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 .
According to paper filed on Aug. 28, 2026, the applicants have elected specific iridium compound as a species for further prosecution.
Claims 1-20 are pending in the application. Claims 4 and 12 are withdrawn from further consideration as being directed to non-elected species.
The elected species is allowable over the prior art. Therefore, search has now been extended to additional species.
Claim Rejections - 35 USC § 112
5. 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.
6. 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.
7. Claims 1-3, 5-11 and 13-20 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no written description for preparing instant compounds of formula (I) where metal represents all the metals listed in independent claims 1 and 15 as well as the metal is coordinated to every known ligand in the art. The only written description is for preparing and using instant compounds of formula (I) is where metal represents Iridium and the metal is coordinated to phenyl-isoquinoline ligand as shown on pages 75-77 of the specification.
8. 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.
9. 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.
10. Claims 1-3, 5-11 and 13-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In independent claims 1 and 15, metal Cu is listed twice.
In independent claims 1 and 15, variables RA, RB and RC are defined. However, claim also recites that two of RA, RB, and RC are NRR’, OR, SR or CO2R. The claim also recites that two substituents can be joined to form a fused ring. Therefore, it is not clear whether two RA, RB, and RC must represent NRR’, OR, SR or CO2R or not. If two substituents are joined to form a fused ring, then two RA, RB, and RC can not represent NRR’, OR, SR or CO2R.
Claim Rejections - 35 USC § 102
(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.
11. Claims 1, 3, 6-8 and 15-20 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Inoue (U.S. Patent 8,889,858, cited on applicant’s form 1449).
Inoue discloses Iridium complexes and electronic devices using these complexes. The iridium complexes 100, 101, 103-105, 109 and 114 (see columns 11-14) disclosed by Inoue anticipate the instant claims when variables RA and RB represent alkyl and variable RC represents H in the instant compounds of formula (I) or variables RA and RC together form ring and variable RB represents H in the instant compounds of formula (I).
IMPROPER MARKUSH GROUP
12. Claims 1-3, 5-11 and 13-20 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of claims 1-3, 5-11 and 13-20 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
There is no common core present in compounds of formula (I). In compounds of formula (I), values of variables RA, RB, RC, type of metal and its coordination with other specific ligands is critical for the common core of these compounds.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARANJIT AULAKH whose telephone number is (571)272-0678. The examiner can normally be reached Monday-Friday 7:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621
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