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 Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites the phrase “a least one of R1, R2, R3, and R14”. Applicants are advised to amend this phrase to recite “a least one of R1, R2, R3, and R14”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: Claim 1 recites the phrase “a bond (single, double or triple)”. In order to avoid potential confusion that the parenthetical subject matter is optional, Applicants are advised to amend this phrase to recite “a single bond, a double bond, a triple bound”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: Claim 11 recites the phrase “either X and Z are nitrogen, and Y is carbon”. Applicants are advised to amend this phrase to recite “either X and Z are nitrogen and Y is carbon ”. Appropriate correction is required.
Claim 29 is objected to because of the following informalities: Claim 29 recites the phrase “either X and Z are nitrogen, and Y is carbon”. Applicants are advised to amend this phrase to recite “either X and Z are nitrogen and Y is carbon ”. Appropriate correction is required.
Claim 29 is objected to because of the following informalities: Claim 29 recites the phrase “a bond (single, double or triple)”. In order to avoid potential confusion that the parenthetical subject matter is optional, Applicants are advised to amend this phrase to recite “a single bond, a double bond, a triple bound”. Appropriate correction is required.
Claim 30 is objected to because of the following informalities: the compounds on Page 14 are illegible. Applicants are advised to amend the claim reciting legible compounds on this page. Appropriate correction is required.
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.
Claims 30-31, 33, 35, and 46 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.
Claim 30 recites compounds such as:
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which render the scope of the claim indefinite for the following reasons. Claim 30 depends from claim 11, and claim 11 recites the following formula:
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where either X and Z are nitrogen and Y is carbon, or X and Z are carbon and Y is nitrogen. In the above compounds, X, Y, and Z are each carbon, and therefore, do not satisfy the requirement in claim 11 that either X and Z are nitrogen and Y is carbon, or X and Z are carbon and Y is nitrogen. Accordingly, it is unclear how one can obtain the compound recited in claim 30, and still meet the requirements that either X and Z are nitrogen and Y is carbon, or X and Z are carbon and Y is nitrogen as recited in claim 11.
Regarding claim 31, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 33, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 35, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 46, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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, 3, 5, 7, 31, 33, 35, 42-44, and 46 are rejected under 35 U.S.C. 102(a2) as being anticipated by Fleetham et al (US 2020/0203636, cited on IDS filed on 6/11/2026) as evidenced by Inoue et al (US 2004/0241493).
Regarding claim 1, Fleetham et al discloses the following compound (Page 12):
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.
This compound has a neutral charge and corresponds to Formula I of the claims:
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where:
CY1 and CY4 are substituted heteroaryl groups;
CY2 and CY3 are substituted aryl groups;
R1 and R4 are unsubstituted C1 alkyls;
R3 and R4 are unsubstituted C4 alkyls;
R1 to R4 are alkyls, and are therefore, electron donating groups, as evidenced by Paragraph [0054] of Inoue et al;
n1, n2, n3 and n4 are each one (1);
L1 and L3 are single bonds; and
L2 is oxygen.
Regarding claim 3, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. As discussed above, R1 and R4 are unsubstituted C1 alkyls; and R3 and R4 are unsubstituted C4 alkyls.
Regarding claim 5, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. As discussed above, CY1 and CY4 are substituted heteroaryl groups.
Regarding claim 7, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. As discussed above, L1 and L3 are single bonds; and L2 is oxygen
Regarding claim 31, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference discloses the claimed compound, and the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed compound. Therefore, the claimed effects and physical properties, i.e. an emission lifetime between 1.0 ms and 10 ms in film thickness between 10 nm and 50 mm would naturally arise and be achieved by the compound. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
Regarding claim 33, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference discloses the claimed compound, and the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed compound. Therefore, the claimed effects and physical properties, i.e. a radiative rate constant between 1.0 × 105 s-1 and 10.0 × 105 s-1, would naturally arise and be achieved by the compound. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
Regarding claim 35, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference discloses the claimed compound, and the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed compound. Therefore, the claimed effects and physical properties, i.e. a photoluminescence quantum yield between 10 to 80 % including at room temperature, would naturally arise and be achieved by the compound. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
Regarding claim 42, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. Additionally, the reference discloses a light emitting layer comprising the compound (Abstract).
Regarding claim 43, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. Additionally, the reference discloses an organic light emitting device comprising the light emitting layer (Abstract).
Regarding claim 44, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. Additionally, the reference discloses flat panel display comprising the organic light emitting device ([0034]).
Regarding claim 46, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference discloses the claimed device, and the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed device utilizing the recited compound. Therefore, the claimed effects and physical properties, i.e. a maximum external quantum efficiency between 10 and 40 %, would naturally arise and be achieved by a device comprising the disclosed compound. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
In light of the above, it is clear that Fleetham et al as evidenced by Inoue et al anticipates the presently recited claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived 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(a) 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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claim 8 is rejected under 35 U.S.C. 103(a) as being unpatentable over Fleetham et al (US 2020/0203636, cited on IDS filed on 6/11/2026) as evidenced by Inoue et al (US 2004/0241493).
The discussion with respect to Fleetham et al as evidenced by Inoue et al as set forth in Paragraph 17 above is incorporated here by reference.
