Philipp Stoessel et al.

Patent Trials and Appeals Board

Apr 24, 2020

12781981 - (D) (P.T.A.B. Apr. 24, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/781,981 05/18/2010 Philipp Stoessel 147428.00100 3792
11951 7590 04/24/2020
Pepper Hamilton LLP (Rochester)
70 Linden Oaks
Suite 210
Rochester, NY 14625
EXAMINER
KOSACK, JOSEPH R
ART UNIT PAPER NUMBER
1626
NOTIFICATION DATE DELIVERY MODE
04/24/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
BadumK@pepperlaw.com
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPP STOESSEL and HUBERT SPREITZER
Appeal 2018-009107
Application 12/781,981
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 66 and 67.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Merck Patent
GmbH. Appeal Br. 3.
2 An oral hearing was held on January 22, 2020.
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Application 12/781,981

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BACKGROUND
The Specification states that “[t]he literature has to date described two
basic designs of [organic light-emitting diodes (OLEDs)] which have
fluorescence or phosphorescence emitters as coloring components.” Spec.
2:25–27. The Specification states that the weaknesses of these OLEDs
include a short “operative lifetime” and greatly decreasing efficiency with
increasing brightness. Id. at 4:5–20.
The Specification further states that “(pseudo) octahedral metal
complexes” have been used for some time as components of OLEDs but that
the known metal complexes have weaknesses including (1) hydrolysis
sensitivity or high hygroscopicity, resulting in the need for costly and
inconvenient purification step; (2) low thermal stability, which may reduce
the operative lifetime of the OLEDs; and (3) only a slight thermodynamic
preference for one of two isomers such that “the properties of an OLED can
. . . deviate distinctly from one another even in the event of small changes in
the preparation process.” Spec. 4:25–6:19.
According to the Specification, “[t]here is therefore a need for
alternative compounds which do not have the abovementioned weaknesses
but are in no way inferior in efficiency and emission color to the known
metal complexes.” Spec. 6:21–24. Further according to the Specification,
“[i]t has now been found that, surprisingly, metal complexes of polypodal
ligands display outstanding properties when used as [components of an
OLED].” Id. at 6:26–32.
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CLAIMED SUBJECT MATTER
The claims are directed to a compound of a recited structure and an
organic light-emitting diode comprising the compound. Claim 66 is
illustrative:
66. An organic light-emitting diode (OLED)
comprising at least one compound which comprises the structure 1,

containing at least one metal Met coordinated to a
polypodal ligand Lig of the structure 2,

where V is a bridging unit containing from 1 to 40 atoms
and the three part-ligands L1, L2 and L3 which may be the same or
different at each instance are covalently bonded to one another, and
where the three part-ligands L1, L2 and L3 satisfy the structure 3

wherein Cy1 and Cy2 are the same or different at each
instance and correspond to substituted or unsubstituted, saturated,
unsaturated or aromatic homo- or heterocycles, which are each
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bonded ionically, covalently or coordinatively to the metal via a ring
atom or via an atom bonded exocyclically to the homo- or
heterocycle.
Appeal Br. 35–36 (Claims App.). Claim 67 claims the compound recited in
claim 66.
REJECTION(S)
A. Claims 66 and 67 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. Ans. 3.
B. Claims 66 and 67 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as lacking enablement for the full
scope of the claims. Ans. 7.

