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 .
Election/Restrictions
Claims 2 and 4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/18/2026.
Applicant's election with traverse of the species
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in the reply filed on 6/18/2026 is acknowledged. The traversal is on the ground(s) that the cited reference Duck does not disclose substitution at Z1 to Z3 of claimed formula 1. This is not found persuasive because the cited generic reference includes optional substitution at Z1 to Z3, and further Duck discloses examples with the claimed substitution:
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see rejection below.
The requirement is still deemed proper and is therefore made FINAL.
Allowable Subject Matter
The elected species is allowable over the prior art, and would be allowable if the ODP below was obviated by a Terminal Disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: the references discussed below do not disclose the elected species with its very specific combination of substituents with sufficient specificity to anticipate or make obvious the elected compound.
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 1-17 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-13 of copending Application No. 18022606 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims disclose the same generic formulae, the only differences being that:
the present claims require non-hydrogen substitution at Z1 to Z3 in Chemical Formula 1 whereas substitution at Z1 to Z3 is optional in the copending claims, however dependent copending claims explicitly include Z1 to Z3 substitution, for instance all the embodiments of copending claim 11, such as:
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the last or which is the elected compound with an additional phenyl substituent, and
the copending claims require the host compound in all the claims, making them more specific than, and therefore anticipatory of, the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Drawings
Fig. 6 is objected to for being illegible.
The drawings are not of sufficient quality to permit examination. Accordingly, replacement drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to this Office action. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
Applicant is given a shortened statutory period of TWO (2) MONTHS to submit new drawings in compliance with 37 CFR 1.81. Extensions of time may be obtained under the provisions of 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133). Failure to timely submit replacement drawing sheets will result in ABANDONMENT of the application.
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.
Claim(s) 1-8 and 10-17 is/are rejected under 35 U.S.C. 102a1 and 102a2 as being anticipated by Schaefer et al (US 20230137925 A1, WO 2021255698 A1).
Schaefer discloses OLEDs [abstract,0009,p24,p194 Compound 26, p196 Compound 27,p34,0149 p44] having light emitting layer comprising a boron compound of the formula I:
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. Specific examples that read on the elected Chemical Formula 1-2-2 in claim 5:
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Regarding the non-elected claims 2 and 4 as well as claim 7, specific examples include compounds that have Z1 to Z3 joined to form a ring:
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As host Schaeffer includes at least one anthracene compound substituted just as in the claims [0116, 0151, p44 et seq] and hydrogen include deuterium throughout Schaeffer [0016].
Claim(s) 1-2,4,6-12 and 15-17 is/are rejected under 35 U.S.C. 102a1 and 102a2 as being anticipated by Duck (WO 2020135953 A1, US 20220052265 A1).
Duck discloses OLEDs [abstract,p2,p40] having light emitting layer comprising a boron compound of the formula I:
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.
Regarding claim 9, Duck disclose the structure:
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[p40, 3rd line, 3rd embodiment].
The light emitting layer also includes a mixture of host materials [0244 of US document].
Claim(s) 1-2,4,6-8,10-13 and 15-17 is/are rejected under 35 U.S.C. 102a1 and 102a2 as being anticipated by Li et al (CN 111471061).
Li discloses OLEDs [abstract,examples, p30/34] having light emitting layer comprising a boron compound of the generic formula and exemplary compounds below and host compound BH-1:
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.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaefer et al (US 20230137925 A1, WO 2021255698 A1).
To one having ordinary skill in the art at time of the effective filing date of Applicant’s invention, the simpler compounds of claim 9, such as the structure below, would have been an obvious embodiment/variant of the compounds disclosed in Schaefer over the generic formula and similar embodiments. Given the similarities of the claimed compounds and that the simpler compounds fit within the generic formulae of Schafer with the disclosed substituents, the skilled artisan would expect the compounds to have the same if not similar properties:
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Yet, as stated by MPEP 2144.09:
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
In re Lohr and Spurlin (137 USPQ 548) teaches: When a new compound so closely related to a prior art compound as to be structurally obvious is sought to be patented based on the alleged greater effectiveness of the new compound for the same purpose as the old compound, clear and convincing evidence of substantially greater effectiveness is needed. Here there are no new properties, but merely an alleged improvement in the same property for use against the same pests.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duck (WO 2020135953 A1, US 20220052265 A1).
Similar to Schaefer above, the claimed compounds would have been obvious to one having ordinary skill in the art before the effective filing date of Applicant’s invention over the generic formula and similar specific embodiments of Duck, such as the compound below:
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm M-F.
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, Randy Gulakowski can be reached at 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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MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/ Primary Examiner, Art Unit 1766
Prosecution Insights