DETAILED ACTION
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.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
Claim 1, which the other claims are dependent upon, recites a first chemical moiety “comprising or consisting” a structure of Formula I, and second chemical moieties independently “comprising or consisting” a structure of Formula II. Notice that the alternative condition “or consisting” is redundant as the condition “comprising” is inclusive and open-ended. Hence, each of the phrases should be replaced by “comprising .
Appropriate correction is required.
Claim 14 is objected to because of the following informalities:
The claim recites that the organic molecule “emits light with a full width at half maximum less than 0.5 eV” which should be replaced by the following: “emits light with a full width at half maximum of less than 0.5 eV” for clarity.
Appropriate correction is required.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 14, 17, and 18 of U.S. Patent No. 11,393,984 B2 (herein referred to as “Esteban.” Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding Claims 1-12 and 15-20, Esteban claims an organic light-emitting molecule comprising a first chemical moiety:
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wherein exactly two substituents selected from T, X, and Y represent binding sites to the second chemical moiety:
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(where # represents binding site to the first chemical moiety via single bond, Z represents linking groups such as a single bond or S, and Ra represents groups such as hydrogen or CF3), with the rest of T, X, and Y being R2 which represents groups such as hydrogen or deuterium; V represents R2 which represents groups such as hydrogen or deuterium; exactly one substituent selected from RX-Z represents CN (with the rest being RP which represents groups such as hydrogen or deuterium); R1 represents groups such as hydrogen or deuterium (Claim 1). Esteban further claims an optoelectronic device that is an organic light-emitting diode comprising the following layers: substrate, anode, at least one light-emitting layer, and cathode wherein the light-emitting layer comprises at least one of its invention compounds (as emitter and/or host) and one or more (different) emitter and/or host materials (Claims 17 and 18). Esteban further claims an optoelectronic device comprising the following layers: substrate, anode, at least one light-emitting layer, and cathode; its inventive compound comprises the light-emitting layer (wherein “host material” need not be present) (Claim 14).
Regarding Claims 13 and 14, it is the position of the Office that the molecules with the assignments as claimed by Esteban (see above) would inherently read on the photophysical limitations as recited in the claims. Evidence is provided by the fact that the specific embodiments fully read on the structure of Applicant’s Formula I as recited in Claim 1, wherein the substituent groups correspond to those as explicitly preferred by the Applicant as recited in the claims as well as the present Specification. Notice that in the simplest case (where Z = single bond, exactly one of RX-Z = CN, and exactly two of RX-Z = hydrogen), the resulting compounds would be identical to one of the Applicant’s preferred embodiments Compounds 1-3 (see [0214] of the present national phase publication).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claim recites “The optoelectronic device according to claim 17” which lacks antecedent basis as Claim 17 is directed to a “light-emitting device.” The Office has thus interpreted the claim to instead recite the following: “The light-emitting device according to claim 17” for the purpose of this Examination.
Correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY L YANG whose telephone number is (571)270-1137. The examiner can normally be reached Mon-Fri, 6am-3pm.
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/JAY YANG/Primary Examiner, Art Unit 1786