OPINION
A. Lack of written description (claims 66 and 67)
1. Issue
The Examiner finds that, “while the disclosure . . . describe[s] the
genus in very general terms, the disclosure comes nowhere close to showing
a representative number of species to establish possession of the claimed
genus.” Final Act. 2. In particular, the Examiner finds that “[t]he
compounds disclosed as Examples 1–102 all contain structures where each
of L1, L2, and L3 are bonded to the same atom” and that “the working
examples are all drawn to compounds where Cy1 is always pyridine and
Cy2 is always phenyl coordinated through an oxygen atom to the metal
center.” Id. at 3. The Examiner also finds that “[t]here is no evidence
provided in the disclosure as to how the function of the genus will change or
be conserved as [bridging group] V is expanded in size to encompass the
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scope of any atomic grouping of 1 to 40 atoms.” Id. The Examiner further
finds that, although Met can be any metal in the claims, a skilled artisan
would envisage as useful “metals that allow for octahedral coordination as
the exemplified compounds require six coordination sites,” which “would
easily exclude alkali and alkali earth metals which are not capable of
forming octahedral structures except as dimers, trimers, etc.” Id.
Appellant contends that the written description requirement for the
claims is satisfied because the Specification discloses “two common features
present that belong to the members of the claimed genus,” namely that “L1,
L2, and L3 serve as bidentate ligands to Met” and that “V is a bridging group
that connects the individual L1, L2, and L3 so that together they form a
polypodal ligand.” Appeal Br. 21. Appellant contends that, “[i]n any event,
. . . the ‘representative number of species’ standard for meeting the written
description requirement . . . has also been met.” Id. at 21–23.
Appellant does not separately argue the claims. Thus, we focus our
analysis on claim 66 as representative.
2. Findings of Fact
1. Claim 66 recites an organic light-emitting diode (OLED)
comprising “at least one metal Met coordinated to a polypodal ligand
Lig,” where Lig contains a bridging unit V containing from 1 to 40
atoms and three part-ligands L1, L2, and L3 covalently bonded to one
another, wherein Lig has the following structure:

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Appeal Br. 35 (Claims App.). The chemical formula excerpted above is
“structure 2,” or the polypodal ligand Lig, of claim 66. Id.
2. The Specification states that “[t]he bridging unit V has
from 1 to 80 atoms from main group III, IV, and/or V of the elements
of the periodic table. These form the basic skeleton of the bridging
unit.” Spec. 9:20–23.
3. The Specification states that “[p]reference is given to
inventive compounds . . . characterized in that the linking unit V
contains, as the linking atom, an element of main group 3, 4 or 5, or a
3- to 6-membered homo- or heterocycle.” Spec. 11:8–11.
4. The Specification states that “[p]reference is given to
inventive compounds . . . characterized in that the polypodal ligand
Lig” of the structures 4 and 5, as reproduced below, generates,
respectively facial and meridional coordination geometry on the metal
Met:

Spec. 11:13–12:3. Structures 4 and 5, reproduced above, depict structures
wherein the polypodal ligands Lig of structures 4 and 5 generate,
respectively, facial and meridional coordination geometry on the metal Met.
Id.
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5. The Specification states that
[p]reference is given in particular to metal complexes according
to the compounds (1) to (8) with facial coordination geometry
on the metal according to Scheme 1
. . .
where . . . :
Z[3] is B, BR, B(CR2)3, B(CR2CR2)3, CR, COH, COR1, CF,
CCl, CBr, C-I, CNR12, RC(CR2)3, RC(CR2CR2)3,
RC(SiR2)3, RC(SiR2CR2)3, RC(CR2SiR2)3,
RC(SiR2SiR2)3, cis, cis-1,3,5-cyclohexyl, 1,3,5-
(CR2)3C6H3, SiR, SiOH, SiOR1, RSi(CR2)3,
RSi(CR2CR2)3, RSi(SiR2)3, RSi(SiR2CR2)3,
RSi(CR2SiR2)3, RSi(SiR2SiR2)3, N, N(CR2)3, N(C=O)3,
N(CR2CR2)3, NO, P, As, Sb, Bi, PO, AsO, SbO, BiO,
PSe, AsSe, SbSe, BiSe, PTe, AsTe, SbTe, BiTe;
R is the same or different at each instance and is H, F, Cl,
Br, I, NO2, CN, a straight-chain or branched or cyclic
alkyl or alkoxy group having from 1 to 20 carbon atoms,
in which one or more nonadjacent CH2 groups may be
replaced by -R1C=CR1-, -C≡C-, Si(R1)2, Ge(R1)2,
Sn(R1)2, C=O, C=S, C=Se, C=NR1, -O-, -S-, -NR1- or –
CONR1-, and in which one or more hydrogen atoms may
be replaced by F, or an aryl or heteroaryl group which
has from 1 to 14 carbon atoms and may be substituted by
one or more nonaromatic R radicals, where a plurality of
substituents R, both on the same ring and on the two
different rings, together may in turn form a further mono-
or polycyclic, aliphatic or aromatic ring system;
R1 is the same or different at each instance and is an
aliphatic or aromatic hydrocarbon radical having from 1
to 20 carbon atoms.
Spec. 13:9–15:23.
6. The Specification states that “[p]reference is . . . given to
inventive compounds (1) to (41) in which the symbol Z [(i.e., bridging

