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
Claims 1-3, 8-16, and 18-34 are pending in the instant application.
Claims 4-7 and 17 have been canceled.
Claims 32-34 stand withdrawn.
Information Disclosure Statement
The Information Disclosure statement filed February 25th, 2026 has been fully considered by the examiner, except where marked with a strikethrough.
Withdrawn Objections/Rejections
Applicant’s amendment is sufficient to overcome the objection to the specification raised due to the title not being descriptive. This objection is hereby withdrawn.
Applicant’s cancellation of Claims 4-7 and 17 renders the rejections thereof on the basis that it contains an improper Markush grouping of alternatives and under 35 U.S.C. 112(a) moot. These rejections are hereby withdrawn.
Applicant’s amendments are sufficient to overcome the rejection of Claims 1, 3, 5, 9, 17-19, 21-25, and 28 under 35 U.S.C. 102(a)(1). Claims 5 and 17 have been canceled, rendering the rejection thereof moot. This rejection is hereby withdrawn.
Claim Rejections – Improper Markush Grouping
The rejection of Claims 1-3, 8-16, and 18-30 on the basis that it contains an improper Markush grouping of alternatives is maintained. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
Applicant traverses this rejection on the basis that the instantly claimed compounds do share a similar structure. At Page 22 of the remarks filed February 25th, 2026, Applicant states the shared structure is:
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The examiner does not find this argument persuasive. As noted in the non-final rejection mailed November 25th, 2025, the Markush grouping as recited at instant Claim 1 is directed to compounds of formula (I). Formula (I) is
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wherein the variables Ar1 and Ar2 can be a myriad of distinct cyclic moieties, with Ar1 being further substituted. The variable X can be selected from both cyclic and acyclic groups, and allows for further substitution. The variables in the variables m and n further leads to a Markush grouping of compounds with distinct numbers of cyclic moieties. The shared structure, reproduced above, as noted by the Applicant, is not substantial enough to provide a shared structural similarity. While each Ar2 is a 6-membered N-heterocycle, the variety of substitution patterns and variability in Ar1, which includes both phenyl and heteroaryl rings with further diverse substitution patterns results in a broad scope of compounds that are not obvious variants of each other. This variability in Ar1 and Ar2 results in compounds that do not have substantial structural similarity, and that are not obvious variants of each other. As noted previously, exemplary compounds I and XIV from Table 1 beginning at Page 25, both of which are compounds of the instant formula (I) demonstrates a lack of significant structural similarity and are not obvious variants of each other:
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Compounds XII and XIV utilize distinct definitions of Ar1 and Ar2, resulting in polycyclic compounds with distinct substitution patterns, and are not obvious variants of each other. The examiner maintains these compounds do not reflect a substantial structural similarity. Applicant’s remarks filed February 25th, 2026 did not provide any evidence as to how these compounds would be considered obvious variants of each other, and as such, this rejection is maintained.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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.
The rejection of Claims 1-3, 8-16, and 18-30 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 compound of formula (I) in which Ar2 is pyridine, pyrimidine, pyrazine, triazine, or tetrazine, n is 0 or 1, Ar1 is
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,
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,
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, Z is Z2 or Z3, and X is unsubstituted methyl or
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wherein each R is hydrogen, does not reasonably provide enablement for compounds of formula (I) where these variables are otherwise defined. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Beginning at Page 22 of the remarks filed February 25th, 2026, Applicant traverses the rejection on the basis that though diazine Ar1 moieties are not presently exemplified, a person skilled in the art would expect these groups to work in a similar way to the pyridine groups already exemplified. Further, Applicant argues that though Z4 moieties are not presently exemplified, the skilled person would expect these groups to work in a similar way to exemplified groups Z2 and Z3. Applicant did not address the lack of enablement for Ar2 as pyridazine.
The examiner does not find this argument persuasive.
Genentech Inc. v Novo Nordisk A/S (CAFC) 42 USPQ2d 1001 states that “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion” and “patent protection is granted in return for enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.
