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 .
Status of Claims
This office action is in response to the amendment received on 31 August 2026. Claims 1, 8, and 15 are amended. Claims 1-20 are pending.
Response to Amendment
The rejection of claims 1-7 and 9-20 under 35 U.S.C. 103 as being unpatentable over Hwang et al. (US 2016/0155962 A1, hereinafter "Hwang") in view of Ordonez et al. (ES 2642114 A1, hereinafter “Ordonez”) is overcome due to the Applicant’s amendment dated 31 August 2026. The rejection is withdrawn.
The rejection of claims 8 under 35 U.S.C. 103 as being unpatentable over Hwang et al. (US 2016/0155962 A1, hereinafter "Hwang") in view of Ordonez et al. (ES 2642114 A1, hereinafter “Ordonez”) in view of Choi et al. (US 2018/0273563 A1, hereinafter "Choi") is overcome due to the Applicant’s amendment dated 31 August 2026. The rejection is withdrawn.
Response to Arguments
Applicant’s argument filed 31 August 2026 with respect to claims 1-20 have been considered but are moot because the new ground of rejection does not rely on the Hwang reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. As seen in the action below, future rejections are based on a new reference Kim et al. (US 2020/0287143 A1). New rejections based on Ordonez and Choi rely on a different embodiment or a reinterpretation of the reference.
Applicant submits that claim 12 has not been properly rejected by the Office Action. As claim 12 is not currently allowable for reasons below, the current rejection is non-final.
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 1-20 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 recites Formula 1B represented by the structure reproduced below, and defined as ring CY is a 5-membered N-containing heterocyclic group and CY4 is a 6-membered carbocyclic group.
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It is unclear if the vertices of the shapes that enclose CY3 represent atoms other than carbon because in the instance where all locations are carbon, CY3 would still be heterocyclic, whereas CY4 is defined as either carbocyclic or heterocyclic rings. Therefore, the confusion arises wherein the 5-membered ring of CY3 is:
Only carbon at the unlabeled vertices OR
Carbon and other heteroatoms at the unlabeled vertices.
Therefore, claim 1 is indefinite. For the purposes of examination, the examiner will interpret CY3 in Formula 1B as either (A) or (B). Claims 2-20 are also rejected as they depend from claim 1 and do not cure the deficiencies of the claim from which they depend.
Claim 6 is 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 6 is dependent on claim 1 and recites an organometallic complex of claim 1 wherein Ln1 includes -Si(Q1)(Q2)(Q3) or -Ge(Q1)(Q2)(Q3). It is unclear whether the selection of -Ge(Q1)(Q2)(Q3) is additional to the requirement that at least one of R21 to R26 is -Ge(Q1)(Q2)(Q3) in amended claim 1 because the selection of -Si(Q1)(Q2)(Q3) is additional to said requirement. Therefore, the confusion arises in claim 6 wherein:
The selection of -Ge(Q1)(Q2)(Q3) is additional and two germyl groups are required OR
The selection of -Ge(Q1)(Q2)(Q3) is already met in claim 1 and one germyl group is required.
For the purposes of examination, the examiner chooses to interpret the organometallic complex of claim 1 as either (A) or (B).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9-10, 13, and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As discussed above with respect to the 112(b) rejection of claim 1, Claim 9 recites the Formulas 1B-1 and 1B-2 that do not properly depend from the formula recited in independent claim 1. If any of X31 to X33 are selected are selected as nitrogen, they do not satisfy all the requirements of Formula 1B because it is unclear if Formula 1B allows for atoms other than carbon in CY3. Thus claim 9 does not properly depend from independent claim 1.
Regarding claim 10, a similar issue arises for the claimed Formula 3-1 to 3-12 wherein X33 is nitrogen, and the formulae do not properly depend from the formula recited in independent claim 1 because it is unclear if Formula 1B allows for atoms other than carbon in CY3.
Regarding claim 13, a similar issue arises for the claimed Formula 30-1 to 30-2 wherein X33 is nitrogen, and the formulae do not properly depend from the formula recited in independent claim 1 because it is unclear if Formula 1B allows for atoms other than carbon in CY3.
Regarding claim 15, a similar issue arises for the claimed compounds wherein X33 is nitrogen, and the compounds do not properly depend from the formula recited in independent claim 1 because it is unclear if Formula 1B allows for atoms other than carbon in CY3.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCAS Q NGUYEN whose telephone number is (571)272-1199. The examiner can normally be reached Monday - Thursday 7:30 am - 5:00 pm Fridays 7:45 am to 12:00 pm.
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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.
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/L.Q.N./Examiner, Art Unit 1786
/JENNIFER A BOYD/Supervisory Patent Examiner, Art Unit 1786
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