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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-8, and the species identified in the reply filed on 4/22/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
However, given that applicants’ election of species reads on the compound 1 of claim 9, this claim is being rejoined. Applicants’ election means that compound 1 is being considered a dendritic structure.
Claims 10-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/22/2026.
Specification
The disclosure is objected to because of the following informalities:
The formula (I) on pages 7, 8 and 19 is objected to as the bond between Z2 and Z3 is not clearly shown.
The formula (I) on pages 7, 8 and 19 is objected to as the options for ‘G1’, ‘G2’ and ‘G3’ have not been identified.
On pages 8, 9, 13, 20 and 27, the limitations for ‘n’ are objected to as ‘n’ is not in formula (I) or the synthetic pathways shown.
Appropriate correction is required.
Claim Objections
Claim 1 objected to because of the following informalities:
In claim 1 on line 18, there is a period in the middle of the claim. This objection can be overcome by removing this period.
In claim 1 on line 20, the phrase “alkenyl substituted alkenyl” is objected to grammatically. The objection can be overcome by changing the phrase to “alkenyl, substituted alkenyl” which is how the claim will be interpreted.
In claim 1 on the last line of the claim, the terms “TADF and TSDP” are objected to as this is the first time these terms have been used, and therefore the full name should be used before using an acronym.
Appropriate correction is required.
Applicant is advised that should claims 5 and 6 be found allowable, claims 7 and 8, respectively, will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
Claims 1-8 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for dendritic compounds having alkyl, alkenyl, alkynyl, aryl, heteroaryl or amine connections as ‘C’, no substituent ‘R’ when ‘Z’ is a nitrogen, and ‘R’ being a neutral group when present, does not reasonably provide enablement for dendritic compounds having any sigma donating group, such as OR, SR, C(O)R, C(O)OR, C(O)NR2, CN, CF3, NO2, SO2, SO3R and halo, a substituent on the nitrogens of any of the ‘Z’ or ‘R’ groups being monoanionic or cationic as claimed. 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.
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 all compounds within the scope of claims 1-8 can be used as claimed and whether claims 1-8 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 1-8, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 1-8 read on any sigma donating group, including CF3, CN, NO2, SO2 or halo as the C group, which is impossible as these cannot connect to the ‘D’ group while the specification discloses only three specific ‘C’ groups having a connection to the central core, i.e. aryl, alkynyl and carbazoyl. Also, the specification does not show how to make gold compounds with a substituent on the nitrogen of the ‘Z’ groups, which then have to be zwitterionic or a salt compound, and/or ‘R’ groups that are monoanionic or cationic.
(b) There is no direction or guidance presented for attaching any sigma donating group other than aryl, alkynyl and carbazoyl, i.e. there is no guidance for at least OR, SR, C(O)R, C(O)OR, C(O)NR2, CN, CF3, NO2, SO2, SO3R and halo, wherein CF3, CN, NO2, SO2 and halo as the C group are also impossible to use as these cannot connect to the ‘D’ group. Also, the specification does not provide guidance on how to make gold compounds with a substituent on the nitrogen of the ‘Z’ groups, which then have to be zwitterionic or a salt compound, and/or ‘R’ groups that are monoanionic or cationic.
(c) There is an absence of working examples concerning for attaching any sigma donating group except aryl, alkynyl and carbazoyl, i.e. there are no examples with OR, SR, C(O)R, C(O)OR, C(O)NR2, CN, CF3, NO2, SO2, SO3R or halo, wherein CF3, CN, NO2, SO2 and halo as the C group are also impossible to use as these cannot connect to the ‘D’ group. Also, the specification does not have any examples using gold compounds with a substituent on the nitrogen of the ‘Z’ groups, which then have to be zwitterionic or a salt compound, or ‘R’ groups that are monoanionic or cationic.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-8.
Claims 1-8 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.
In claim 1, in the structure of formula (I) the bond between Z2 and Z3 is unclear. Please note that the bond is not present in any structure in the specification, and therefore it is unclear if there is inherent support to rectify this.
In claim 1, it is unclear what the meaning of G1, G2 and G3 are in the structure. It is unclear if this is showing optional presence of the different levels of the structure. For purposes of examination, the Examiner will be interpreting these as optional except for the substituents within the G1 ring. Please note that there is no inherent support in the specification for what the G1, G2 or G3 can be within the structure.
In claim 1 on line 6, the limitations of “cyclic structure derivatives of unsubstituted or substituted phenyl groups or heterocyclic groups” renders the claim indefinite as the term “derivative” can mean that the ‘A’ and ‘B’ do not need to be phenyl or heterocyclic groups as they could be some other group made by a chemical reaction. This rejection can be overcome by deleting the word “derivatives”.
In claim 1 on lines 8 and 18, the limitations “when Z1, Z2, or Z3 is carbon, R1, R2 and R3 are independently selected” combined with “when Z1, Z2, or Z3 is nitrogen, R1, R2 and R3 are…independently selected” render the claim indefinite because the first clause would imply that if any one of Z1, Z2, or Z3 is carbon then all three of R1, R2 and R3 are selected from the first list of substituents. This makes no sense when combined with the limitations on line 18 concerning when one of Z1, Z2, or Z3 is nitrogen. The Examiner will be interpreted the claim as that when one of the Z’s is carbon, that specific carbon will have the R1, R2 and R3 are selected from the first list of substituents. Appropriate correction is required.
