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.
Examiner’s Note
The current Office action has been made nonfinal, because the new provision rejection over claim 8 of copending Application No. 17/928,908 is not necessitated by amendment.
Response to Amendment
The amendment of 18 March 2026 has been entered.
Disposition of claims:
Claims 10-11, 16, and 21 have been amended.
Claims 1-9, 12, 14-15, and 17-20 are cancelled
Claims 23-24 are new.
Claims 10-11, 13, 16, and 21-24 are pending.
The cancellation of claims 3-4, 6, 8-9, and 12 has rendered moot the rejections of these claims under 35 U.S.C. 103 as being unpatentable over Tsujimoto et al. (“Pure red electrophosphorescence from polymer light-emitting diodes doped with highly emissive bis-cyclometalated iridium(III) complexes” Journal of Organometallic Chemistry, vol. 695 (2010) pp. 1972-1978.) (hereafter “Tsujimoto”) in view of Fukuzaki et al. (US 2011/0049496 A1) (hereafter “Fukuzaki”) and Kim et al. (WO 2019/221484 A1—machine translation relied upon) (hereafter “Kim”) set forth in the last Office action as well as under 35 U.S.C. 103 as being unpatentable over Tsujimoto et al. (“Pure red electrophosphorescence from polymer light-emitting diodes doped with highly emissive bis-cyclometalated iridium(III) complexes” Journal of Organometallic Chemistry, vol. 695 (2010) pp. 1972-1978.) (hereafter “Tsujimoto”) in view of Fukuzaki et al. (US 2011/0049496 A1) (hereafter “Fukuzaki”) and Kim et al. (WO 2019/221484 A1—machine translation relied upon) (hereafter “Kim”), and as evidenced by m-w.com (www.m-w.com definition of “adjacent”, see attached screenshot) (hereafter “m-w.com”) set forth in the last Office action. The rejections have been withdrawn.
The amendment to claim 10 have overcome the rejection of claims 10-11, 16, and 21-22 under 35 U.S.C. 103 as being unpatentable over Tsujimoto et al. (“Pure red electrophosphorescence from polymer light-emitting diodes doped with highly emissive bis-cyclometalated iridium(III) complexes” Journal of Organometallic Chemistry, vol. 695 (2010) pp. 1972-1978.) (hereafter “Tsujimoto”) in view of Fukuzaki et al. (US 2011/0049496 A1) (hereafter “Fukuzaki”) and Kim et al. (WO 2019/221484 A1—machine translation relied upon) (hereafter “Kim”) set forth in the last Office action. The rejections have been withdrawn.
Response to Arguments
Applicant’s arguments, see pp. 13-15 of the reply filed 18 March 2026, with respect to amended claims 10-11, 16, and 21-22 have been fully considered and are persuasive. The current claims are nonobvious over Tsujimoto et al. (“Pure red electrophosphorescence from polymer light-emitting diodes doped with highly emissive bis-cyclometalated iridium(III) complexes” Journal of Organometallic Chemistry, vol. 695 (2010) pp. 1972-1978.) (hereafter “Tsujimoto”) in view of Fukuzaki et al. (US 2011/0049496 A1) (hereafter “Fukuzaki”) and Kim et al. (WO 2019/221484 A1—machine translation relied upon) (hereafter “Kim”) for the reasons argued by Applicant. Thus, new grounds of rejection over the cited references have not been made.
Applicant's arguments filed 18 March 2026 regarding the provisional rejection of claims 10-11, and 13 on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 17/928,908 (reference application) have been fully considered but they are not persuasive.
Applicant argues that the current application is the earlier filed application and because the provisional rejection is the final remaining rejection, the provisional rejection should be withdrawn.
However, copending Application No. 17/928,908 has been allowed, necessitating a terminal disclaimer.
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 10-11, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 17/928,908 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 10-11, and 13: Claim 8 of copending Application No. 17/928,808 discloses the compound shown below {claim 8}.
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 16 and 21-24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: As outlined above, Applicant has persuasively argued that the claims are nonobvious over Tsujimoto et al. (“Pure red electrophosphorescence from polymer light-emitting diodes doped with highly emissive bis-cyclometalated iridium(III) complexes” Journal of Organometallic Chemistry, vol. 695 (2010) pp. 1972-1978.) (hereafter “Tsujimoto”) in view of Fukuzaki et al. (US 2011/0049496 A1) (hereafter “Fukuzaki”) and Kim et al. (WO 2019/221484 A1—machine translation relied upon) (hereafter “Kim”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DYLAN CLAY KERSHNER whose telephone number is (303)297-4257. The examiner can normally be reached M-F, 9am-5pm (Mountain).
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/DYLAN C KERSHNER/ Primary Examiner, Art Unit 1786
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