DETAILED ACTION
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 .
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, 11-17 and 20-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 12-18 and 22-23 of copending Application No. 18/014,079 (Pub. No. 2024/0315132 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of one another. Specifically, the only difference between the pending claim 1 and the co-pending claim 1 is in the scope of Ar1:
Pending claim 1: aryl, -P(=O)(R3)(R4) or -Si(R5(R6)(R7)
Co-pending claim 1: heteroaryl, -P(=O)(R3)(R4) or -Si(R5(R6)(R7) .
However, since the linker L1 can be arylene or heteroarylene, one of ordinary skill in the art would draw a conclusion that, in the presently claimed compound, both cases of -L1-Ar1 being -arylene-heteroaryl and -L1-Ar1 being -heteroarylene-aryl would behave similarly when used in an OLED.
Pending claim 2 and co-pending claim 2 are obvious variants as cycloalkyl substituents would be expected to behave similar to alkyl substituents.
Pending claim 3 and co-pending claim 3 are obvious variants as cycloalkyl substituents would be expected to behave similar to alkyl substituents, and hydrogen can be expected for one of R1 and R2.
Pending claim 4 and co-pending claim 4 are obvious variants for the stated reasons.
Pending claims 11-17 and 20-21 and co-pending claims 12-18 and 22-23, pairwise, are obvious variants for the stated reasons.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 3 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 3 is inconsistent as it requires R1 and R2 to be selected from hydrogen, C1-C20 alkyl and C3-C20 alkyl and then requires at least one of R1 and R2 to be either a C1-C20 alkyl or a C3-C20 cycloalkyl, which is impossible as C3-C20 cycloalkyl is not an option.
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 1-9, 11-12 and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0167296 A1 to Kim et al.
Regarding claim 1, Kim et al. discloses an OLED (see the abstract) comprising the compound
PNG
media_image1.png
154
334
media_image1.png
Greyscale
which is exemplified by
PNG
media_image2.png
348
274
media_image2.png
Greyscale
(see page 22). This compound is representative of the claimed compound wherein R1 = R2 = C1 alkyl, L1 = heteroarylene substituted with a C6 aryl, and Ar1 = C6 aryl. Claim 1 is therefore unpatentable. See MPEP 2131.02(II). Claims 2-7 are also anticipated. A compound that reads on claim 8 is compound 17 on page 24:
PNG
media_image3.png
344
460
media_image3.png
Greyscale
.
The correspondence between this compound and the claimed compound is as follows: L1 = meta-phenylene and Ar1 = C6 aryl substituted with the following C15 heteroaryl group
PNG
media_image4.png
260
185
media_image4.png
Greyscale
.
An example that reads on claim 9 is compound 14 on page 24:
PNG
media_image5.png
398
268
media_image5.png
Greyscale
The correspondence between this compound and the claimed compound is as follows: n = 0 and Ar1 = S1 with y = z = 0 and R3 = heteroaryl group. The OLED comprises the compound in the electron transport layer (Table 1 on page 358), rendering claims 11-12 and 16-18 unpatentable.
Allowable Subject Matter
Claims 10, 19, 22 and 23 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.
The following is a statement of reasons for the indication of allowable subject matter: The compounds of claims 10 and the devices of claims 19, 22 and 23 are not disclosed or suggested by Kim et al., which represents the closest prior art of record. There are no teachings by Kim et al., either alone or in combination with other references, to render obvious the subject matter of claims 10, 19, 22 and 23.
Other Prior Art of Record
The compound of claim 1 is also disclosed by JP 2004/071380 A (see compound 17 on page 11).
Examiner’s Other Comments
Claim 13 is written as dependent on claim 1 and it repeats all the contents of claim 1. To safeguard against any inconsistencies resulted from claim amendments during the prosecution, it is more advisable to simply refer back to the compound of formula 1 of claim 1 and not repeat the contents of claim 1.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VU ANH NGUYEN whose telephone number is (571)270-5454. The examiner can normally be reached M-F 8:00 AM-5:00 PM.
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, ROBERT JONES can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VU A NGUYEN/Primary Examiner, Art Unit 1762
Prosecution Insights