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 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
Claim 1 recites:
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Claims 1-20 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 the compounds listed in paragraph [0080] for L1 or L1* and L2 and L3; being enabling for the compounds listed in paragraph [0080] for L2 and L3 does not reasonably provide enablement for the full scope of claim 1.
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. Per MPEP 2164, the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation Ltd. V. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable?
The specification while being enabling while being enabling for a number of compounds does not reasonably provide enablement for the unlimited scope of a first compound, H1; a second compound, H2; and a third compound, D1 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.
(A) The breadth of the claims far exceeds the written description which is limited only a few examples in comparison to the broad generic nature ligands L1, L1*, L2 and L3.
(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.
Determining the types of compounds making up the ligands to meet the electronic relationship requirement is a very complex process which is lacking based on the limited written description.
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Triplet state determination in iridium complexes combines experimental spectroscopy (PL, TTA) with theoretical modeling (TD-DFT, orbital analysis) to identify whether the lowest excited state is MLCT, LC, or mixed, and to tune its energy and lifetime for applications in OLEDs, photocatalysis, and singlet oxygen generation: Dalton Trans., 2024, 53, 17934-17947.
Such a process would be all the more difficult without any limited chemical/structure factors that are lacking from the written description.
(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 ligands L1, L1*, L2, L3 shows a scope in the claims beyond the written description. How would one determine the class and function of suitable compounds in reasonable search queries?
(F) The amount of direction provided by the inventor in the selection of compounds suitable to practice the invention especially the determining compounds meeting the required electronic relationships is lacking.
(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 1-20 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 limited number ligands does not reasonably provide a written description for the invention encompassed by the claims.
The written description of the ligands, does not allow for a determination of the metes and bounds to conduct a comprehensive structure search as said compounds are simply defined as generic with no limiting chemical description. There is no means of determining how said iridium complex meet the required electronic relationships with each other from factors included in the written description.
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 are rejected as lacking a suitable written description.
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 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 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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/GREGORY D CLARK/Primary Examiner, Art Unit 1786
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