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
Applicant’s election without traverse of Ir and
PNG
media_image1.png
128
122
media_image1.png
Greyscale
in the reply filed on 27 February 2026 is acknowledged.
With regard to the instant claim 15 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 claim 15 in independent form, the claim has not been indicated as allowable. However, claims written in independent form which require all the limitations of claim 15 as well as being limited to the elected species along with any dependent claims which require all the limitations of claim 15 as well as being limited to the elected species would be allowable.
Claim 15 is 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 claim 15 has not be 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.
Specification
The disclosure is objected to because of the following informalities: The ligand LB264 on p. 39 has poor resolution and is difficult to read; 6 of the final 7 structural formulas of p. 51 have poor resolution and are difficult to read.
Appropriate correction is required.
Claim Objections
Claim 19 is objected to because of the following informalities: 6 of the final 7 structural formulas of claim 19 have poor resolution and are difficult to read. Appropriate correction is required.
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 1-5, 12-15, and 17-20 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 1-5, 12-15, and 17-20: Claims 1-5, 12-15, and 17-20 require a ligand LA comprises a first atom coordinating to a metal; the first atom can only form a ring, if any, with the metal as the ring atom; the metal is selected from the group consisting of Ir, Rh, Re, Ru, Os, Pt, Pd, Ag, Au, and Cu; the ligand LA comprises at least one Si or Ge atom. The instant description includes a description of the ligands LA, but he description only provides specific descriptions for ligands having the structure of the instant Formula 1 as examples of the ligands LA that meets this limitations of the current independent claims. The specification provides no guidance on the structure of the instant ligands L-A beyond the basic description that the ligands LA comprises a first atom coordinating to a metal; the first atom can only form a ring, if any, with the metal as the ring atom; the metal is selected from the group consisting of Ir, Rh, Re, Ru, Os, Pt, Pd, Ag, Au, and Cu; the ligand LA comprises at least one Si or Ge atom. The lack of specific example(s) outside of the scope of the instant Formula I in combination with the exceptional breadth of the language LA comprises a first atom coordinating to a metal; the first atom can only form a ring, if any, with the metal as the ring atom; the metal is selected from the group consisting of Ir, Rh, Re, Ru, Os, Pt, Pd, Ag, Au, and Cu; the ligand LA comprises at least one Si or Ge atom described in the written description do(es) not provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus (see MPEP 2163-II-A-3-a-ii).
.
Claim Rejections - 35 USC § 103
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.
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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-9, 12-14, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US 2020/0099000 A1) (hereafter “Zhang”) in view of Je et al. (KR 2011-0120074 A—machine translation relied upon) (hereafter “Je”).
Regarding claims 1-9, 12-14, and 17-19: Zhang discloses an organic light emitting device comprising an anode, a cathode, and an organic layer disposed between the anode and the cathode {paragraphs [0141]-[0145] and Tables 1 and 2: Example 5}.
The organic layer comprises a light-emitting laye,r the light-emitting layer comprising the compound shown below {paragraphs [0141]-[0145] and Tables 1 and 2: Example 5}.
PNG
media_image2.png
560
850
media_image2.png
Greyscale
The light-emitting layer additionally comprises the compound shown below as a host material {paragraphs [0141]-[0145] and Tables 1 and 2: Example 5}.
PNG
media_image3.png
510
904
media_image3.png
Greyscale
Zhang does not exemplify that the acetylacetonate derivative ligand comprises a silyl substituent.
However, Zhang teaches that the acetylacetonate derivative ligand of Zhang has the structure shown below where R1 to R7 can be alkylsilyl {paragraphs [0011], [0017], and [0059]}.
PNG
media_image4.png
522
812
media_image4.png
Greyscale
Je teaches compounds for use in organic light-emitting devices {p. 2, lines 17-24}. Je exemplifies the compounds shown below {p. 9}.
PNG
media_image5.png
392
1530
media_image5.png
Greyscale
Thus, a trimethylsilyl group linked through a methylene linker was a known alkylsilyl group at the time the invention was effectively filed.