At the first paragraph at page 23 of the remarks filed February 25th, 2026, Applicant states “The skilled person would also be aware, based on their general knowledge of the field, that compounds in which Ar1 is a diazine can be synthesized using the procedures already exemplified in the application, by replacing fluorinated pyridine reagents with fluorinated diazine reagents.” Instant Claim 1 is drawn to compounds of formula (I) in which up to 5 Ar1 groups may be present, selected independently from the instantly recited definitions. This results in a scope of compounds with breadth far beyond what has been exemplified by the instant application. In fact, Applicant acknowledges that no examples of diazine Ar1 moieties have been disclosed instantly. Therefore, the successful generation of compounds of formula (I) in which Ar1 is any of the recited definitions not explicitly stated above is speculative. Due to the number of possible combinations and further distinct substitution patterns of Ar1 moieties, the instantly disclosed specification is not sufficiently enabling for the broad scope of the compounds claimed.
Further, with respect to the Z moiety, Applicant states at the first paragraph of page 24 of the remarks filed February 25th, 20206, that “The skilled person would also be aware, based on their common general knowledge in the field, that Z4 moieties can be synthesised using procedures common in the art and already exemplified for the Z2 and Z3 moieties.” In the instant case, Z4 moieties are claimed as substituents of Ar1 moieties. Applicant acknowledges many of the Ar1 moieties are not presently exemplified in the application. Therefore, the successful generation of compounds with both unexemplified Ar1 moieties, further substituted by unexemplified Z moieties are speculative. The instant specification does not sufficiently enable the scope of compounds beyond those instantly exemplified, as a compound of formula (I), with up to 5 distinct Ar1 moieties, further substituted by Z moieties results in a number of compounds with distinct steric hindrances that are not obvious variants of each other, and represents distinct compounds for with several moieties for which no examples have been demonstrated.
For clarity of the record, the Wands factors, as discussed in the non-final rejection mailed November 25th, 2025 are discussed in further detail below.
Pursuant to In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), one considers the following factors to determine whether undue experimentation is required: (1) The breadth of the claims, (2) The nature of the invention, (3) The state of the prior art, (4) The level of one of ordinary skill, (5) The level of predictability in the art, (6) The amount of direction provided by the inventor, (7) The existence of working examples and (8) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Nature of the invention:
The invention is drawn to compounds of the formula:
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Breadth of the invention:
The scope of the claimed invention is very broad, as it is drawn to any compound of the above formula, allowing for myriad combinations of the variables as defined, for example, at instant Claim 1.
State of the prior art and predictability in the art:
The invention is directed to a genus of compounds, and therefore is chemical in nature. Per MPEP 2164.03, “The “predictability or lack thereof” in the art refers to the ability of one skilled in the art to extrapolate the disclosed or known results to the claimed invention. If one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention pertains, then there is predictability in the art. On the other hand, if one skilled in the art cannot readily anticipate the effect of a change within the subject matter to which that claimed invention pertains, then there is lack of predictability in the art. Accordingly, what is known in the art provides evidence as to the question of predictability. In particular, the court in In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971), stated:
[I]n the field of chemistry generally, there may be times when the well-known unpredictability of chemical reactions will alone be enough to create a reasonable doubt as to the accuracy of a particular broad statement put forward as enabling support for a claim. This will especially be the case where the statement is, on its face, contrary to generally accepted scientific principles. Most often, additional factors, such as the teachings in the pertinent references, will be available to substantiate any doubts that the asserted scope of the objective enablement is in fact commensurate with the scope of protection sought and to support any demands based thereon for proof. [Footnote omitted.].
The scope of the required enablement varies inversely with the degree of predictability involved, but even in unpredictable arts, a disclosure of every operable species is not required. A single embodiment may provide broad enablement in cases involving predictable factors, such as mechanical or electrical elements. In re Vickers, 141 F. 2d 522, 526-27, 61 USPQ 122, 127 (CCPA 1944); In re Cook, 439 F.2d 730, 734, 169 USPQ 298, 301 (CCPA 1971). However, in applications directed to inventions in arts where the results are unpredictable, the disclosure of a single species usually does not provide an adequate basis to support generic claims. In re Soll, 97 F.2d 623, 624, 38 USPQ 189, 191 (CCPA 1938). In cases involving unpredictable factors, such as most chemical reactions and physiological activity, more may be required. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (contrasting mechanical and electrical elements with chemical reactions and physiological activity). See also In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Vaeck, 947 F.2d 488, 496, 20 USPQ2d 1438, 1445 (Fed. Cir. 1991). This is because in art areas having a high degree of uncertainty (i.e. the unpredictable arts) it is not reasonably predictable from the disclosure of one species, what other species will work.
