DETAILED ACTION
Response to Amendment
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is responsive to the response filed on January 2, 2026 and to the declaration filed on January 6, 2026. No claims were amended. Claim 4 is a cancelled claim. Claims 1-3 and 5-10 as filed January 2, 2026 are pending.
The declaration under 37 CFR 1.132 filed on January 6, 2026 is sufficient to overcome the rejection of the claims based upon Parham et al. (US 2017/0186965) and upon Lee et al. (US 2015/0171340 A1). Applicant demonstrates unexpected improved results for compounds having groups and bonding positions as specifically required.
The rejection of claims 1-3 and 5-10 under 35 U.S.C. 103 as being unpatentable over Parham et al. (US 2017/0186965) is withdrawn in view of the declaration received January 6, 2026.
The rejection of claims 1-3 and 5-10 under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2015/0171340 A1) is withdrawn in view of the declaration received January 6, 2026.
This action is made non-final in light of the obviousness double patenting rejections set added below.
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 1-3 and 5-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,807,632. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘807 sets forth claims 1-5 that encompass and/or contain compound(s) the same as within the instant claims (see at least claim 5 compounds at col. 220, 221, and 227- 229 that contain the required bonding locations) and note that claim 2 Formula 1-4 contains the required bonding pattern. Device claims 6 to 8 of ‘807 encompass instant claims 9 and 10.
Therefore, given the overlap between the present claims and the patented claims, it would have been within the skill level of, as well as obvious to, one of ordinary skill in the art to use compounds which are both disclosed by patent US 11,807632 and encompassed by the scope of the present claims and thereby arrive at the present invention.
Claims 1-3 and 5-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 17/918,002 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘002 sets forth devices (claims 1-7) with compounds of Formula 1 that encompass and/or contain compound(s) the same as within the instant claims. Formula 1-2 has the required bonding position. See specific compounds on at least page 498 of the claim set in ‘002. Device claims of ‘002 encompass instant claims 9 and 10.
Therefore, given the overlap between the present claims and the copending claims, it would have been within the skill level of, as well as obvious to, one of ordinary skill in the art to use compounds which are both disclosed by copending Application No. 17/918,002 and encompassed by the scope of the present claims and thereby arrive at the present invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 5-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 20, and 24 copending Application No. 18/014,836 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘836 sets forth devices with compounds of Formula 3 that encompass and/or contain compound(s) the same as within the instant claims. See specific compounds of claim 24 at least at page 110 of 01/06/2023 amended claim set. Device claims of ‘836 encompass instant claims 9 and 10.
Therefore, given the overlap between the present claims and the copending claims, it would have been within the skill level of, as well as obvious to, one of ordinary skill in the art to use compounds which are both disclosed by copending Application No. 18/014,836 and encompassed by the scope of the present claims and thereby arrive at the present invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 5-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 21, and 25 of copending Application No. 18/015,844 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘844 sets forth devices with compounds of Formula 3 (claim 1) that encompass and/or contain compound(s) the same as within the instant claims. Formula 3-2 of claim 21 has the required bonding position. See specific compounds of claim 25. Device claims of ‘844 encompass instant claims 9 and 10.
Therefore, given the overlap between the present claims and the copending claims, it would have been within the skill level of, as well as obvious to, one of ordinary skill in the art to use compounds which are both disclosed by copending Application No. 18/015,844 and encompassed by the scope of the present claims and thereby arrive at the present invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dawn Garrett whose telephone number is (571)272-1523. The examiner can normally be reached Monday through Thursday (Eastern Time).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAWN L GARRETT/Primary Examiner, Art Unit 1786