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have substituted an alkylsilyl group that is trimethylsilyl group linked through a methylene linker in place of one of the methyl end groups of the acetylacetonate derivative ligand of the compound of Zhang shown above, based on the teaching of Zhang and Je. The substitution would have been one known element for another known element and would have led to predictable results. See MPEP 2143(I)(B). Furthermore, one of ordinary skill in the art would have been motivated to select suitable and optimum combinations of substituent and substituent positions to be used to make compounds for use in an organic light-emitting device in order to produce optimal organic light emitting devices.
Regarding claim 20: Zhang as modified by Je teaches all of the features with respect to claim 17, as outlined above.
Claim 20 differs from claim 17 in that the organic light-emitting device is comprised in a consumer product.
Zhang teaches that the device of Zhang can be comprised in a consumer product {paragraph [0033]}.
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the device of Zhang such that it was comprised in a consumer product, based on the teaching of Zhang. The modification would have been a combination of prior art elements according to known methods to yield predictable results. See MPEP 2143(I)(A). Furthermore, one of ordinary skill in the art would have been motivated to select suitable and optimum device structures in order to produce optimal consumer products.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 2013/0146848 A1) (hereafter “Ma”).
Regarding claims 1-14: Ma discloses the compound shown below {paragraph [0058]: Compound 4}.
Ma does not exemplify that the acetylacetonate derivative ligand comprises a silyl substituent.
However, Ma teaches that the acetylacetonate derivative ligand of Ma has the structure shown below where Rx to Rz can be silyl {paragraphs [0054]}.
PNG
media_image6.png
342
318
media_image6.png
Greyscale
Ma exemplifies several compounds comprising trimethylsilyl substituents {paragraph [0058]: Compounds 34, 37, 41}. Thus, a trimethylsilyl group was a known silyl group at the time the invention was effectively filed.
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have substituted a trimethyl silyl group in place of one of the methyl groups of the acetylacetonate derivative ligand of the compound of Ma shown above, based on the teaching of Ma. The substitution would have been one known element for another known element and would have led to predictable results. See MPEP 2143(I)(B). Furthermore, one of ordinary skill in the art would have been motivated to select suitable and optimum combinations of substituent and substituent positions to be used to make compounds for use in an organic light-emitting device in order to produce optimal organic light emitting devices.
The resultant acetylacetonate ligand would have the structure of the instant LA1.
Allowable Subject Matter
Claim 16 is 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.
The following is a statement of reasons for the indication of allowable subject matter: As outlined above, Ma et al. (US 2013/0146848 A1) (hereafter “Ma”) is a representation of the closest prior art. However, the disclosure of Ma specifically does not permit the substituent pattern of any of the compounds of the current claim 16. Furthermore, the prior art does not teach or motivate modifying the compounds of Ma to have the structure of any compounds of the current claim 16.
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 1-9 and 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 9,512,355. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1-9 and 12-14: Claim 12 of U.S. Patent No. 9,512,355 discloses compounds having the structure shown below {col. 126: Formula IV}.
PNG
media_image7.png
400
616
media_image7.png
Greyscale
Claim 12 of U.S. Patent No. 9,512,355 does not exemplify that the acetylacetonate derivative ligand comprises a silyl substituent.
However, Claim 12 of U.S. Patent No. 9,512,355 teaches that the acetylacetonate derivative ligands of Claim 12 of U.S. Patent No. 9,512,355 has the structure shown below where Rx to Rz can be silyl {col. 126, Claim 9—from which claim 12 directly depends}.
PNG
media_image6.png
342
318
media_image6.png
Greyscale
At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have substituted a silyl group as one of the Rx and/or Ry groups of the acetylacetonate derivative ligand of the compound of Claim 12 of U.S. Patent No. 9,512,355 shown above, based on the teaching of Claim 12 of U.S. Patent No. 9,512,355. The substitution would have been one known element for another known element and would have led to predictable results. See MPEP 2143(I)(B). Furthermore, one of ordinary skill in the art would have been motivated to select suitable and optimum combinations of substituent and substituent positions to be used to make compounds for use in an organic light-emitting device in order to produce optimal organic light emitting devices.
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).
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.
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.
/DYLAN C KERSHNER/ Primary Examiner, Art Unit 1786
Prosecution Insights