Notice of 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 .
DETAILED ACTION
Response to Arguments
Applicants arguments and amendments, filed on 2/23/26, have been fully considered but they do not confer patentability on all of the instantly filed claims. The prior art rejections to Takiguchi et al. (US 2002/0064681) and Stoessel et al. (US 2015/0171348) have been withdrawn in light of Applicants amendments. Specifically, independent claims 1, 17, and 20 such that when Y1 and Y2 of Formula II are independently selected from the group consisting of O and NR’, then X is not CR’R’’. All of the compounds taught and suggested by Takiguchi et al. and Stoessel et al. have a CR’R’’ group present as variable X in Formula II. Additionally, Y1 and Y2 are only taught to include O and NR groups in the teachings of Stoessel et al. and O in the teachings of Takiguchi et al. For this reason, these rejections can no longer be maintained. The double patenting rejections are wholly maintained. Further search has led to a new prior art rejection which is described below.
Claim Objections
Claims 1, 17, and 20 are objected to. Specifically, Applicants should include the limitation that R’’’ has the same definition as R’1 so that R’’’ is clearly defined in claims 1, 17, and 20. This can be done simply including R’’’ in the Markush group list “R’, R’’, RA, RB, and RC” as recited in each of claims 1, 17, and 20.
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.
Claims 1, 4-6, 9-12, 17, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oshiyama et al. (US 2013/0320837).
Claim 1: Oshiyama et al. teaches iridium complexes which are employed as phosphorescent dopants in organic electroluminescent devices. Some of the compounds taught in paragraph 0140 of Oshiyama et al. anticipate all of the limitations of ligand LA and metal M. Specifically, at least compounds 22, 24, 25, 27, 108, and 109 anticipate claim 1. Compound 22, as one example, as applied to Formula I of claim 1 has K1 and K2 equal to direct bonds, Z1-Z3 equal to C, Z4 equal to N, ring A equal to benzene, ring B equal to imidazolyl, RB is pentamethylphenyl, and RA is a group which anticipates Formula II of claim 1 with Y1 and Y2 equal to S, and X equal to CH2.
Claims 4 and 5: Claims 4 and 5 are directed to an optional embodiment of claim 1. That is to say, if claims 4 and 5 were rewritten as an independent claim, compound 22 of Oshiyama et al. would still anticipate claims 4 and 5.
Claim 6: The ligand in Compound 22 of Oshiyama et al. anticipates the 7th structure recited in claim 6 with RA and RB equal to hydrogen, K2 equal to a single bond, Y1 and Y2 equal to S, X equal to CH2, and R’’’ equal to pentamethylphenyl.
Claim 9: Compound 22 of Oshiyama et al. has the formula Ir(LA)3, which anticipates claim 9.
Claims 10-12: Claims 10-12 serve to further limit embodiments where the complex is heteroleptic and has a ligand LB and/or LC. However, this is not required in claim 9. As such, Oshiyama et al. may be properly relied upon to also reject claims 10-12
Claim 17: The rejection of claim 1 above is wholly incorporated into the rejection of claim 17. Oshiyama et al. teaches in table 1 employing the dopants taught therein in organic electroluminescent devices which comprise an anode, a hole transport region, an emission layer, an electron transport region, and a cathode. The employment of any one of the explicitly taught iridium complexes of Oshiyama et al., including the complexes recited in claim 1 above, as a phosphorescent dopant in the devices taught therein is at once envisaged, thereby anticipating claim 17.
Claim 18: The electroluminescent devices taught by Oshiyama et al. comprise compound H-1 as a host material for the emission layer. Compound H-1 is a carbazole-containing compound as shown on page 23, thereby anticipating claim 18.
Claim 20: The rejection of claims 1 and 17 above are wholly incorporated into the rejection of claim 20. Oshiyama et al. teaches that the devices prepared therein are suitable for use in lighting devices and display devices (paragraph 0410). A person having ordinary skill in the art understands that these devices are for consumer use, thereby anticipating claim 20.
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 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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/657,417 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. The subject matter recited in independent claims 1 and 2 of the reference application includes embodiments drawn to the same compounds as recited in independent claim 1 of the instant application. Additionally, the groups of Formula II recited in claim 3 of the reference application read on the groups of Formula II as recited in claims 2 and 3 of the instant application. The same can be said for the groups of Formula III as recited in claims 4 and 5 of the reference application which read on the groups of Formula III as recited in claims 4 and 5 of the instant application. Additionally, claims 6-12 of the reference application overlap in scope with claims 6-12 of the instant application as clearly shown. Claim 13 of the reference application claims many of the same metal complexes as claim 13 of the instant application. Claims 14-16 of the reference application claim the same metal complexes as claims 14-16 of the instant application. Last, claims 17-20 of the instant application substantially overlap in scope with the subject matter recited in claims 17-20 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/481,417 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. The subject matter recited in independent claim 1 of the reference application includes embodiments drawn to the same compounds as recited in independent claim 1 of the instant application. Additionally, the groups of Formula II recited in claims 2 and 3 of the reference application read on the groups of Formula II as recited in claims 2 and 3 of the instant application. The same can be said for the groups of Formula III as recited in claims 4 and 5 of the reference application which read on the groups of Formula III as recited in claims 4 and 5 of the instant application. Additionally, claims 6-12 of the reference application overlap in scope with claims 6-12 of the instant application as clearly shown. Claim 13 of the reference application claims many of the same metal complexes as claim 13 of the instant application. Claims 14-16 of the reference application claim the same metal complexes as claims 14-16 of the instant application. Last, claims 17-20 of the instant application substantially overlap in scope with the subject matter recited in claims 17-20 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims Free from Prior Art Rejections
Should Applicants overcome the 112(b) and double patenting rejections cited above, claims 2, 3, 7, 8, 13-16, and 19 would be 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.
Conclusion
Applicant's amendment necessitated the new ground of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S LOEWE whose telephone number is (571)270-3298. The examiner can normally be reached on Monday-Friday from 8 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski, can be reached at telephone number 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert S Loewe/Primary Examiner, Art Unit 1766
1 As recited in claim 6.