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 .
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.
2. Claims 1-25 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.
Applicant has amended claim 1 as below:
The first emitter comprises platinum and a first ligand bound to platinum, the first emitter satisfies at least one of Condition A to Condition C:
Condition A the first ligand is a tetradentate ligand, wherein the first ligand comprises carbon, nitrogen and oxygen, and the number of cyclometallated rings formed by a chemical bond between the platinum and the first ligand is three,
The office notes that while the first ligand is bound to platinum Condition A corresponds to a tetradentate ligand which comprises carbon, nitrogen and oxygen, and the number of cyclometallated rings formed by a chemical bond between the platinum and the first ligand is three. The three cyclometallated rings formed by a chemical bond between the platinum is not limited by any structural constraints. This requirement far exceeds the written description found in the specification.
Condition B each of carbon, nitrogen and oxygen of the first ligand is chemically bonded to the platinum
The office notes that presumably the carbon, nitrogen and oxygen from the attachment point(s) of the cyclometallated rings to platinum. As there is no structural constraints for the cyclometallated rings there is no written description that adequately shows the applicant was in possession of the full scope of the first ligand bound to platinum.
While applicant has amended the amine-free compound to recite comprises three or more C1-C60 cyclic groups which are linked to each other only via a single bond, not via an atom, the scope of C1-C60 cyclic groups which are linked to each other only via a single bond, not via an atom far exceeds any written description in the specification.
While the Specification provides several examples of amine-free compounds and platinum emitter which are encompassed by claim 1 requirements, the examples do not demonstrate that Applicant has possession for the full scope of claim 1 and its dependent claims.
The specification while showing some amine-free compounds is lacking a suitable written description regarding any guidance on free-amine structures beyond C1-C60 cyclic groups that would be within the broad scope of the parameters of claim 1.
Claim 1 requires a first emitter comprising a platinum emitter but fails to provide guidance on any other components which may be present. This is especially noteworthy as the light from the first emitter must pass through the capping layer to meet a particular electronic criteria defined by Equation 1.
The capping layer and the first emitting are thus not defined in sufficient detail in the specification to show that applicant was in possession of the invention commensurate in scope with claim 1 as presented. A claim written in such a manner results in a scope for a combination of generic materials that would extend beyond the material requirements supported in the Specification.
The limited examples described in the written description does not provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus (see MPEP 2163-11-A-3-a-ii).
Response to Amendment
Applicants’ amendments are insufficient to render the written description in the specification commensurate in scope with the very generic nature of the material requirements found in the scope of claim 1.
The applicant’s arguments with respect to the pending claims have been considered but very not persuasive as discussed above.
Conclusion
Applicant's amendment necessitated the 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 GREGORY D CLARK whose telephone number is (571)270-7087. The examiner can normally be reached on 8AM-4PM 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, 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GREGORY D CLARK/Primary Examiner, Art Unit 1786
Prosecution Insights