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 .
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, 11-14, 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.
Regarding claims 1, 17, and 20, the claim does not describe the dashed line in formula II. It is unclear what the dashed lines mean. The Office will interpret the dashed lines as where formula II attaches to the RA groups.
Claims 2-7, 11-14, 16, 18, and 19, are rejected due to the dependence of the claims on claims 1 and 17.
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.
Claim(s) 1, 2, 4-9, 11-14, and 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xia et al. (US 9,831,447) (hereafter “Xia”).
Regarding claims 1, 2, 4-9, 11-14, and 16-20, Xia teaches an electroluminescent device comprising an anode, a light emitting layer, and a cathode (column 4 lines 14-21 and lines 64-67). Xia teaches that the light emitting layer comprises a host material and a dopant (column 96 lines 39-59). Xia teaches that the host material can be
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, and
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are a few examples (columns 96-98). Xia teaches that the dopant is a metal complex which comprises the following formula I,
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, and formula II
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, where the metal can be Ir or Pt (columns 9-95). Xia teaches that ligands for the metal complex can be
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, or
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are a few examples of one the ligands and the other ligand can be
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or
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are a few examples (columns 9-95). Xia teaches that the electroluminescent device can be used in consumer products (column 4 lines 14-21).
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, 2, 4-9, 11-14, and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,831,447. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 9,831,447 overlap in scope with the claims of the instant application. U.S. Patent No. 9,831,447 claims that the ligands of the metal complexes can have the following structure,
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are a few examples of one the ligands and the other ligand can be
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or
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. It would have been obvious to one of ordinary skill in the art to select the ligands that meet the limitations of the instant application to arrive at the applicant’s claimed invention. The claims of the instant application overlap in scope with the claims of U.S. Patent No. 9,831,447 and it would have been obvious to select the groups to arrive at the applicant’s claimed limitation.
Allowable Subject Matter
Claim 10 and 15 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:
The prior art fails to teach or make obvious claimed formula I, where one of X1-X4 is N, or the applicant’s claimed ligands and compounds in claims 10 and 15. The closest prior art, Xia et al. (US 9,831,447) (hereafter “Xia”), teaches that the dopant is a metal complex which comprises the following formula I,
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, and formula II
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, where the metal can be Ir or Pt (columns 9-95). Xia teaches that ligands for the metal complex can be
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are a few examples of one the ligands and the other ligand can be
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or
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are a few examples (columns 9-95). The prior art fails to teach or make obvious modifying the compounds of Xia to arrive at the applicant’s claimed invention; therefore, claims 10 and 15 comprise allowable subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The prior art Boureault et al. (US 2019/0237683) teaches a formula that is similar to the applicant’s claimed formula I and formula II, but does not specifically teach a ligand that meets the applicant’s claimed formulas.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW K BOHATY whose telephone number is (571)270-1148. The examiner can normally be reached Monday-Friday 7am-4pm.
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, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW K BOHATY/Primary Examiner, Art Unit 1759