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.
Response to Election/Restrictions
Applicant’s election with traverse of Group I and species having the structure as shown below in the reply filed on 12/05/2025, is acknowledged:
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Applicants’ arguments filed on 12/05/2025 are found persuasive, the restrictions are withdrawn.
Claims 6 and 14 are withdrawn from consideration as non-elected species.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-5, 7-13 and 15-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1- 6 of US 12, 103, 942 B2, and further in view of Xia et al. (US 2011/0057559 A1).
Although the conflicting claims are not identical, they are not patentably distinct from each other. US ‘942 teaches a compound having La ligand of Formula II-IV which reads on the instant claimed compound of Formula I and A formulation comprising the compound.
Although US ‘942 does not specifically claim OLED comprising the La ligand of Formula II-IV as per applicant claims 15-19, Xia et al. teach an organic emissive layer (OLED) comprising a host compound H1 as shown below ([0027], [0108]):
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It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the host compound H1 taught by Xia et al. in the OLED taught by Koo et al. obtain the invention as specified in the claim 20, motivated by the fact that it improvs the stability color, lifetime and manufacturing (Abstract).
Improper Markush Grouping Rejection
Claims 1-5, 7-13 and 15-20 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 712-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature. The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons:
The instant claimed compound having the formula (I) with many independently varying elements such as RA, RB, Z1, Z2, ring A, ring B and Metal.
The recited Markush group so disparate chemically as not to be members of a recognized chemical class of compounds, but, in fact represent a of class of metal complexes containing RA, RB, Z1, Z2, ring A, ring B. There is no any single structural similarity. The ligand containing RA, RB, Z1, Z2, ring A, ring B behaves in the different manner for use as complexing with a metal.
In response to this rejection, applicants should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claim(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature.
This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. 134 and 37 CFR 41.31(a)(1).
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 through 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).
Claims 1-5, 7-13 and 15-19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Koo et al. (US 2018/0051003 A1).
Regarding claim 1, Koo et al. teach organic material comprising iridium compound and the compound of Chemical Formula 4 ([0140], [0170] and claims 1-17):
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As we see above, the compound taught by Koo et al. corresponds to the instant claimed Formula I, alternative wherein M=Ir, RA=H, Z1=CF2, Z2 as being a bond, RB as being 2-pyridyl group wherein X5-6=CH, X4=N, Z3-4=H (claim 6).
Regarding claims 2-5 and 11, as discussed above, the compound taught by Koo et al. corresponds to the instant claimed Formula V, wherein RA=H, X2-4=CH, RC as being 6-membered aromatic ring, Z2 as being a bond.
Regarding claims 7 and 12, as discussed above, the organic material taught by Koo et al. contains iridium compound (claim 15, [0140] and [0172]).
Regarding claims 10-11 and 13, as discussed above, the organic material taught by Koo et al. contains iridium compound and the compound of Chemical Formula 4 which corresponds to the instant claimed La, x=1, y=z=0 (without Lb and Lc) as the instant claims.
Regarding claims 15 -18, Koo et al. teach an organic light (OLED) , a consumer product and a formulation comprising an anode, a cathode, an organic material layer and the compound as discussed above ([0003], FIG1 and 2,[0161]-[0168]).
Regarding claim 19, Koo et al teach a host compound such as triphenylene ([0167] and [0226]-[0227]).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Koo et al. as applied to claim 1 above, and further in view of Xia et al. (US 2011/0057559 A1).
Regarding claim 20, although Koo et al. does not specifically a host compound as per applicant claim 20, Xia et al. teach an organic emissive layer comprising a host compound H1 as shown below ([0027], [0108]):
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It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the host compound H1 taught by Xia et al. in the OLED taught by Koo et al. obtain the invention as specified in the claim 20, motivated by the fact that it improvs the stability color, lifetime and manufacturing (Abstract).
Since both of teach compounds used in OLED, one would have a reasonable expectation of success.
Allowable Subject Matter
Claim 1 including only the elected species would be allowable if rewritten to overcome the rejections as discussed above.
The Examiner searched the elected species as discussed above. There was no prior art discovered on the particular elected species. Therefore, the search of the species has been extended to the non-elected compound of the Formula (I) as discussed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/Primary Examiner, Art Unit 1738