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 .
Election of Species
Applicant’s election without traverse of the following species in the reply filed on 26 January 2026 is acknowledged:
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. The Examiner notes that some of the substituents therein are not clearly discernible, and that applicant’s response did not expressly identify each of the substituents correlations therein as per the election of species requirement of 4 December 2025.The Examiner notes that the aformentioned elected compound appears(*) to be the compound recited in claim 12, as represented by
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, with the following substituent desinations:
(B1) both RB’s are tert-butyl alkyl groups;(B2) RC is tert-butyl alkyl groups;
(B3) RD is methyl group on ring D, which is an aryl group; (B4) RE is hydrogen; and
(B4) RZ is
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, as represented by
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. (*) this was confirmed via telephone with applicant’s representative Gregory M. Leftkowitz on 11 February 2026.
Applicant’s response noted that claims 8, 9, and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 26 January 2026.
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.
Claims 1-7, 10-14, and 16-20 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.
Claim 1, claim 17 , and claim 20 are rejected as being vague and indefinite when they each recites
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(emphasis added). While claims 1 and 17 each recites that “each of X1 to X5 is independently C or N”, the scope of the protection sought by “A” is not clear, as it is not mentioned. Claim 1 fails to particularly point out and distinctly claim the compound of Formula I. Claim 17 fails to particularly point out and distinctly claim the compound of Formula I contained in the claimed OLED. Claim 20 fails to particularly point out and distinctly claim the compound of Formula I contained in the claimed consumer product. Also, claim 3 is similarly rejected as being vague and indefinite when it recites “wherein X2 and X5 are N, and X1, X3, and X4 are C; or wherein X1 and X4 are N, and X2, X3, and X5 are C”, as the scope of the sought by “A” is not clear.
Claim 1, claim 17 , and claim 20 are rejected as being vague and indefinite when they each recite “RA, RB, RC, and RD each independently represents mono to the maximum allowable number of substitutions, or no substitution” (emphasis added); the scope of the protection sought is not clear, as each of RA, RB, RC, and RD are each substituents and not the number of substitutions. Claim 1 fails to particularly point out and distinctly claim the compound of Formula I. Claim 17 fails to particularly point out and distinctly claim the compound of Formula I contained in the claimed OLED. Claim 20 fails to particularly point out and distinctly claim the compound of Formula I contained in the claimed consumer product.
Claim 1, claim 17 , and claim 20 are rejected as being vague and indefinite when they each recite “any two substituents may be joined or fused together to form a ring” (emphasis added); the scope of the protection sought is not clear, in part as the antecedent basis for “any two substituents” is not clear. Also, not all of the substituents encompassed by “any two substituents” are capable of being “joined or fused together to form a ring”. Claim 1 fails to particularly point out and distinctly claim the compound of Formula I. Claim 17 fails to particularly point out and distinctly claim the compound of Formula I contained in the claimed OLED. Claim 20 fails to particularly point out and distinctly claim the compound of Formula I contained in the claimed consumer product. Also, claim 12 is similarly rejected as being vague and indefinite when it recites “any two substituents may be joined or fused together to form a ring” (emphasis added).
Claim 4 is rejected as being vague and indefinite when it recites “wherein RA at X4 is a substituent selected from the group consisting of“ (emphasis added); the scope of the protection sought by “RA at X4” is not clear as Formula I fails to particularly point out and distinctly claim that the substituent RA is bonded to the substituent X4. Claim 4 fails to particularly point out and distinctly claim the compound of Formula I.
Claim 10 is rejected as being vague and indefinite when it recites “wherein exactly three of X1 to X3 are C”(emphasis added); the scope of the protection sought by “exactly three of” is not clear, and is superfluous. Claim 10 fails to particularly point out and distinctly claim the compound of Formula I.
Claim 14 is rejected as being vague and indefinite when it recites “wherein LA′ is selected front the group consisting of the structures shown below:
wherein ligand LA′ is has a structure of LAi-m, where i is an integer from 1 to 288 and m is an integer from 1 to 19, wherein each of LAi-1 to LAi-19 has a structure as follows” (emphasis added); the scope of the protection sought by the superfluous language is not clear. Claim 14 fails to particularly point out and distinctly claim the compound of Formula I, i.e., that the ligand LA′ is has a structure of LAi-m, where i is an integer from 1 to 288 and m is an integer from 1 to 19, wherein each of LAi-1 to LAi-19 has a structure as recited.
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 1-7, 10-14, and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/953,357 (corresponding to U.S. Patent Application Publication No. 2023/0144846). Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to compound, the corresponding use thereof said compound in a light emitting device characterized, and the corresponding use thereof said compound in a consumer product, characterized in that said compound is inclusive of the compound of the present formula I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7, 10-14, and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/953,360 (corresponding to U.S. Patent Application Publication No. 2023/0140064). Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to compound, the corresponding use thereof said compound in a light emitting device characterized, and the corresponding use thereof said compound in a consumer product, characterized in that said compound is inclusive of the compound of the present formula I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this office action, wherein a timely filed proper terminal disclaimer is filed, and the claims are limited to the elected species as follows would be allowable:
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.
Claims rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this office action, wherein a timely filed proper terminal disclaimer is filed, and the claims are limited to the compound characterized by containing any one of the following three cores, would be allowable:
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or
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.
Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
U.S. Patent Application Publication No. 2023/0124696, which is the pre-grant publication corresponding to the present application, and
Chinese Patent No. CN116925148 A, which teaches compounds inclusive of the compounds of the present formula I, but the date is not good;
U.S. Patent No. 12,497,420, U.S. Patent No. 12,459,966, and U.S. Patent No. 11,731,995, each of which teaches compounds similar to the compound of the present formula I, except the compounds therein are missing a ring corresponding to the present ring D.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm. 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, Mark F Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737