In claims 1 and 3, the phrase “selected from, but not limited to,” (three instances) render the claims indefinite as this is an improper Markush group as it is not a closed group. The rejection can be overcome by deleting the “, but not limited to,” which is how the claim will be interpreted.
In claim 1, the phrase “are independently selected from…or cyanide” (two instances) renders the claim indefinite as this is an improper Markush group as it is not a closed group. The rejection can be overcome by changing the phrase to “are independently selected from…and cyanide” which is how the claim will be interpreted.
In claim 1, the phrase “the dendrons” renders the claim indefinite as this term lacks antecedent basis in the claim.
In claim 1, the phrase “E is an optional surface groups or dendrons of the dendrimers” renders the claim indefinite as it is unclear if the “optional” is referring to the presence of the E groups or it means one must choose between ‘E’ being a surface group or a dendron. For purposes of examination, each ‘E’ can be optional and selected from a surface group or a dendron.
In claim 1, the phrase “F is an optional conjugated or non-conjugated linker or branching points of the dendrimers” renders the claim indefinite as it is unclear if the “optional” is referring to the presence of the F groups or it means one must choose between ‘F’ being a linker or a branching point. Additionally, it is unclear how the ‘F’ groups are branching points as that is not how they are shown in Formula (I). For purposes of examination, each ‘F’ can be optional.
In claims 2 and 4, the phrase “are independently…or heterocyclic derivatives, but are not limited to, with one or more” renders the claims indefinite as this is an improper Markush group or the claim is reciting broad/narrow limitations in the same claim. Also, the phrase “but are not limited to, with one or more” does not make any sense because it is unclear what one is doing “with one or more” of the items in the list after this phrase. For purposes of examination, the Examiner will be treating the A, B, D, E and F as being drawn to the broad group on the first three lines of each of the claims and the phrasing should be changed to a closed groups, e.g. “are each independently selected from.
In claims 2 and 4, the limitations of “phenyl and pyridyl derivatives” and “heterocyclic derivatives” render the claims indefinite as the term “derivative” can mean that the groups do not need to be phenyl, pyridyl or heterocyclic groups as they could be some other group made by a chemical reaction from these starting groups. It is unclear what the metes and bounds of this claim would be since a derivative could be an entirely different functional group. This rejection can be overcome by deleting the limitations “phenyl and pyridyl derivatives” and “heterocyclic derivatives”.
In claims 2 and 4, the term “heterocyclic” appears twice in the list of alternatives of each claim, which renders the claim indefinite. See lines 8 and 10 of claims 2 and 4. This rejection can be overcome by deleting one of the instances in each claim.
In claims 2-4, the phrase “wherein R is independently” renders the claim indefinite as if there is only one R, then the term independently does not make sense; furthermore, some of the substituents have plural R’s, which means this does not make sense for this reason as well.
In claim 3, the phrase “is selected from…or heterocyclic group” renders the claim indefinite as this is an improper Markush group as it is not a closed group. The rejection can be overcome by changing the phrase to “is selected from…and a heterocyclic group” which is how the claim will be interpreted.
In claim 3, the term “heterocyclic” appears twice in the list of alternatives of the claim, which renders the claim indefinite. See lines 7 and 9 of claim 3. This rejection can be overcome by deleting one of the instances.
In claims 6 and 8, the phrase “the passage” lacks antecedent basis in the claims. The rejection can be overcome by changing the phrase to “a passage” which is how the claims will be interpreted.
In claims 6 and 8, the phrase “strong electric field” is a term of degree that renders the claims indefinite. It is unclear what level of electric field would be considered “strong”.
Claim Rejections - 35 USC § 103
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yam et al. (WO 2019/134651) in view of Pan et al. (WO 2018/113782).
With regard to claims 1-5, 7 and 9, Yam et al. teach luminescent gold (III) compounds having TSDP [0012]-[0016]. The compound has photoluminescence of from 380 to 1050 nm [0016]. The R1 in the structure (I) can be substituted aryl or a substituted heteroaryl, wherein the substituted aryl or the substituted heteroaryl can be further substituted by a heteroaryl group [0015] and [0071]-[0075]. As an example, compound 9 of Figure 4 has a phenyl group substituted with a carbazole ring [0135]; however, they do not specifically teach the monodentate dendritic ligand claimed.
Pan et al. teach gold organic complexes compounds having a monodentate ligand and a tridentate ligand, wherein the structure of the monodentate ligan can be the following [0028]-[0032]:
PNG
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255
250
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Greyscale
The Ar1, Ar2 and Ar3 groups can be benzene and ‘o’ can be 1 [0041], [0044] and [0046]. The X can be a single bond such that the structure with the N and Ar1 and Ar2 can be carbazole [0038] and [0082]. Additionally, the carbazole can be substituted with two other carbazoles as seen in Au-5 [0096].
Since Yam et al. and Pan et al. are both drawn to gold (III) complexes with tridentate and monodentate carbazole containing ligands for phosphorescent materials, it would have been obvious to one having ordinary skill in the art to have modified the phenyl carbazole ligand of Yam et al. by further substituting it with two heteroaryl carbazole rings as taught in Pan et al. There would have been predictable results as carbazole substituted with two further carbazole rings would read on the heteroaryl substituted heteroaryl group of Yam et al. as would be understood by one having ordinary skill. Given that the compound is identical to that claimed, it will intrinsically also have TADF properties.
With regard to claims 6 and 8, given that the compound is identical to that claimed, it will intrinsically emit light in response to the passage of an electric current or to a strong electric field as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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