3 Z refers to the bridging group V recited in the claims.
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group V)] = B, CH, CR1, COR1, CF, CCl, CBr, SiR, N, P, PO,
RC(CR2)3, RC(CR2CR2)3, cis, cis-1,3,5-cyclohexyl, RSi(CR2)3,
RSi(CR2CR2)3, N(CR2)3, N(C=O)3, N(CR2CR2)3.” Spec. 21:7–11.
3. Analysis
We agree with the Examiner that claim 66 lacks adequate written
description in the Specification.
Claim 66 is directed to an organic light-emitting diode (OLED)
comprising at least one compound selected from a large genus of
compounds, specifically certain metal complexes of polypodal ligands. FF1.
The structure of the claimed polypodal ligand Lig is reproduced below:

The chemical formula excerpted above is “structure 2,” or the polypodal
ligand Lig, of claim 66. The claim further recites that “V is a bridging unit
containing from 1 to 40 atoms.” Id.
“[S]ufficient description of a genus . . . requires the disclosure of
either a representative number of species falling within the scope of the
genus or structural features common to the members of the genus so that one
of skill in the art can ‘visualize or recognize’ the members of the genus.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010)
(en banc). Similarly, a “functional description can be sufficient only if there
is also a structure-function relationship known to those of ordinary skill in
the art.” In re Wallach, 378 F.3d 1330, 1335 (Fed. Cir. 2004).
In this case, the claim element “V” encompasses a large genus of
molecules (i.e., molecules containing from 1 to 40 atoms) that is defined by
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its function (i.e., a “bridging” unit in a compound useful in an organic light-
emitting diode). Similarly, claim 66 defines a large genus of chemical
compounds at least partly by their function (i.e., compounds contained in
organic light-emitting diodes). We agree with the Examiner that the
Specification does not provide either a disclosure of a representative number
of species within the genus of, or structure features common to, bridging
unit “V,” or a disclosure of a representative number of species within the
genus of, or structural features common to, compounds having the structure
recited in claim 66 that are suitable for use in organic light-emitting diodes.
Appellant contends that claim 66 is adequately described because the
Specification clearly describes “two common features . . . that belong to the
members of the claimed genus”: “Firstly, L1, L2, and L3 serve as bidentate
ligands to Met [(a metal coordinated to the polypodal ligand Lig)], and,
secondly, V is a bridging group that connects the individual L1, L2, and L3
so that together they form a polypodal ligand.” Appeal Br. 21; see also
Reply Br. 3, 8–9. Indeed, Appellant appears to contend that, “where the
claims set forth a chemical structure,” the written description standard is
necessarily met because the claims themselves set forth the “structural
features . . . common to the members of the genus so that one of skill in the
art can visualize or recognize the member of the genus.” Appeal Br. 22–23
(internal quotation marks omitted).
Similarly, in response to the Examiner’s position that “[t]here is no
evidence provided in the disclosure as to how the function of the genus will
change or be conserved as V is expanded in size to encompass the scope of
any atomic grouping of 1 to 40 atoms,” Appellant cites GlaxoSmithKline
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LLC v. Banner Pharmacaps, Inc., 744 F.3d 725, 731 (Fed. Cir. 2014) and
contends that
whether the function of a compound changes when that
compound’s structural features change is not determinative of
whether a claim to that structure is described by the patent
application containing it. Here, the claim terms and the present
application’s corresponding descriptions identify the structural
characteristics of the claimed compounds. The written
description matches the claim scope. The structures are not
distinguished by any particular performance property. The
claims do not “attempt to preempt the future before it has
arrived.”
Appeal Br. 24–25; see also Reply Br. 3–4. Appellant contends that the
claims on appeal are “claims to chemical formulae (defined by structure),”
which are to be distinguished from “claims to genetic and biological
materials (defined by function).” Reply Br. 5.
We are not persuaded. As an initial matter, the recitation of a
chemical structure does not ipso facto satisfy the written description
requirement. As our reviewing court has explained,
a generic claim may define the boundaries of a vast genus of
chemical compounds, and yet the question may still remain
whether the specification . . . demonstrates that the applicant
has invented species sufficient to support a claim to a genus.
The problem is especially acute with genus claims that use
functional language to define the boundaries of a claimed
genus. In such a case, the functional claim may simply claim a
desired result, and may do so without describing species that
achieve that result. But the specification must demonstrate that
the applicant has made a generic invention that achieves the
claimed result and do so by showing that the applicant has
invented species sufficient to support a claim to the
functionally-defined genus.
Ariad, 598 F.3d at 1349.
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In this case, claim 66 defines a genus of chemical compounds.
Moreover, the boundaries of the claim are defined by functional language,
both because the claimed compounds are required to be part of an organic
light-emitting diode and because the claim defines at least a part of the
recited chemical compounds by its function. Specifically, the claim element
V is itself a genus encompassing a potentially vast number of chemical
structures (i.e., structures containing from 1 to 40 atoms) and is defined by
its function as a “bridging” unit.4
Appellant has not persuasively shown that the two common features
allegedly recited in the claims – i.e., that “L1, L2, and L3 serve as bidentate
ligands to Met [(a metal coordinated to the polypodal ligand Lig)]” and that
“V is a bridging group that connects the individual L1, L2, and L3 so that
together they form a polypodal ligand” – would have allowed a skilled
artisan to visualize or recognize the members of the claimed genus.
First, the recited features do not allow a skilled artisan to visualize or
recognize which chemical structures, among the enormous number of
chemical structures containing from 1 to 40 atoms, would act as a suitable
bridging group for part-ligands L1, L2, and L3, because the asserted
“common features” describes V by function (i.e., bridging L1, L2, L3 so as
to form a polypodal ligand) rather than, or as well as, structure.

