the claimed Formula 1.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12577202. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims disclose the same OLED and consumer product thereof [claims 1 and 19] comprising compounds of the claimed formula I, both iridium and platinum compounds below:
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[clm 17]
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[clm 18].
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
Prosecution Insights