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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1-3, 5-11 and 14 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1-3, 5-11 and 14 of copending Application No. 17953357 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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.
Claim 4,12-13 and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4,12-13 and 15-20 of copending Application No. 17953357 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope in every way except in the copending claims:
claim 4 depends from claim 3, and so has additional limitations
claim 15 includes many more R groups
claim 16 includes additional species
claims 17-20 do not include the provisos at the end of the claims
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14, 17-18 and 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,583,878. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims disclose the same OLED structure and consumer product [claims 14-16] with an overlapping formula 1 for the compound [claim 1] as demonstrated by patent claim 16 including anticipatory species of the present claims:
PNG
media_image1.png
241
236
media_image1.png
Greyscale
PNG
media_image2.png
275
264
media_image2.png
Greyscale
PNG
media_image3.png
230
237
media_image3.png
Greyscale
[cols 563, 566, 569] and others. The OLED also includes the hosts of claim 18 [claim 15].
Claim Objections
Claim14 is objected to because of the following informalities: p42 includes a superfluous paragraph notation “[0001]”. Appropriate correction is required.
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 1-20 are 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.
Independent claims 1, 17 and 20 do not define the term M. Examples in the claims and specification include only platinum as M. For the purposes of examination, M is interpreted as platinum.
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)(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.
Claim(s) 1-14, and 17-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chen et al (US 20220162246 A1).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Chen discloses a OLEDs comprising an organic layer with a metal complex [abstract], examples include the structure:
PNG
media_image1.png
241
236
media_image1.png
Greyscale
PNG
media_image2.png
275
264
media_image2.png
Greyscale
PNG
media_image3.png
230
237
media_image3.png
Greyscale
[p293, 292, 295] which reads on the claimed formula wherein M is platinum, X1 is N, L1 is a single bond, m=1, n=0, K1 is O and K1 and K2 are single bonds, Z2 is N and Z1 and Z3 are C, and Ra and Rc are aryl groups joined to form a ring. The claimed rings A, B, and C include a pyridine and two phenyl groups and ring A is an imidazole derived carbene. The emission layer further includes a host including the anthracene, bicarbazole and triphenylene structures of claims 18-19 such as:
PNG
media_image4.png
116
209
media_image4.png
Greyscale
and others [p216 et seq].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-13 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US 20190280222 A1).
Kim discloses OLEDs with metal complexes including those of the general structure and specific structure below:
PNG
media_image5.png
231
351
media_image5.png
Greyscale
[p3]
PNG
media_image6.png
193
161
media_image6.png
Greyscale
[p12], wherein the difference between the instant claimed formula 1 and the specific structure above are:
-the RHS the pyridine and phenyl group are joined by an O rather than a direct bond, however in the general structure Kim teaches that L11 may be single bond [0013 p1], and
-B11 to B14 are all direct bonds whereas K1 to K3 must include at least one O or S, however in the general structure Kim teaches that B11 to B13 may include
Regarding claim 9, L12 of Kim may be a single bond [0013]. Claim 10 does not actually require that group L1 is present because Claim 9 indicates that in some embodiments n=1, so the structure of Kim reads on the embodiments of claim 10 wherein n=1 (and m=0 and L1 is not present). The emitting layer may also include a host such including triphenylene, bicarbazole and anthracene structures of claim 18 and similar to the structures of claim 19.
It would have been obvious to one having ordinary skill in the art at the time of filing of Applicant’s invention to have prepared the claimed compound of Formula I because Kim teaches specific examples of compounds very similar to the claimed Formula I with the metal carbene rings, and the minor differences are within the scope of the general formula disclosed.
If Applicant argues that the claimed embodiments are not disclosed with sufficient specificity and that examiner is picking and choosing with improper hindsight, Examiner notes that the rejection is made under 35 USC 103 obviousness. Examiner holds the opinion that there a finite number of disclosed options for L11 and B11 to B14 in the formula 1 of Kim that would allow the ordinarily skilled artisan to prepare the claimed Formula I. The claims are obvious over the combination of elements disclosed, and the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Allowable Subject Matter
Claims 15 and 16 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: Kim et al (US 20190280222 A1) and Chen et al (US 20220162246 A1), discussed above, do not disclose the specific compounds of claim 15. Though each of the substituents may be within the possible structures of the references, it would require excessive hindsight on the part of the office to arrive at the claimed structures by picking-and-choosing the claimed embodiments.
Some of the closest prior art includes Kottas et al (US 20160285014 A1), which discloses the generic and specific structures below:
PNG
media_image7.png
164
233
media_image7.png
Greyscale
[p2]
PNG
media_image8.png
158
216
media_image8.png
Greyscale
[p104]. However, the disclosed structure does not include any of the claimed K1 to K3 wherein one is not a direct bond but O or S.
Li et al (US 20150105556 A1) discloses similar generic and specific structures as well:
PNG
media_image7.png
164
233
media_image7.png
Greyscale
[p1]
PNG
media_image8.png
158
216
media_image8.png
Greyscale
[p581] but again, the K1 to K3 of the claims would all be direct bonds.
Beers et al (US 20220115607 A1) discloses compounds with a generic structure, and more specific genus and an example species below:
PNG
media_image9.png
216
335
media_image9.png
Greyscale
PNG
media_image10.png
167
229
media_image10.png
Greyscale
PNG
media_image11.png
258
350
media_image11.png
Greyscale
[pp191, 240]. Notice that the middle formula does not specify the metal carbene bond for claimed ring A, and the most specific structure does not include a single bond between claimed rings C and D. Given the breadth of disclosed Formula II, arriving at the claimed structure would require excessive hindsight on the part of the office.
Dyatkin et al (US 20220106342 A1) discloses a specific compound having the formula:
PNG
media_image12.png
156
249
media_image12.png
Greyscale
[p282] wherein the spiro structure does not include two phenyl groups like the excluded structure in the proviso at the end of claims 1, 17 and 20, i.e.
PNG
media_image13.png
57
149
media_image13.png
Greyscale
. However, the above structure includes two N’s among the claims Z1, Z2, and Z3, whereas the claims require one of Z1, Z2, and Z3 to be N and the remainder are C. Given the breadth of the generic structures of the claims, such as Formula 2 below, and the myriad of examples in Dyatkin that do not include the ring A, there would be no motivation to modify the one specific compound above:
[p264].
Yam et al (US 20200176691 A1, US 20200172562 A1) includes compounds of the structure:
PNG
media_image14.png
163
216
media_image14.png
Greyscale
and similar compounds, but the complexes of Yam include only nickel as the metal and not platinum, like the claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. 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.
MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/Primary Examiner, Art Unit 1766
Prosecution Insights