4 During the hearing, Appellant contended that claim 67 does not require the
compound to be part of an organic light-emitting diode. However, as
discussed above, Appellant did not separately argue the claims, and claim 67
therefore falls with claim 66. Furthermore, claim 67 contains the same
language as claim 66 regarding V as a “bridging unit.” Thus, claim 67 also
lacks adequate written description for that reason.
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We note that Dr. Singer stated in his declaration that
there are two common features present that belong to the
members of the claimed genus. Firstly, L1, L2, and L3 serve
as bidentate ligands to Met, and, secondly, V is a bridging
group that connects the individual L1, L2, and L3 so that
together they form a polypodal ligand. In this regard, all of
these features have been clearly described in the specification
and many examples are listed.
Singer Decl.5 ¶ 36. This statement does not explain, however, what
common structural features are present among V bridging groups
suitable for use in the claimed compounds.
We further acknowledge that Dr. Singer states in his declaration that
“[a] scientist skilled in the field would recognize that polypodal ligand Lig
must span across the central metal core so that bidentate ligands L1, L2, and
L3 can connect to the metal in the proper orientation, preferably without
strain,” and that “[t]his means V will be selected depending on the size of
the metal core.” Singer Decl. ¶ 28. Dr. Singer states that “[i]t was well
known, when the present application was filed, how to change the size of a
polydentate ligand in order to maximize its connection to a specific target
metal.” Id.
Dr. Singer’s statements above, however, suggest at most that it may
be obvious to a skilled artisan how to select some appropriate bridging
groups. However, “while the description requirement does not demand any
particular form of disclosure . . . , a description that merely renders the
invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at
1352.

5 Declaration of Stephen P. Singer, Ph.D. under 37 C.F.R. § 1.132 (Apr. 17,
2017).
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Likewise, Appellant has not persuasively shown that a skilled artisan
would have been able to visualize or recognize the compounds suitable for
use in an organic light-emitting diode based solely on the two recited
features.
As an initial matter, while Drs. Singer and Stoessel state in their
declarations that variations in Met, L1, L3, L3, and the V bridging group
would only affect the emission characteristics and/or physical properties of
the claimed compounds but would not preclude compounds from serving as
fluorescent and phosphorescent emitters, Singer Decl. ¶¶ 26, 30; Stoessel
Decl.6 ¶¶ 9–10, 14, we do not understand the declarations to suggest that any
combinations of Met, L1, L2, L3, and V bridging group having the
structures recited for those groups (e.g., containing from 1 to 40 atoms for
the bridging group V) would be suitable for use in the claimed organic light-
emitting diode. For instance, as discussed above, the Singer Declaration
states that the V bridging group should be selected depending on the size of
the metal core Met. Singer Decl. ¶ 28.7
While Appellant has argued that a skilled artisan “would have a
sense” of “what would work and what wouldn’t [as an organic light emitting
diode] as far as . . . organic metallic compounds go,” Transcript of January

