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
Response to Arguments
Applicants arguments and amendments, filed on 4/2/26, have been fully considered but they do not confer patentability on all of the instantly filed claims. The double patenting rejection against co-pending application 17/989,164 is withdrawn due to Applicants filing a terminal disclaimer which has been approved. The double patenting rejection against co-pending application 17/189,814 is wholly maintained. The objections to the specification and claims have been withdrawn in light of Applicants amendments. The 112(b) rejections which relied upon Applicants use of “preferably” and “more preferably” have been withdrawn in light of Applicants amendments. Applicants traverse the 102(a)(1) rejection to Ha et al. (KR 2019/0060585). Applicants argue that the compound relied upon by the Examiner does not read on the instantly filed claims. Specifically, Applicants argue that the Markush group claimed for variable Ry does not include a hydroxyl group or any group which is capable of forming a ring to form the ring structure recited in Ha et al. However, this argument is not persuasive. Independent claim 1 recites clearly and explicitly that “adjacent substituents Rx, Ry can be optionally joined to form a ring”. This limitation is treated as a separate limitation which is claimed outside the Markush group limitation for variable Ry. That is to say, the limitation that adjacent substituents of Ry may be optionally joined to form a ring is not “on its face” tethered to the groups recited in the Markush group for Ry. The argument by Applicants assumes that one reading independent claim 1 would understand that only the groups recited in the monovalent description of Ry may be used to form a ring. However, the claim as written does not limit the scope to such embodiments only.
Terminal Disclaimer
The terminal disclaimer filed on 4/2/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Application 17/989,164 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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, 15-17, and 20-22 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, 7, and 16: 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 claims 2 and 16), 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.
Claims 4 and 17: Rings A and B are both equal to a benzene ring, thereby anticipating claims 4 and 17.
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.
Claims 20 and 21: In the compound shown in claim 1 above, all R2 groups are hydrogen or cyano, thereby anticipating claims 20 and 21.
Claims 22: In the compound shown in claim 1 above, Ar is an unsubstituted phenyl, thereby anticipating claim 22.
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.
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 10-14, 18, 19, 23, and 24 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 for reasons already of record. Claims 5 and 8 are also free of any prior art rejections.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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