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 .
Response to Amendment
The applicant's amendment of 07/01/2026 has been entered.
Claim 1-3, 6-9, 11-12, and 18 are amended due to the applicant's amendment.
Claims 1-20 pending.
The objections to claims 1-3, 6-9, 11-12, and 18 as set forth in the previous Office action is overcome due to the applicant's amendment. The objections are withdrawn.
The rejection of claims 2-9 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paragraph, as failing to comply with the written description requirement as set forth in the previous Office action is withdrawn.
The rejection of claims 1 and 10-20 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 is revised to reflect the amended claim language and maintained.
The rejection of claims 1-20 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 as set forth in the previous Office action is overcome due to the applicant's amendment.
The rejection of claims 1-11, 13, and 15-19, on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 13, 18-19, and 14-17 of U.S. Patent No. US-11512101-B2 as set forth in the previous Office action is revised to reflect the amended claim language and maintained.
Response to Arguments
The applicant’s arguments on pages 21-23 of the reply dated 07/01/2026 with respect to the rejection of claims 1 and 10-20 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 as set forth in the previous Office Action have been fully considered but they are not persuasive.
Applicant's argument – The applicant argues that the phrase "a triphenyl-N- heteroaromatic-ring substituted with both a cyano group and a silyl group" is intended to describe the structural features of compound H as disclosed in the specification, and is fully supported by the Formula (I) disclosure and exemplary compounds set forth in paragraphs [0013] to [0036].
Examiner's response – There is no recitation in the specification that the compound H in the composition is a triphenyl-N-heteroaromatic-ring substituted with both a cyano group and a silyl group outside the scope of Formula (I). For example, there does not appear to be support for wherein the N-heteroaromatic-ring is other than triazine, pyrimidine, or pyridine and is instead for example carbazole or isoquinoline. However, a triphenyl-isoquinoline substituted with a cyano and a silyl group would fall within the scope of claims 1 and 10-20 as currently recited. The compound of Formula (I) descried in paragraphs [0013]-[0036] and exemplary compounds 1 to 18 all show the case where the N-heteroaromatic-ring is a six-membered ring comprising one, two, or three nitrogen atoms, specifically triazine, pyrimidine, or pyridine. Therefore, it remains unclear that Applicant had possession at the time of filing the claimed invention wherein the compound H is a triphenyl-N-heteroaromatic-ring substituted with both a cyano group and a silyl group outside the scope of Formula (I) wherein the N-heteroaromatic-ring is other than triazine, pyrimidine, or pyridine.
The applicant’s arguments on page 23 of the reply dated 07/01/2026 with respect to the rejection of claims 1-11, 13, and 15-19, on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 13, 18-19, and 14-17 of U.S. Patent No. US-11512101-B2 as set forth in the previous Office action have been fully considered but they are not persuasive.
Applicant's argument -- The applicant requests reconsideration of the rejection in view of the amendments on page 23.
Examiner's response – Claims 1-9, 13, 18-19, and 14-17 of U.S. Patent No. US-11512101-B2 also read on the amended claims. The rejection is respectfully maintained.
Claim Objections
Claims 2 is objected to because of the following informalities: it is suggested that the apostrophe's in the definitions of X'1 and X'2, be changed from ʼ to ' for ease of reading.
Appropriate correction is required.
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 and 10-20 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.
Regarding claims 1 and 18, the claims recite "an organic electroluminescent device comprising a light emitting layer, organic electroluminescent device comprising: (i) 5-99% by weight of at least one host compound H comprising a triphenyl-N-heteroaromatic-ring substituted with both a cyano group and a silyl group." However, there is no recitation in the specification that the compound H in the composition is a triphenyl-N-heteroaromatic-ring substituted with both a cyano group and a silyl group outside the scope of Formula (I). In the specification, it is recited that "the organic compound H of the present invention composed of a cyano- and silyl-substituted triphenyl-N-heteroaromatic-ring leads to particularly beneficial properties" (this is the only recitation of "a cyano- and silyl-substituted triphenyl-N-heteroaromatic-ring"); however, this is notably after compound H has already been described as of Formula (I) (page 1 and later on page 4). Further, none of the exemplary compounds/devices show a triphenyl-N-heteroaromatic-ring substituted with both a cyano group and a silyl group outside the scope of Formula (I). All further recitations of compound H appear to be referring to Formula (I). Consequently, it is unclear that Applicant had possession at the time of filing the claimed invention wherein the compound H is a triphenyl-N-heteroaromatic-ring substituted with both a cyano group and a silyl group outside the scope of Formula (I).
Claims 10-17 are dependent on claim 1 and therefore, for the reasons outlined above with respect to claim 1, these claims also contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 19-20 are dependent on claim 18 and therefore, for the reasons outlined above with respect to claim 18, these claims also contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
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 1-11, 13, and 15-19, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 13, 18-19, and 14-17 of U.S. Patent No. US-11512101-B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of U.S. Patent No. US-11512101-B2 recites the organic electroluminescent device according to claim 9, wherein the light-emitting layer B comprises: (i) 5-99% by weight of at least one host compound H according to claim 1; (ii) 0.1-10% by weight of at least one NRCT emitter compound ENRCT; and (iiia) 0.9-94.9% by weight of at least one further host compound D not according to Formula (I); or (iiib) 0.9-94.9% by weight of at least one TADF compound ETADF not according to Formula (I); and optionally (iv) 0-94% by weight of a solvent, claim 9 of U.S. Patent No. US-11512101-B2 recites an organic electroluminescent device comprising a light-emitting layer B containing at least one organic compound H according to claim 1 as host, and claim 1 of U.S. Patent No. US-11512101-B2 recites an organic compound H of Formula (I), which is a compound comprising a triphenyl-N-heteroaromatic-ring substituted with both a cyano group and a silyl group, meeting instant claims 1-2 and 18. Further, claims 2-8, 18-19, and 14-17 of U.S. Patent No. US-11512101-B2 correspond to instant claims 3-11, 13, and 15-17, respectively, and claim 14 of U.S. Patent No. US-11512101-B2 also corresponds to claim 19.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth M. Dahlburg whose telephone number is 571-272-6424. The examiner can normally be reached Monday through Thursday, 9 a.m. to 4 p.m. ET, and alternate Fridays.
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/ELIZABETH M. DAHLBURG/Primary Examiner, Art Unit 1786
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