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 (i.e., changing from AIA to pre-AIA ) 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.
Current Status of 17/263,135
This Office Action is responsive to the amended claims received 10 March 2026.
Claims 1 and 4-8 are currently pending.
Election/Restrictions
Applicant’s election without traverse of compound C-3 shown below, in the reply filed on 26 March 2024, is acknowledged.
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The elected species has been determined to read on claims 1 and 4-8. No claims are currently withdrawn due to this election.
Priority
Applicant’s claim for the benefit of the prior-filed applications PCT/KR2019/009054 (filed 23 July 2019), KR 10-2018-0086823 (filed 25 July 2018), and KR 10-2019-0083175 (filed 10 July 2019) under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The Examiner also acknowledges Applicant’s submission of translations of the priority documents. For the purposes of this action, the Examiner has determined that the effective filing date of the instant claims is 25 July 2018.
Response to Amendments
The 35 U.S.C. 102(a)(1) rejections to the claims, present in the previous office action, are hereby withdrawn, but new rejections are made herein as necessitated by Applicant’s amendments.
The nonstatutory double patenting rejections to the claims, present in the previous office action, are maintained herein.
Response to Arguments
Applicant argues that the previously cited MA reference no longer anticipates the instant claims.
The Examiner has withdrawn the rejections based upon MA, due to Applicant’s amendments, but the Examiner presents new rejections under 35 USC 102 below, as necessitated by Applicant’s amendments.
Applicant states that a terminal disclaimer, related to pending application 19/232,955 was filed on 10 March 2026. Perhaps some type of mistake was made. The Examiner does not see any terminal disclaimer filed on that date, or any date after the previous office action.
Claim Rejections - 35 USC § 102
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 person shall be entitled to a patent unless –
(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, 4, and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
KIM (KR 20170113320 A; Published 12 October 2017).
KIM teaches a light emitting device, wherein an organic layer includes a light-emitting layer, and the light-emitting layer includes one of the compounds therein (claim 7). KIM also describes the device therein as electroluminescent (117th page of the attached KIM reference with translation). KIM teaches the compound shown below at the bottom left of page 15 therein (claim 5).
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The compound of KIM above can be shown to fall within the scope of instant claim 1. Selecting the following variables of instant claim 1 yields the compound of KIM above: X is O, R1 is an unsubstituted C18 heteroaryl group, R2 is H, a is 1, b is 1, L is an unsubstituted 10-membered arylene, HAr represents formula (2-1), R13 is H, d is 1, R12 is an unsubstituted C6 aryl group, and c is 1.
Regarding claim 4: Instant claim 4 further limits the optional substituents of instant claim 1, but it does not require the presence of any substituents. The compound of KIM above; therefore, also anticipates instant claim 4.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 4-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over:
Claims 1, 7, and 9 of copending Application No. 19/232,955 (referred to below as the ‘955 application).
Although the claims at issue are not identical, they are not patentably distinct from each other because: The ‘955 application teaches compound E-1 within claim 7 therein. This compound is identical to compound C-1 present in instant claim 5. Claim 9 of the ‘955 application teaches “An organic electroluminescent device comprising… at least one light-emitting layer”, wherein at least one light-emitting layer contains a compound of claim 1 therein. Claim 7 of the ‘955 application, which includes compound E-1, depends upon claim 1 of the ‘955 application. Therefore, all compounds of claim 7 are also compounds of claim 1 therein.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are currently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D MCANANY whose telephone number is (571)270-0850. The examiner can normally be reached 8:30 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANDREW D KOSAR can be reached at (571)272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JDMc/Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625