6 Declaration of Philipp Stoessel, Ph.D. under 37 C.F.R. § 1.132 (Sept. 1,
2016).
7 We note also that, while Dr. Stoessel states that “modifying the ligand or
bridging unit within the scope of the claims will not preclude such
compounds from serving as fluorescence and phosphorescence emitters,”
Stoessel Decl. ¶ 9, it is unclear whether the ability to serve as fluorescence
and phosphorescence emitters necessarily means that the compound is useful
in an organic light emitting diode.
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22, 2020 Oral Hearing (“Tr.”) 19:11–21:6, Appellant has not pointed to
teachings in the Specification regarding common structural features of the
species in the claimed genus that would be suitable for use in an organic
light-emitting diode: For instance, as discussed above, the Specification
does not describe common features of “V” bridging groups, from among the
recited genus of chemical structures “containing from 1 to 40 atoms,” that
will form polypodal ligands with selected L1, L2, and L3 part ligands so as
to coordinate with selected metal Met and form a compound suitable for use
in an organic light-emitting diode.
Appellant’s citation to GlaxoSmithKline is inapposite. In that case,
the claims recited a specific compound (dutasteride) and its
pharmaceutically acceptable solvates. GSK, 744 F.3d at 726. Appellant
(defendants in the infringement suit) argued that the specification did not
adequately describe “solvates” but did not argue that the term
“pharmaceutically acceptable” was inadequately described. Id. at 729.
The Federal Circuit held that, “[o]n the sole issue properly presented,”
the claim was not invalid for lack of written description, noting that “[n]o
matter which construction is adopted, the term ‘solvate’ involves no
performance property (the claimed compound need not perform an identified
function or produce an identified result) and hence raises no issue of
insufficient structural, creation-process, or other descriptions to support such
a property.” GSK, 744 F.3d at 729–730; see also id. at 731 (explaining that,
“[c]ritically, moreover, the claim term at issue, ‘solvate,’ is not functional: to
be a ‘solvate,’ a compound need not produce a desired result or otherwise
perform a certain function”). In contrast, in this case, “V” as recited in the
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claims is required to perform a function – i.e., to act as a bridging group that
connects L1, L2, and L3 so that together they form a polypodal ligand.
Appellant further contends that, in any event, the Specification also
describes representative number of species so as to satisfy the written
description requirement. In particular, Appellant contends that V is defined
in the claims as a bridging unit and described in the Specification as
“hav[ing] from 1 to 80 atoms from main group III, IV, and/or V of the
elements of the periodic table,” which “form the basic skeleton of the
bridging unit,” and preferably having the relationship depicted below with
respect to L1, L2, and L3:

Appeal Br. 22; Spec. 11:13–12:3. Structures 4 and 5, reproduced above,
depict structures wherein the polypodal ligands Lig of structures 4 and 5
generate, respectively, facial and meridional coordination geometry on the
metal Met. Spec. 11:13–12:3.
Appellant also contends that the Specification provides specific
examples of V as well as preferred specific examples. Appeal Br. 22.
Appellant contends that, although example compounds 1–102 “all show V as
a single atom, [the Specification teaches] that V can include ‘a 3- to 6-
membered homo- or heterocycle” and “lists cis, cis-1,3,5-cyclohexyl as one
of the preferred examples for V.” Id. at 21. Appellant contends that “[t]hese
passages are clear indications that the specification taught that V can be
greater than 1 atom in order to link L1, L2, and L3 together.” Id.
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Appellant contends that, given the detailed structural description of
the claimed invention in the claims and “the high level of skill in the art, the
skilled artisan . . . would fully understand what compounds are envisaged by
the claimed invention, especially in view of the disclosure of the structures
for the many specific compounds disclosed in the present application.”
Appeal Br. 23; see also Reply Br. 4–5.
We are not persuaded. We do not dispute that the Specification
provides examples of the bridging group V. FF2–FF6. However, when
considering whether representative species have been disclosed,
[o]ne factor . . . is how large a genus is involved and what
species of the genus are described in the patent. If the genus is
not large or, even if it is, the specification discloses species
representing the genus throughout its scope, the requirement
may be met. On the other hand, analogizing the genus to a plot
of land, if the disclosed species only abide in a corner of the
genus, one has not described the genus sufficiently to show that
the inventor invented, or had possession of, the genus. He only
described a portion of it.
AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d 1285,
1299–1300 (Fed. Cir. 2014).
In this case, although the Specification provides a relatively large
number of examples of chemical structures that can act as the bridging group
V, the functionally defined genus recited in the claim (i.e., a bridging unit
containing from 1 to 40 atoms) potentially encompasses a vast number of
chemical structures. Appellant has not persuasively explained how the
disclosed examples represent the genus throughout its scope.8