Level of ordinary skill in the art:
An ordinary artisan in the area of development of organic chemical compounds, in this case serving as an emissive layer in an organic light emitting device, would have experience in synthesizing chemical compounds for directed applications. The synthesis of new compounds, while complex, is routine in the art. The process of developing new compounds suitable for directed purposes, for example as an emissive layer in organic light emitting device, prior to synthesizing and testing these compounds is generally not well-known or routine, given the complexity and uncertainty of developing novel compounds.
The amount of direction provided and working examples:
The compound core depicted with specific substituents represents a narrow subgenus for which applicant has provided sufficient guidance to make and use; however, the disclosure is not sufficient to allow the extrapolation of the limited examples to enable the scope of the compounds instantly claimed. Applicant has provided no working examples of any compound of formula (I) in which Ar1, Ar2, n, Z, X, and R were not defined as noted above in the instant application.
Within the specification, “specific operative embodiments or examples of the invention must be set forth. Examples and description should be of sufficient scope as to justify the scope of the claims.” Markush claims must be provided with support in the disclosure for each member of the Markush group. Where the constitution and formula of a chemical compound is stated only as a probability or speculation, the disclosure is not sufficient to support claims identifying the compounds by such composition or formula. See MPEP 608.01(p).
MPEP § 2164.01(a) states, “A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).” That conclusion is clearly justified here that Applicant is not enabled for making these compounds.
The following rejections are necessitated by amendment:
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.
Claim 31 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 31 recites the limitation "A compound according to claim 1, selected from the following compounds" including:
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There is insufficient antecedent basis for this limitation in the claim, as this compound, as this compound requires Z to be defined as Z1 (which is present at Page 4 of the instant specification, but is no longer recited as an allowed variable in Z in instant Claim 1, from which Claim 31 depends.”
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.
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, 3, 9, 18-19, and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Danz et. al. (EP 3 670 507 A1; cited on Applicant’s Information Disclosure Statement filed May 2nd, 2023; cited in non-final office action mailed November 25th, 2025; hereinafter referred to as Danz) in view of Chih Tong et. al. (“Enhancement of OLED Efficiencies and High-Voltage Stabilities of Light-Emitting Materials by Deuteration”, J. Phys. Chem. C, 2007, 111, 3490-3494; hereinafter referred to as Chih Tong).
At page 36, first column, Lines 20-35, Danz teaches the following compound:
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For clarity, at Page 38, Danz teaches the moiety:
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This compound reads on a compound of formula (I) as recited at Claim 1 when the variables are defined as follows:
Ar2 is triazine.
m is 2.
n is 1.
Each Ar1 is
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, wherein each Z is Z2, wherein each RD1-RD8 is defined as hydrogen, each A is substituted aryl, wherein aryl is phenyl, and it is substituted with cyano, as decribed at page 38, Lines 26-29 of the instant specification.
At the abstract, Danz teaches the compounds of the invention are light emitting organic molecules, so the prior art is analogous to the instant invention.
This compound differs from a compound of formula (I) as instantly claimed in that when Z is Z2, RD3 and RD6 can not be hydrogen. They can, however, be deuterium.
At Page 3493, under Conclusion, Chih Tong teaches “Our results demonstrate that deuteration is a general method, which can potentially be applied to other light emitting materials to improve their EL efficiency and lower the turn-on voltage as well as power consumption.” Therefore, applying KSR exemplary rationale C, a person having ordinary skill in the art would have been motivated to substitute the hydrogen at positions RD3 and RD6 of the compound taught by Danz, motivated by the teaching in the prior art that deuteration is a general method that can be applied to light emitting devices to achieve the benefit of lower turn-on voltage and power consumption.
Taken together, this results in the practice of Claims 1, 3, 9, 18-19, and 21-25 with reasonable expectation of success.
Conclusion
Claims 1-3, 8-16, and 18-31 are rejected.
No claim is allowed.
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 DANIEL JOHN BURKETT whose telephone number is (703)756-5390. The examiner can normally be reached Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.J.B./ Examiner, Art Unit 1624
/JEFFREY H MURRAY/ Supervisory Patent Examiner, Art Unit 1624