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
Specification
The specification is objected to. Specifically, paragraphs 0009, 0010, and 0011 of Applicants specification include illegible structures which need to be corrected. This can be seen in Applicants pre-grant publication US 2023/0167097 (paragraphs 0010-0012) as indicated by the question marks.
Additionally, the specification is objected to for failing to provide proper antecedent basis for the structures recited in each of claims 8 and 12. See 37 C.F.R. 1.75(d)(1) and MPEP § 608.01(o).
Claim Objections
Claim 8 is objected to. Applicants should insert “and” between compounds A-713 and A-714 to be consistent with Markush claim language.
Claim 13 is objected to. Applicants should insert “and” between compounds GD75 and GD76 to be consistent with Markush claim language.
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.
Claims 2, 4, 5, 6, 7, 11, 13, and 14 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation in the same claim may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, each of claims 2, 4, 5, 6, 7, 11, 13, and 14 recites broad Markush groups, and these claims also recite preferable Markush groups which are the narrower. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. To overcome this rejection, Applicants should remove all instances of “preferably” and “more preferably” as found in the above claims. The narrower Markush groups should also be removed. Should Applicants wish to include the narrower Markush groups, they may do so in new dependent claims.
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, 7, 9, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ha et al. (KR 20190060585). Copies of the original and a machine translation of Ha et al. are included with this Office action.
Claims 1-3 and 7: Ha et al. (KR 20190060585) teaches the compound
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(page 27). This compound anticipates Formula 1 of claim 1. As applied to formula 1, this compound has variable X equal to O (which also anticipates claim 2), variables X1 through X6 equal to CRx with all Rx equal to hydrogen atoms (which also anticipates claim 3), Ar is equal to an unsubstituted phenyl group (which also anticipates claim 7), ring A is equal to an unsubstituted phenylene (all available R1 groups are equal to hydrogen atoms), ring B is equal to a cyano-substituted phenyl group (one R2 is equal to CN and all other available R2 groups are equal to hydrogen atoms), and two adjacent Ry groups are joined to form a ring.
Claim 4: Rings A and B are both equal to a benzene ring, thereby anticipating claim 4.
Claim 6: In the compound above, one R2 group is cyano and all other available R2 groups are equal to hydrogen, thereby anticipating claim 6.
Claim 9: The compounds taught by Ha et al., which includes the compound above, are employed in organic light-emitting diodes as an electron transporting material. The employment of the compound shown in claim 1 above in the manner taught by the device examples of Ha et al. is at once envisaged. Such devices comprise an anode, a hole transport region, an emission region, an electron transporting region comprising the compound above, and a cathode, thereby anticipating claim 9.
Claim 15: The device examples show that the electron injection layer comprises a mixture of LiQ and one of the inventive compounds taught therein. A mixture comprising LiQ and the compound shown in claim 1 above anticipates the limitations of claim 15, which is drawn to a compound composition comprising the compound of claim 1. Additionally, the simple act of isolating and characterizing the compound shown above would necessarily require preparing a composition, such as preparing an NMR sample.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 27 of copending Application No. 17/989,164 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. Some of the compounds recited in claim 27 of the reference application anticipate the limitations of Formula 1 of claim 1. For example compound A-44 of claim 27 is the same as compound A-2 of claim 8. Compound A-44 of claim 27 of the reference application also anticipates dependent claims 2-7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/189,814 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. Some of the compounds recited in claim 12 of the reference application anticipate the limitations of Formula 1 of claim 1. For example compound B-175 of claim 12 is the same as compound A-3 of claim 8. Compound B-175 of claim 12 of the reference application also anticipates dependent claims 2-7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 10 and 12 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. Additionally, claims 5, 8, 11, 13, and 14 are free of any prior art and double patenting rejections. The compound taught by Ha et al. as described above does not satisfy the limitations of claim 5 which exclude embodiments where adjacent Ry groups are joined to form a ring. Ha et al. also does not teach or suggest the specific compounds recited in claim 8. Further, the inventive compounds taught by Ha et al. are employed in an electron transporting layer and/or an electron injection layer (device examples and claim 12 of Ha et al.). And even if one having ordinary skill in the art would have found it obvious to employ the inventive compounds taught therein in the emission layer, as recited in claim 10, claim 10 requires that the emissive layer comprises a first metal complex. The emission layers taught by Ha et al. do not comprise any metal complexes as shown on page 79. Claims 11-14 are allowable by virtue of their dependency on claim 10.
Kim et al. (US 2025/0127043) is a related prior art teaching. Kim et al., which has an earliest effective filing date prior art Applicants filing date but after Applicants (unperfected) foreign priority dates, teaches compounds of chemical formula 1 as taught in paragraph 0008. Paragraph 0054 of Kim et al. teaches newly 500 specific compounds with only four compounds including a cyano group (pages 18, 24, 42 and 73). However, none of these compounds satisfy Formula 1 of claim 1. However, the overall teachings of Kim et al. are insufficient for one having ordinary skill in the art to prepare a compound which satisfies Formula 1 as instantly claimed. Only through the use of improper hindsight reconstruction could such compounds be envisioned.
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