8 We note that Appellant also cites to the Singer Declaration in support of its
arguments on “representative species.” While Dr. Singer cites to passages in
the Specification that “indicates . . . that V can be greater than 1 atom in
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Finally, we acknowledge that “determination of what is needed to
support generic claims . . . depends on a variety of factors” including
“existing knowledge in the particular field, the extent and content of the
prior art, the maturity of the science or technology, [and] the predictability
of the aspect at issue” and that “[i]t is not necessary that every permutation
within a generally operable invention be effective in order for an inventor to
obtain a generic claim, provided that the effect is sufficiently demonstrated
to characterize a generic invention.” Capon v. Eshhar, 418 F.3d 1349, 1359
(Fed. Cir. 2005). However, Appellant has not pointed to persuasive
evidence showing that the concept of “bridging group” for a polypodal
ligand coordinated to a metal is so well-known to those skilled in the art that
it need not be described in detail in order to show that Appellant was in
possession of the full scope of the claimed invention at the time of
filing. “Attorneys’ argument is no substitute for evidence.” Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).

order to link L1, L2, and L3 together” and further cites to portions of the
Specification describing and/or providing examples of the V bridging group,
Singer Decl. ¶¶ 37, 40, the declaration suffers from the same problem as
Appellant’s arguments in the brief in that it provides no explanation of how
the cited descriptions and examples are representative of the claimed genus
of “bridging unit containing from 1 to 40 atoms” throughout its scope. See
Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 n. 6 (Fed. Cir.
1994) (stating that “[a]n expert opinion is no better than the soundness of the
reasons supporting it”); In re Reuter, 670 F.2d 1015, 1023 (CCPA 1981)
(explaining that expert’s opinion on ultimate legal issue is entitled to no
weight).
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Accordingly, for the reasons described above, we affirm the
Examiner’s rejection of claim 66 as lacking adequate written description.
Claim 67, which is not separately argued, falls with claim 66.
B. Lack of enablement (claims 66 and 67)
1. Issue
The Examiner concludes that the Specification does not enable a
skilled artisan to make the invention commensurate with the scope of the
claims. In analyzing the Wands9 factors, the Examiner asserts that “the
Examiner has been unable to find prior art that details the claimed genus or
related compounds or a way to produce such compounds,” and finds that, in
light of the lack of such prior art, “there is a severe lack of predictability in
the production of the claimed compound by one of ordinary skill.” Ans. 7–
8. The Examiner finds that the Specification does not disclose “generic
synthetic methods . . . so that one of skill in the art would be able to
synthesize compounds that are different from the five complexes
exemplified by working examples.” Id. at 8. The Examiner finds that,
although “[t]he level of skill in the art of organic synthesis and
pharmaceuticals is high,” undue experimentation would be need to practice
the full scope of the invention, given the lack of predictability in the art and
given that a skilled artisan “would need to determine all of the reagents,
reaction conditions and synthetic schemes.” Id.
In particular, the Examiner finds that “the working examples that
make up the synthetic procedures disclosed in the instant specification all
contain a bridging unit V of one atom (C or P) linked directly to all of L1–

