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.
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 1-4, 15-17, 19, and 21-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 14, 20-23, and 34 of U.S. Patent No. 12,557,543 B2 (herein referred to as “Zhang et al.”). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Zhang et al. claims the following Compound 312 (Claim 34) which has the form Ir(La)2(Lb) where La =
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such that ring A = ring B = aromatic ring having 6 carbon atoms (benzene), Y = O, R = substituted alkyl having 3 carbon atoms (substituted propyl), Ri = unsubstituted alkylsilyl having 1 carbon atom (TMS), Rii = hydrogen, and X1-2 = CRx (with Rx = hydrogen) of Applicant’s Formula 1 and Lb =
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such that Xc = Xd = O, Rc = hydrogen, and Ra-b = substituted alkyl having 3 carbon atoms (substituted propyl) in the formula for Lb as recited in Claim 15 (with M = Ir, m = 2, b = 1, and q = 0); R7 = hydrogen and R1-6 = unsubstituted alkyl group having 2 carbon atoms in the formula for Lb as recited in Claim 17; alternative ligands corresponding to La are claimed, including the following:
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(Claim 14) such that two Ris = joined to form a ring (benzofuran) of Applicant’s Formula 1; ring C = heteroaromatic ring having 4 carbon atoms (benzofuran) and Riii = substituted alkyl group having 3 carbon atoms (substituted propyl) of Applicant’s Formula 1’. Zhang et al. further claims an organic electroluminescent (EL) device comprising a pair of electrodes, interposed therein a light-emitting layer (which emits red or white light) comprising host material in combination with its inventive metal complex (Claims 20-23).
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 1-25 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, which the other claims are dependent upon, and Claims 3, 5, 12, 14, 15, 17, and 19 recite structure of ligands comprising dashed lines which are nowhere defined. The Office has interpreted the dashed lines to represent single bonds to the metal of the metal complex for the purpose of this Examination.
Correction is required.
Claim 20 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.
Claim 20, which is dependent on Claim 19, recite the ligands La1 to La1906 which are nowhere defined. The Office has interpreted the ligands to respectively correspond to those as defined in Claim 14 for the purpose of this Examination.
Correction is required.
Claim Rejections - 35 USC § 103
8. 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.
9. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
10. Claims 1, 2, 15-17, 19, and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 110790797 A).
Examiner’s Note: The Office has relied on the Machine English translation of foreign document publication CN 110790797 A (herein referred to as “Wang et al.”) as the English equivalent. Unless otherwise noted, all figure, page, and paragraph numbers referenced herein refer to numbers found in the Machine English translation.
Wang et al. discloses metal complexes of the following form:
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where R1-3 = can form a fused ring with the ring in which they are bonded to ([0015]); an embodiment is disclosed:
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(page 19 of Wang et al.). However, Wang et al. does not explicitly disclose an embodiment comprising ligand La that fully conforms to Applicant’s Formula 1, particularly in regards to the position of ring A. Nevertheless, it would have been obvious to modify the complex above such that it fully conforms to it. The motivation is provided by the fact that the modification merely involves change in the bonding position of the fused benzene group (shown in the dotted box above), producing a positional isomer that can be expected to have highly similar chemical and physical properties; additional motivation exists, including the fact that the modification merely involves the selection of one possible embodiment selected from a highly finite list (with respect to the connection point of the fused benzene group) as envisioned by Wang et al.’s general formula, thus rendering the production predictable with a reasonable expectation of success. This would result in Y = O, R = hydrogen, ring A = ring B = aromatic ring having 6 carbon atoms (benzene), Ri = multiple substitutions which are joined to form a ring (benzene), Rii = hydrogen, and X1-2 = CRx (with Rxs = joined to form a ring (benzene)) of Applicant’s Formula 1 (for La); m = 2, n = 1, q = 0, and Lb =
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(with Xc = Xd = O, Rc = hydrogen, and Ra-b = substituted alkyl having 3 carbon atoms (substituted propyl)) of the formula M(La)m(Lb)n(Lc)q as recited in Claim 15 (corresponds to Lb31 as recited in Claim 19); R2 = R5 = R7 = hydrogen and R1 = R3 = R4 = R6 = unsubstituted alkyl having 2 carbon atoms (ethyl) in the formula for Lb as recited in Claim 17.
Wang et al. further discloses an organic electroluminescent (EL) device comprising a pair of electrodes, interposed therein a light-emitting layer comprising its inventive red light-emitting metal complexes ([0006]-[0008], [0091]-[0093], [0112]). The light-emitting layer further comprises CBP (comprising carbazole) as host material (present at 95%) ([0091]).
Conclusion
11. 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.
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, Jennifer A Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAY YANG/Primary Examiner, Art Unit 1786
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