Regarding claim 8, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. In the compound discussed above, R2 is not an amino group as required by the present claims. However, the compound disclosed by the reference is but one embodiment, and attention is directed to the following formula:
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where RB can be a substituent such as an amino group, i.e. -NH2, corresponds to NRaRb, where Ra and Rb are hydrogen ([0081] and [0057]).
While the reference fails to exemplify the presently claimed compound nor can the claimed compound be "clearly envisaged" from the reference as required to meet the standard of anticipation, nevertheless, in light of the overlap between the claimed compound and the compound disclosed by the reference, absent a showing of criticality for the presently claimed compound, it is urged that it would have been within the skill level of one of ordinary skill in the art, to use the compound which is both disclosed by the reference and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Claims 1, 11-12, 17, 20-21, 24-25, 27, 29, 31, 33, 42-44, and 46 are rejected under 35 U.S.C. 103(a) as being unpatentable over Fleetham et al (US 2020/0203636, cited on IDS filed on 6/11/2026) as evidenced by Inoue et al (US 2004/0241493).
Regarding claim 1, Fleetham et al discloses a compound with the following formulas ([0086]):
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and
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where:
M is Pd ([0018]);
Z1-Z3, Z5, Z8, Z10, Z11 and Z12 are C or N ([0018]);
Z13 to Z24 are C or N ([0086]);
L2 is O or S ([0086]); and
RA, RB, RC, and RD are hydrogen or a substituent such as alkyl or amino group ([0080], [0057]).
Accordingly, the reference discloses a compound corresponding to Formula I:
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where:
CY1 and CY3 are heteroaryl groups;
CY2 and CY4 are aryl groups;
R1, R2, R3 and R4 are hydrogen and one of R1 to R4 is an alkyl, as evidenced by Paragraph [0054] of Inoue et al or an amino group, is. NH2; and
L1 and L3 are single bonds; and
L2 is O or S.
While the reference fails to exemplify the presently claimed compound nor can the claimed compound be "clearly envisaged" from the reference as required to meet the standard of anticipation, nevertheless, in light of the overlap between the claimed compound and the compound disclosed by the reference, absent a showing of criticality for the presently claimed compound, it is urged that it would have been within the skill level of one of ordinary skill in the art, to use the compound which is both disclosed by the reference and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 11, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. Additionally, in the compound discussed above:
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Z21 and Z19 can be carbon; and 20 can be nitrogen ([0086]).
This compound corresponds to Formula II’ of the claims:
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where X and Z are carbon and Y is nitrogen; R5 to R18 are hydrogen; and one of R5 to R18 is an alkyl or amino group.
Regarding claim 12, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. As discussed above, L2 is oxygen.
Regarding claim 17, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. From the discussion above, R10 can have the structure -NH2, corresponding to NRaRb, where Ra and Rb are hydrogen.
Regarding claim 20, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. Additionally, the reference discloses that the amino groups can be a combination of an amino group and an aryl group such as phenyl ([0057] and [0053]). Accordingly, the reference discloses that R10 has the recited structure:
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.
Regarding claim 21, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. From the discussion above, R7 can be hydrogen.
Regarding claim 24, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. Additionally, the reference discloses that the substituents can be a combination of an aryl and an alkyl, i.e. a combination of phenyl, and alkyl such as methyl ([0046]). Accordingly, the reference discloses R7 as:
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.
Regarding claim 25, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. From the discussion above, R12 to R14 can be hydrogen.
Regarding claim 27, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. From the discussion above, R16 is hydrogen.
Regarding claim 29, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. From the discussion above, the reference discloses Formula II’ of the claims:
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where:
X and Z are carbon and Y is nitrogen,
A is carbon;
W is nitrogen;
R5 to R9 and R11 to R14 and R19 to R21 are hydrogen;
Ra and Rb are hydrogen;
L1 and L3 are single bonds; and
L2 is oxygen;
Regarding claim 31, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference discloses the claimed compound, and the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed compound. Therefore, the claimed effects and physical properties, i.e. an emission lifetime between 1.0 ms and 10 ms in film thickness between 10 nm and 50 mm would naturally arise and be achieved by the compound. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
Regarding claim 33, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference discloses the claimed compound, and the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed compound. Therefore, the claimed effects and physical properties, i.e. a radiative rate constant between 1.0 × 105 s-1 and 10.0 × 105 s-1, would naturally arise and be achieved by the compound. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
Regarding claim 42, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. Additionally, the reference discloses a light emitting layer comprising the compound (Abstract).
Regarding claim 43, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. Additionally, the reference discloses an organic light emitting device comprising the light emitting layer (Abstract).
Regarding claim 44, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. Additionally, the reference discloses flat panel display comprising the organic light emitting device ([0034]).
Regarding claim 46, Fleetham et al as evidenced by Inoue et al teaches all the claim limitations as set forth above. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference discloses the claimed device, and the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed device utilizing the recited compound. Therefore, the claimed effects and physical properties, i.e. a maximum external quantum efficiency between 10 and 40 %, would naturally arise and be achieved by a device comprising the disclosed compound. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed compound.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER C. KOLLIAS whose telephone number is (571)-270-3869. The examiner can normally be reached on Monday-Friday, 8:00AM – 5:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached on (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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/ALEXANDER C KOLLIAS/ Primary Examiner, Art Unit 1786
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