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 .
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
Applicant argues that there is no articulated or apparent reason to make the specific borazine-to-aryl substitution in compound 12, and simply that a particular substitution could be made is not a reasoning as to as to why the substitution should be made. This argument is not convincing. The claimed compounds are the same as Compound 12 using a substituent not included in the claimed list of substituents. Shin also teaches that the disclosed compounds can have an aryl group in place of the cyclic borazine group. This is the rationale for using the claimed aryl substituents. To say that one would have no specific reason to use the aryl substituted groups is to say that one should ignore the explicit teachings of Shin. Applicant cites MPEP 2144 to say that simply stating art recognized equivalence is not sufficient to establish a prima facie case of obviousness. But MPEP 2144(I) begins with the heading that says “Rationale may be in a reference, or reasoned from common knowledge in the art, scientific principles, art-recognized equivalents, or legal precedent” (emphasis added), and states, “[t]he rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law” (emphasis added). Shin teaches the claimed compounds with a different substituent, and teaches that the claimed substituents may be used. Why one would not have a reasonable expectation of success when using a different substituent when Shin explicitly teaches that that other substituent is suitable?
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) 1-8 and 10-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al (US 12035617 B2, US 20210359227 A1).
Shin discloses an OLED comprising a first and second electrode and organic layers therebetween and the organic layers comprising an organometallic compound [abstract] having the general structures Formula 1-2a and Formula 1-7b [col 4 lines 5-15, col 6 lines 6-7]:
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wherein Ar2 and Ar3 includes aromatic hydrocarbon groups of 6 to 30 forming carbons [col 2 lines 15-27]. A demonstrative specific compound is disclosed:
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[compound 12, col 33 lines 50-65] which reads on the claimed Formula 1 wherein M1 is Pt, Ra is phenyl, C2 is phenyl, C1 is phenyl. The difference with the claimed Formula 1, is that compound 12 includes a cyclic borazine group in the place of R1 of claimed formula 1. Shin discloses that the cyclic borazine group may alternatively be a C6 or greater aryl group based on phenyl S1 [col 9]:
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, wherein S1 reads on the claimed R1 as a substituted or unsubstituted C6 to C30 aryl group. Furthermore, r1 in Formula 1-7b may be zero [col 24 lines 39-40] and so the substitution is not required, which reads on the general formula 1-1A of claim 3. The disclosed substituents may be further substituted by alkyl and aryl groups [col 2 lines 17-27] which includes t-butyl groups, phenyl group groups, biphenyl, terphenyl and other common substituents in the art [col 16 line 53 – col 17 line 36].
It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have prepared the claimed organometallic compound, with all of the claimed substituents, and OLED thereof, because Shin discloses each of the elements of the claimed structures arranged in the same way in the above cited formulae. If Applicant argues that the claimed embodiments are not disclosed with sufficient specificity and that examiner is picking and choosing with improper hindsight, Examiner notes that the rejection is made under 35 USC 103 obviousness. The claims are obvious over the combination of elements disclosed, and the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Shin also discloses a second a third compound [abstract] wherein the second compound includes HT hosts including carbazole structures of the instant claims
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[col 44] and the third compound: includes ET hosts similar to the structures of instant claim 13:
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[col 48]. Shin also discloses the emitting layer comprising a fluorescent emitter [col 53 line 62 et seq].
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al (US 20200119289 A1) in view of Shin et al (US 12035617 B2, US 20210359227 A1).
Lin discloses OLED devices comprising platinum phosphorescent emitters, similar to those Shin:
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[abstract]. Lin also discloses the emitting layer further comprising a thermally activated delayed fluorescence, i.e., TADF emitter [0096-0099, 0129].
Lin does not disclose the specific emitters of the claims.
Shin, discussed above, discloses the claimed phosphorescent emitters. Shin discloses that the disclosed emitters provides improvement to efficiency of an OLED device [col 77 lines 47-51].
It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have used the claimed organometallic compound of Formula 1 as the phosphorescent emitters of Lin because Shin teaches that they provides improvement to efficiency of an OLED device.
Double Patenting
There is currently no ODP rejection over US 12035617 B2, because there is no single claim in the patent that discloses the instantly claimed Formula 1 with sufficient specificity to make obvious the instant claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 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