DETAILED ACTION
Claims 1-15 are pending in the present application.
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 .
Priority
The claim to priority as a 371 filing of PCT/EP2021/070875 filed on July 26, 2021, which claims benefit to EP 20188131.5 filed on July 28, 2020 and EP 21180305.1 filed on June 18, 2021 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The present claims are drawn to compounds of Formula I:
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, where n is 1-4, m is 0-2, and at least one of R1-R3 is a substituted C6 to C24 aryl group being substituted by CN or partially or fully fluorinated C1 to C12 alkyl. L can be any neutral ligand. This leads to numerous core structures depending on the value of m and n and the identity of the L ligand and the
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ligand.
The specification describes an aryl group as “an aromatic group comprising no hetero atom,” and that “an aryl having at least 9 C-atoms may comprise at least one fused aryl ring.” Therefore, a C6 to C24 aryl group required on the
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ligand can be fused or not fused leading to numerous core structures.
The specification identifies 76 compounds on pages 27-32 with m equal to 0, n equal to 2 or 3, and only the presence of C6 aryl rings. Additionally, only three compounds, having the structure
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are exemplified by a working example on pages 61-62 of the specification.
The Applicant is reminded of the written description guidelines set out by the USPTO in MPEP 2163:
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A), above), reduction to drawings (see i)(B), above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus (see i)(C), above). See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
While the genus is described by a generic formula, the generic formula is not sufficiently detailed to show that the Applicant was in possession of the full scope of the claimed invention at the time of filing. Namely, that the definitions described above, while not being indefinite, are not sufficiently detailed in order to stand on their own as being adequately described. Therefore, the “representative number of species” standard is used to determine whether the claims are adequately described. MPEP 2163 goes on to describe what a "representative number of species" is:
What constitutes a "representative number" is an inverse function of the skill and knowledge in the art. Satisfactory disclosure of a "representative number" depends on whether one of skill in the art would recognize that the applicant was in possession of the necessary common attributes or features of the elements possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. See, e.g., Eli Lilly. Description of a representative number of species does not require the description to be of such specificity that it would provide individual support for each species that the genus embraces. For example, in the molecular biology arts, if an applicant disclosed an amino acid sequence, it would be unnecessary to provide an explicit disclosure of nucleic acid sequences that encoded the amino acid sequence. Since the genetic code is widely known, a disclosure of an amino acid sequence would provide sufficient information such that one would accept that an applicant was in possession of the full genus of nucleic acids encoding a given amino acid sequence, but not necessarily any particular species. Cf. In re Bell, 991 F.2d 781, 785, 26 USPQ2d 1529, 1532 (Fed. Cir. 1993) and In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994). If a representative number of adequately described species are not disclosed for a genus, the claim to that genus must be rejected as lacking adequate written description under 35 U.S.C. 112, para. 1.
The species described in the specification do not cover the entire genus such that it is a representative sample of the genus as the species are close together in structure and only describe an extremely small portion of the claimed genus. Therefore, the claims lack written description and are properly rejected under 35 U.S.C. 112(a).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (Acta Crystallographica Section C, 2004, m147-m149).
Chen et al. teaches the compound
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, which reads on the claims where M is Cu, m is 0, n is 2, each R1 and R3 is C1 alkyl, and each R2 is a C6 aryl group substituted by CN. See formula II, page m147.
With respect to claim 8, the aryl group is D1.
With respect to claim 9, the compound is E1.
With respect to claim 10, the compound is G3.
With respect to claim 13, a layer would comprise and solid, whether it was adhered or not to another surface. Therefore, a semiconductor layer is anticipated by Chen et al.
Claims 1-3, 5, 8, 9 and 11-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Dorok et al (WO 2021/048044).
Dorok et al. teach the compound:
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, which reads on the claims where m is 0, n is 4, M is Ce, R2 is H, and R1 and R3 are C6 aryl groups substituted by C1 fully fluorinated alkyl. See page 68, Synthesis of 5. Dorok et al. teaches that the compound is to be used as a doped semiconductor matrix material in devices such as semiconductors and batteries. See page 8, lines 25-34.
With respect to claim 2, M is a rare earth metal.
With respect to claim 8, R1 is D3.
With respect to claim 9, the compound is E33.
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 1-5 and 8-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 11-16 of copending Application No. 18/003,615 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The ‘615 application claims compounds such as formula E33 in claim 11:
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, which corresponds to the present claims where R1 is C6 aryl substituted by C1 fully fluorinated alkyl, R2 is H, and R3 is C5 heteroaryl substituted by C1 fully fluorinated alkyl. Claims 2-5 and 12-16 map to present claims 2-5 and 11-15 respectively.
For present claim 8, R1 is D3.
For present claim 9, the compound is E35.
For present claim 10, compounds G64-G66 match the above compound where M is Fe, Al, and Cu. Claim 2 of the ‘615 application allows for Cu(II), Fe(III), and Al(III) to be M. Therefore, claim 10 is anticipated.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 8, and 11-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-33 of copending Application No. 18/692,191 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The ‘191 application claims compounds including
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as shown in claim 24. This compound reads on the pending claims where M is Cu, m is 0, n is 2, R2 is C1 alkyl, and R1 and R3 are C6 aryl groups substituted by C1 fully fluorinated alkyl.
With respect to present claim 8, R1 is D3.
With respect to present claims 11-15, claims 26, 27, and 30-33 of the ‘191 application claim semiconductor materials and electronic devices including batteries with the same compounds.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-15 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph Kosack whose telephone number is (571)272-5575. The examiner can normally be reached M-F 8:00-4:30.
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/JOSEPH R KOSACK/Primary Examiner, Art Unit 3991