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 .
DETAILED ACTION
STATUS OF THE CLAIMS: Claims 1-20 are pending in this application.
Election/Restrictions
Applicants’ election of species in the reply filed on February 22, 2026, is acknowledged. All claims were examined.
Claim Objections
Claim 20 is objected to because of the following informalities: the claims does not end with a period (“.”). Appropriate correction is required.
Claim Rejections - 35 USC § 112, first paragraph
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 (including claims dependent thereon and claims that relate back to or refer to independent claim 1) are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for some of the R groups listed within the specification of the current application, does not reasonably provide enablement for all of the PTM groups listed within the application. 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 the invention commensurate in scope with these claims.
The test of enablement is whether one skilled in the art could make and use the claimed invention from the disclosures in the application coupled with information known in the art without undue experimentation. (United States v. Teletronics Inc., 8 USPQ2d 1217 (Fed. Cir. 1988)). Whether undue experimentation is needed is not based on a single factor, but rather a conclusion reached by weighing many factors (See Ex parte Forman 230 USPX 546 (BD. Pat. App. & Inter. 1986) and In re Wands, 8 USPQ2d 1400 (Fed. Cir. 1988).
1. Amount of guidance provided by Applicant.
While the Applicant has demonstrated within the application a select number of the organometallic compounds, the generic claims according to formula I are massive, and only a small fraction of these compounds are disclosed, discussed, and their synthesis shown. In the claims and specification, applicants claim various variables for CY, L and R variables, which includes for C6-C60carbocyclic groups, C1-C60 heterocyclic groups as well as various “R” groups that are aryl, heteroaryl, and heterocyclo, carbocyclic, D, H, halogens, hydroxyl, cyano, nitro and etc. groups. However, the specification fails to teach all of these compounds, nor does the specification define the ring size, heteroatom, number and nature of substituents, and the exact point of contact with the atom(s) for the substituents.
2. Unpredictability in the art.
It is well established that “the scope of enablement varies inversely with the degree of unpredictability of the factors involved”, and physiological activity is generally considered to be an unpredictable factor. (USPQ 18, 24 (CCPA 1970). See In re Fisher, 427 F.2d 833, 839, 166.
3. Number of working examples.
Applicants have provided working examples of the compounds (i.e., where CY, L and R variables are defined); however, these examples only read on a minute portion of the massive claims according to general formula I in the present application.
4. Scope of the claims.
The scope, of the claims, involves a plethora of compounds of general formula I:
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412
542
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wherein all the variables are defined in the claim. For example, in defining CY, L and R variables:
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212
782
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642
786
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Thus, the scope of the claims is very broad.
5. Nature of the invention.
The nature of this invention relates generally organometallic compounds used in light-emitting devices and electronic apparatus.
6. Level of skill in the art.
The artisan using Applicant’s invention would be a chemist with a Ph.D. degree and having several years of bench experience.
MPEP § 2164.01 (1) 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).” Thus, this conclusion is clearly justified here. Therefore, Applicant is not enabled for all of these compounds or compositions.
Conclusion
Claims 1-20 are pending. Claims 1-20 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL V WARD whose telephone number is (571)272-2909. The examiner can normally be reached M-F 9am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Alstrum-Acevedo can be reached at 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL V WARD/Primary Examiner, Art Unit 1622
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