DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The office acknowledges the receipt of applicants’ response to the restriction requirement dated 01/20/2026.
Elected Species
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A search of the prior art did not show the elected species. Under MPEP 803.02, the search was expanded to find an examinable species, but no examinable species were found.
The restriction requirement is therefore withdrawn.
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 1-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the compounds listed in paragraph [0169] on page 22 and the compounds listed starting in paragraph [0631] in the examples which all feature Pt as M and benzimidazole as A1 and A2, does not reasonably provide enablement for the full scope of claim 1, claim 8 and their dependents. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Per MPEP 2164, the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation Ltd. V. Hyde, 242 U.S. 261, 270 (1916) which postured the question: Is the experimentation needed to practice the invention undue or unreasonable?
Upon applying this test to claim 1 and claim 8 and their dependent claims, it is believed that undue experimentation would be required based on the evidence regarding each of the following factors:
(B) The nature of the invention: Independent claims 1 and 8 requires a light emitting-device having an emission layer of formula I and a compound of formula I as shown below:
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and
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(C) The state of the prior art and (E) The level of predictability in the art:
The stability of metal complexes is highly influenced by several key factors including:
The structural and chemical behavior of metal complexes is significantly influenced by several key factors, including
The nature of the metal ion
The oxidation state of the central metal ion
The nature and donor atoms of the ligands
Overall coordination number and geometry
Metal-ligand interactions
(Priyanka Bhojak* and Dr. Rachna Yadav**, Recent Advances in Metal Complex Formation and Their Physico-Chemical Characterization, Published 2025 and Senthilkumar Muthaiah, Anita Bhatia and Muthukumar Kannan, Stability of Metal Complexes , Published: 05 March 2020)
(D) The level of one of ordinary skill: One having ordinary skill in the art would not be able to reasonably make a complex of Formula 1 with any M as described in the claims
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and
A1 to A4 and B1 to B6 with any carboxylic group or heterocyclic group as described in the claims
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without further guidance as it is known in the art that metal complexes have several complex factors that affect the ability to synthesize and result in a stable compound.
(F) The amount of direction provided by the inventor: The specification provides no description of how to make compounds of Formula 1 that have M other than platinum (Pt) (e.g. iridium (Ir), platinum (Pt), palladium (Pd), copper (Cu), silver (Ag), gold (Au), rhodium (Rh), ruthenium (Ru), rhenium (Re), osmium (Os), titanium (Ti), zirconium (Zr), hafnium (Hf), europium (Eu), terbium (Tb), or thulium (Tm)) and have A1 and A2 other than benzimidazole (e.g. any C3-C60 carbocyclic group or a C1-C60 heterocyclic group) .
(G) The existence of working examples: The specification does not provide any compounds or examples of metal complexes of Formula 1 with M other than platinum (Pt) (e.g. iridium (Ir), platinum (Pt), palladium (Pd), copper (Cu), silver (Ag), gold (Au), rhodium (Rh), ruthenium (Ru), rhenium (Re), osmium (Os), titanium (Ti), zirconium (Zr), hafnium (Hf), europium (Eu), terbium (Tb), or thulium (Tm)) and have A1 and A2 other than benzimidazole (e.g. any C3-C60 carbocyclic group or a C1-C60 heterocyclic group) .
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
One having ordinary skill in the art would not be able to reasonably predict how to appropriately synthesize a stable metal complex of Formula 1 with M other than platinum (Pt) (e.g. iridium (Ir), platinum (Pt), palladium (Pd), copper (Cu), silver (Ag), gold (Au), rhodium (Rh), ruthenium (Ru), rhenium (Re), osmium (Os), titanium (Ti), zirconium (Zr), hafnium (Hf), europium (Eu), terbium (Tb), or thulium (Tm)) and have A1 and A2 other than benzimidazole (e.g. any C3-C60 carbocyclic group or a C1-C60 heterocyclic group) without a large amount of undue experimentation.
Based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention of claims 1, 8 and their dependents without undue experimentation.
Claims 1-25 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.
Per MPEP 2163(II)(A)(3)(a)(ii), the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by (A) actual reduction to practice, (B) reduction to drawings, or (C) by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.
Independent claims 1 and 8 require a light emitting-device having an emission layer of formula I and a compound of formula I as shown below:
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and
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The description only provides compounds and examples of metal complexes of Formula 1 with M as platinum (Pt) and have A1 and A2 as benzimidazole. The limited number of examples described in the written description do not provide a representative number of species sufficient to show that applicant was in possession of the claimed genus.
Therefore, the claims are rejected as lacking adequate written description.
Conclusion
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY D CLARK whose telephone number is (571)270-7087. The examiner can normally be reached on 8AM-4PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Chriss can be reached on 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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/GREGORY D CLARK/Primary Examiner, Art Unit 1786