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.
Claims 1-10 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 a number of compounds largely based on carbazole and cyano-phenyl derivatives, does not reasonably provide enablement for the unlimited scope of a first compound, a second compound, a third compound, and a fourth compound in claim 1. The specification does not enable a person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with claim 1.
The genus “compounds” with various electronic relationships shows a lack of a scope of enablement to clearly define the material options.
(A) The breadth of the claims far exceeds the written description which is limited only a few examples.
(B) The nature of the invention as provided by the specification limits the materials to a few classes of organic compounds for which the claims are not so limited.
(C) The state of the prior art is limited in the written description which does not reflect the unlimited scope of the claims.
(D) The level of one of ordinary skill in the art without specific guidance would not be deemed to have the know-how to carry out the full scope of the invention as recited in the claims due to a lack of a written description.
(E) The level of predictability in the art is indeterminate as the class or function of the first to the fourth compounds shows a scope in the claims beyond the written description. How would one determine the class and function of suitable compounds?
(F) The amount of direction provided by the inventor in the selection of compounds suitable to practice the invention is lacking based on the limited written description.
(G) Working examples are limited to a few examples far beneath the scope of the claims.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure is excessive as the claimed scope would be expected to encompass a plethora of compound classes not included in the written description.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to carry out the scope of the invention in the claims.
Therefore, claim 1 and all claims requiring the limitations claim 1 are rejected based on the lack of a clear scope of enablement.
Claims 1-10 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 delayed fluorescent compounds, does not reasonably provide a written description for the invention based on the claims.
The written description of a second compound and a third compound, does not allow for a determination of the metes and bounds to conduct a comprehensive structure search as said compounds are simply defined as being different from each other. Said compounds is only limited by the generic limitation of being delayed fluorescent compounds. There is no means of determining how said compounds are different are from each other or different from any other factor.
The deficiency is further highlighted by the limitations which require specific electronic relationships among said the first compound to the fourth compounds based on lowest excited singlet energy, lowest excited triplet energy, and concentration ratios.
The specification while offering a small number of examples wherein the structural diversity is very limited in comparison to scope of the claim 1. Claim 1 lacks a defined scope fully supported by a written description relative to the class of the compound or the function of the compound. This results in indeterminate structural requirements which does not offer enough support to show that the applicant was in possession of the invention as recited. Therefore, claim 1 and all claims requiring the limitations claim 1 a rejected as lacking a suitable written description.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1–10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 requires that “the second organic compound and the third organic compound are delayed fluorescent materials each having a different structure”. It is unclear how they are different – are they different from each other? For purposes of examination, different is construed as any version of different such as each of the compounds being separate compounds thus being different.
Conclusion
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