DETAILED ACTION
Claims 1, 2, and 7-15 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 .
Amendments
The amendment filed on June 11, 2026 has been acknowledged and has been entered into the present application file.
Rejections Overcome
The previous rejections over 35 U.S.C. 112, 102, and 103 have been overcome by Applicant’s reply.
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, 2, 7, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Perez et al. (Tetrahedron Letters, 2009, 960-962).
Perez et al. teaches the compound
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, which reads on the claims where n is 2, M is Co(II), R1 is
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, R2 is H, and R3 is C1 alkyl. See Scheme 1, compound 1a, page 960.
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, 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 and 12-16 map to present claims 2 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, 2, 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.
Response to Arguments
On page 17 of the remarks, the Applicant states that the Applicant is prepared to file a terminal disclaimer upon indication that the claims are otherwise allowable, and asks that the rejections be withdrawn or held in abeyance pending resolution of the other rejections. However, it is the policy of the Office that all applicable rejections be made and maintained in order to promote compact prosecution. Therefore, the rejections are maintained.
Conclusion
Claims 1, 2, and 7-15 are rejected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH R KOSACK/Primary Examiner, Art Unit 3991
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