9 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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L3 where Cy1 is pyridine and Cy2 is ortho-phenol.” Final Act. 4. The
Examiner finds that “[t]he prior art does not remedy the deficiencies of the
disclosure” because the synthetic methods disclosed in the prior art “are not
drawn to making a tripodal ligand as required by the instant claims where V
is from 1 to 40 atoms and L1, L2, and L3 are any structures which have two
rings connected in any way.” Id.
In response to Appellant’s arguments, the Examiner further asserts
that “the bridging component V . . . is the inventive portion of the claimed
structure,” and that, while “Appellant has cited . . . references with respect to
metals and ligands for the purposes of OLED, . . . none of those references
deal with how li[n]king those ligands in a singular polypodal ligand, and
how changes in the structure of the linking V component[,] affect the
functionality of the compounds.” Ans. 15. The Examiner asserts that, “[a]s
the prior art is silent as to what bridging groups would be appropriate for the
purpose of compounds to be used in OLEDs, it is up to the disclosure as
filed . . . to properly enable . . . the person of skill in the art to practice the
invention to the full scope that is claimed.” Id. at 16. The Examiner
concludes that, “[s]ince the component V is defined in a very broad fashion
and the guidance is only to where V is a singular binding atom to link L1,
L2, and L3, the instant disclosure falls short in enabling the full claimed
scope of the compounds.” Id.
Appellant contends that an “extensive body of literature . . .
demonstrates that those skilled in the art were capable of making
cyclometalled compounds with different metals and ligands” and, citing to
the Singer Declaration as support, contends that “[w]ith that knowledge and
the disclosure of the present application, . . . those skilled in the art would
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have been fully able to make and use the compounds of claims 66–67.”
Appeal Br. 29. Appellant contends that the Examiner improperly limits the
enablement inquiry to the working examples and ignores “the high level of
skill in the art, the existence of prior art, and the testimony of Dr. Singer.”
Id. at 32–33.
2. Analysis
Our reviewing court has explained that,
[w]hen rejecting a claim under the enablement requirement . . . ,
the PTO bears an initial burden of setting forth a reasonable
explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the
application; this includes . . . providing sufficient reasons for
doubting any assertions in the specification as to the scope of
enablement.
In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993).
As our reviewing court has further explained,
[t]he enablement requirement is often more indulgent than the
written description requirement. The specification need not
explicitly teach those in the art to make and use the invention;
the requirement is satisfied if, given what they already know,
the specification teaches those in the art enough that they can
make and use the invention without “undue experimentation.”
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed. Cir.
2003). Thus, the “scope of enablement . . . is that which is disclosed in the
specification plus the scope of what would be known to one of ordinary skill
in the art without undue experimentation.” National Recovery Techs. Inc. v.
Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed Cir. 1999).
Accordingly, it is “well settled that patent applicants are not required
to disclose every species encompassed by their claims, even in an
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unpredictable art.” In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991); see also
Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1365 (Fed. Cir. 2006)
(affirming BPAI conclusion that claims to a modified pox virus vaccine
were enabled, despite the fact that the specification focused on viruses other
than pox virus, provided no examples directed to pox virus, and discussed
pox virus only in general terms relating to the inventive disclosure).
Keeping in mind the above principles of law, we agree with Appellant
that, at least on the record before us, a preponderance of the evidence does
not support the Examiner’s enablement rejection. In particular, while the
claims are undoubtedly broader than the examples disclosed in the
Specification, the Examiner has cited no clear or specific evidence in the
prior art or otherwise that, in light of the teachings of the prior art and of the
Specification, a skilled artisan would have needed to unduly experiment in
order to determine “what bridging groups would be appropriate for the
purpose of compounds to be used in OLEDs” or how to make and use
claimed compounds comprising such bridging groups. Absent such
evidence, we are not persuaded that, in and of themselves, the breadth of the
claim and the presentation of only a limited number of examples
demonstrates that undue experimentation would have been required to
practice the full scope of the invention, as the Examiner seems to suggest.
In sum, because we are not persuaded that a preponderance of
the evidence supports the Examiner’s conclusion that the claims are not
enabled, we reverse the Examiner’s rejection of claims 66 and 67 as lacking
in enablement.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis 
Affirmed Reversed
66, 67 112(a) or 112 (pre-
AIA), first paragraph
Lack of
written
description

66, 67
66, 67 112(a) or 112 (pre-
AIA), first paragraph
Lack of
enablement

66, 67
Overall
Outcome
66, 67

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED