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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
This action is in reply to the communication filed on October 11, 2023.
Claims 1 – 20 are currently pending and have been examined.
Information Disclosure Statement
The references provided in the Information Disclosure Statements filed on October 11, 2023, February 5, 2024, March 5, 2024, April 19, 2024, June 12, 2025, and August 25, 2025 have been considered. Signed copies of the corresponding 1449 forms have been included with this office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of U.S. Patent No. 12,435,102B. Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula I in claim 1 of the instant application overlap in scope with compounds of Formula I in claim 1 of the ‘102 Patent as evidenced by compounds in claim 16 of the ‘102 patent.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of copending Application No. 18/440,512 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula I in claim 1 of the instant application overlap in scope with compounds of Formula B in claim 1of the copending ‘512 application as evidenced by compounds in claim 16 on pages 49 – 50 of the ‘512 application as filed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of copending Application No. 18/524104 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula I in claim 1 of the instant application overlap in scope with compounds of Formula I in claim 1of the copending ‘104 application as evidenced by compounds in claim 16 on page 233 of the ‘104 application as filed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5 – 8, 20 – 22, 39, 40, 45 – 50, 53, 57 and 82 of copending Application No. 17/722531 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula I in claim 1 of the instant application overlap in scope with compounds of Formula I, Formula IIa and Formula IIb in claim 1 of the copending ‘531 application as evidenced by compounds in claim 49 on page 91 of the ‘531 application as filed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 18, 20, and 21 of copending Application No. 17/586159 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula I in claim 1 of the instant application overlap in scope with compounds of Formula I in claim 1 of the copending ‘159 application as evidenced by compounds in claim 16 on page 12 of the ‘159 application as filed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Case law holds that applicant' s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant' s invention. The test for undue experimentation as to whether or not [Claimed Feature] within the scope of the claims can be used [meet the claim requirements] as claimed and whether the claims meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1 – 20, it is believed that undue experimentation would be required because:
(A) Breadth of the claims: (B) Nature of the invention:(C) State of the prior art: (D) The level of one of ordinary skill: (E) The level of predictability in the art:(F) Amount of direction provided: (G) The existence of working examples: (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:.
Independent claims 1, 17 and 20 require a structure of Formula II
PNG
media_image1.png
108
102
media_image1.png
Greyscale
and defines Q1, Q2, and Q3 as being selected from CRQ and CRQRQ’. However, it is unclear how Q2 or Q1 when n is greater than 1 could be CRQ as all the bonds drawn between the atoms are single bonds, because the corresponding carbon atoms would only have three bonds (two single bonds and a RQ bond), which is not a commonly known bonding pattern of carbon (Wands Factors C and E). Applicant has further not provided any examples of compounds wherein Q2 is CRQ (Wands Factors F and G). Furthermore, as Q1, Q2 and Q3 are CRQRQ’, it is not clear how RF can exist as that would result in a carbon atom having five bonds, which is not a commonly known bonding pattern of carbon (Wands Factors C and E). Applicant has further not provided any examples of compounds wherein the saturated carbon atoms are provided with an additional substituent such that the carbon atom has five bonds (Wands Factors F and G).
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1 – 20.
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 pre-AIA the applicant regards as the invention.
Independent claims 1, 17, and 20 require a compound having a formula M(LA)(LB) having the structure of Formula I
PNG
media_image2.png
220
300
media_image2.png
Greyscale
, wherein “ligand LA comprises moiety A-L3-moiety B-L1 and ligand LB comprises moiety D-L2-moiety C.” However, it is not clear if K1 is part of either ligand or where K1 falls within the formula M(LA)(LB).
For examination purposes, K1 is interpreted as being part of ligand LB
Claims 2 – 16, 18, and 19 are rejected as being dependent on claims 1, 17, and 20.
Claim 13 defines ligands of LA including ligand LA1. However, as defined, ligand LA1 requires a variable Rm, which is not shown in the corresponding ligand. Therefore, it is unclear what variable, if any, Rm is intended to represent.
For examination purposes, the variable is interpreted as being represented by hydrogen, i.e. R1.
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 3 and 16 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.
Independent claim 1 requires a group of Formula II
PNG
media_image1.png
108
102
media_image1.png
Greyscale
, wherein the atoms Q1, Q2 and Q3 are connected via single bonds. However, claim 3 defines Formula II has having a structure selected from the group including
PNG
media_image3.png
126
120
media_image3.png
Greyscale
PNG
media_image4.png
196
136
media_image4.png
Greyscale
. These groups both show a double bond between the Q3 and Q2 atoms of Formula II. Therefore, the groups appear to be outside the scope of Formula II as defined in claim 1 and claim 3 fails to include all the limitations of the claim upon which it depends. Similarly, claim 16, which is dependent on claim 1, recites compounds such as at least
PNG
media_image5.png
238
306
media_image5.png
Greyscale
PNG
media_image6.png
294
240
media_image6.png
Greyscale
PNG
media_image7.png
328
222
media_image7.png
Greyscale
. These compounds all include a double bond in a position between the Q atoms in Formula II, which appears to be outside the scope of Formula II as defined in claim 1 and therefore claim 16 fails to include all the limitations of the claim upon which it depends.
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 – 8, 13, 17, and 18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ahn (US20230117263A1).
As per claims 1 – 8, 13, 14, 17 and 18, Ahn teaches:
A compound having a formula M(LA)(LB) having the structure of Formula I
PNG
media_image8.png
234
284
media_image8.png
Greyscale
(Ahn teaches compound 1
PNG
media_image9.png
148
242
media_image9.png
Greyscale
. This compound reads on the claimed Formula wherein moiety A is polycyclic fused ring system, moieties B, C, and D are a monocyclic ring system, namely two benzene rings and one pyridine ring as required by claim 7; Z3 is N and the other two Z groups are C; L3 is a direct bond; L1 is O and L2 is NR; K1 is a direct bond; M is Pt; X1 – X6 are all C; a structure of Formula II is directly fused to moiety C wherein each of Q1 – Q3 are all CRQRQ’ and n is an integer of 1; RA, RB, RC, and RF represent no substitutions and RD represents one substitution, that is an alkyl group; RE is an alkyl group, R is an aryl group. The group represented by Formula II is selected from
PNG
media_image10.png
146
104
media_image10.png
Greyscale
as in claim 3, wherein all the Q atoms are alky groups. Ligand LA is selected from LA1-(R3)(R1)(R1)(R1).)
An organic light emitting device comprising an anode, a cathode, and an organic layer disposed between the anode and the cathode, wherein the organic layer comprises the compound (In Example 1, as described in [0335 – 0339], an OLED was manufactured with compound 1 in the emission layer between an anode and a cathode.)
Wherein the organic layer further comprises a host, wherein the host comprises at least one chemical moiety selected from the group of… carbazole…(In Example 1, compound HTH29 was used a host material
PNG
media_image11.png
186
314
media_image11.png
Greyscale
. This compound contains a carbazole group as required by the claim.)
Claims 1 – 7, 12, 17, and 18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Eum (WO2024080842A1, using the provided machine translation).
As per claims 1 – 7, 12, and 17 – 19, Eum teaches:
A compound having a formula M(LA)(LB) having the structure of Formula I
PNG
media_image8.png
234
284
media_image8.png
Greyscale
(Eum teaches compounds 129
PNG
media_image12.png
132
136
media_image12.png
Greyscale
. This compound reads on the claimed limitations wherein moiety A is polycyclic fused ring system, moieties B, C, and D are a monocyclic ring system, namely two benzene rings and one pyridine ring as required by claim 7; Z3 is N and the other two Z groups are C; L3 is a direct bond; L1 is O and L2 is NR; K1 is a direct bond; M is Pt; X1 – X6 are all C; a structure of Formula II is directly fused to moiety A wherein each of Q1 – Q3 are all CRQRQ’ and n is an integer of 2; RA, RB, RC, RD and RF represent no substitutions; RE is an alkyl group, R is an aryl group. The group represented by Formula II is selected from
PNG
media_image13.png
134
146
media_image13.png
Greyscale
as in claim 3, wherein all the RQ3 to RQ6 are hydrogen and the remaining Q atoms are alky groups. Ligand LB is selected from
PNG
media_image14.png
206
174
media_image14.png
Greyscale
in claim 12.)
An organic light emitting device comprising an anode, a cathode, and an organic layer disposed between the anode and the cathode, wherein the organic layer comprises the compound (In Example 7, a device was formulated as described in [0259 – 0263], with a structure of a substrate, anode, cathode and an emission layer between wherein the emission layer contains Compound 129.)
Wherein the organic layer further comprises a host, wherein the host comprises at least one chemical moiety selected from the group of… carbazole…(In Example 7, the emission layer was formed with HOST A
PNG
media_image15.png
176
162
media_image15.png
Greyscale
, which contains a carbazole group as claimed. This compound is the same as compound
PNG
media_image16.png
148
144
media_image16.png
Greyscale
in claim 19.)
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Ahn (US20230117263A1) as applied to claims 1 – 8, 13, 17 and 18 above.
As per claim 20, Ahn teaches:
A consumer product comprising the organic light-emitting device (Ahn teaches display apparatuses containing the OLEDs in Fig. 1 as described in [0080].)
Ahn teaches that OLEDs are predictably suitable for use in display devices, which is interpreted as a consumer product as claimed. It would have been obvious to use the OLED of Ahn in a consumer device such as a display as Ahn demonstrates this device structure was known prior to the effective filing date of the claimed invention.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Eum (WO2024080842A1, using the provided machine translation) as applied to claims 1 – 7, 12, 17, and 18 above.
As per claim 20, Eum teaches:
A consumer product comprising the organic light-emitting device ([0009]: “Another objective of the present invention is to provide an organometallic compound suitable for electroluminescence in the visible region of the electromagnetic spectrum, particularly in the blue region, which enables the manufacture of full-color displays and white light organic electroluminescent devices.”)
Eum teaches that OLEDs are predictably suitable for use in display devices, which is interpreted as a consumer product as claimed. It would have been obvious to use the OLED of Eum in a consumer device such as a display as Eum demonstrates this device structure was known prior to the effective filing date of the claimed invention.
Conclusion
All claims are rejected.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US20220106342A1 has a common assignee with the instant application but could be used in a rejection against the claims as currently presented. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA N CHANDHOK whose telephone number is (571)272-5780. The examiner can normally be reached on Monday through Friday from 6:30 - 3:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNA N CHANDHOK/Primary Examiner, Art Unit 1789
Prosecution Insights