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 .
This office action is responsive to the Amendment and Remarks filed 31 July 2026. Claims 1-20 remain pending and presently under consideration in this application.
Election/Restrictions
Regarding paragraph 3 of the previous office action on the merits, the Examiner notes that the comment therein was due in part to the fact that claims 1, 18 and 20 each fail to particularly point out and distinctly claim that at least one of RA, RB, RC, and RD in the compound of formula I comprises a first structure selected from Formula II-VI and a second structure selected from Formula II-VI, which may be the same or different. The elected species characterized by comprising a first structure of formula IV and a second structure of formula II does indeed satisfy that condition.
Response to Amendment
Applicant’s amendments have failed to satisfactorily address the rejection of claim under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraph 7 of the previous office action on the merits. Please refer to the following paragraph for additional comments.
The rejection of claims under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraph 8 of the previous office action on the merits, are hereby withdrawn in view of applicant’s amendments to the same.
Response to Arguments
Applicant's arguments filed 31 July 2026 in response to the rejection of claims under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraph 7 of the previous office action on the merits, said arguments to the effect that the claims have been amended to satisfactorily address said rejection, have been fully considered but they are not persuasive. For additional comments please see the following paragraph 11. Contrary to applicants’ argument on page 56 of the response filed 31 July 2026, the claims, as presently written do not require that “at least one of RA, RB, RC, and RD also comprises a second structure selected from Formula II-VI”.
Applicant's arguments filed 31 July 2026 with respect to the rejection of claims under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 6 and 9 of the previous office action on the merits, have been fully considered and are persuasive. The aforementioned rejections have been withdrawn.
Applicant's arguments filed 31 July 2026 with respect to the rejection of claims under 35 U.S.C. 102(a)(1) over Kwong et al. (‘799), as set forth in paragraph 12 of the previous office action on the merits, have been fully considered and are persuasive. The aforementioned rejection has been withdrawn.
Applicant’s arguments filed 31 July 2026 with respect to the alleged allowability of the claims have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 112(a)
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 1-20 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.
The specification as originally filed does not support the invention as is now claimed in each of amended claims 1, 18 and 20, i.e., wherein the compound of formula I contains substituents RA, RB, RC, and RD which may be “a structure of Formula II, a structure of Formula III, a structure of Formula IV, a structure of Formula V, a structure of Formula VI, and combinations thereof”, wherein: (a) RA comprises a first chemical structure selected from Formula II-VI and at least one of RB, RC, and RD comprises a second chemical structure selected from Formula II-VI, (b) RB comprises a first chemical structure selected from Formula II-VI and at least one of RA, RC, and RD comprises a second chemical structure selected from Formula II-VI, (c) RC comprises a first chemical structure selected from Formula II-VI and at least one of RA, RB, and RD comprises a second chemical structure selected from Formula II-VI, and/or (d) RD comprises a first chemical structure selected from Formula II-VI and at least one of RA, RB, and RC comprises a second chemical structure selected from Formula II-VI. This may easily be rectified by amended each of claims 1, 18 and 20 to recite “at least one of RA, RB, RC, and RD in the compound of formula I comprises a first structure selected from Formula II-VI and a second structure selected from Formula II-VI, which may be the same or different”.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-20 are 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.
Amended Claims 1, 18 and 20 are rejected as being vague and indefinite when they each recite “wherein RA, RB, RC, and RD are each independently selected from the group consisting of hydrogen, deuterium, halogen, alkyl, cycloalkyl, heteroalkyl, heterocycloalkyl, boryl, arylalkyl, alkoxy, aryloxy, amino, silyl, germyl, alkenyl, cycloalkenyl, heteroalkenyl, alkynyl, aryl, heteroaryl, acyl, carboxylic acid, ether, ester, nitrile, isonitrile, sulfanyl, sulfinyl, sulfonyl, phosphino, selenyl, a structure of Formula II, a structure of Formula III, a structure of Formula IV, a structure of Formula V, a structure of Formula VI, and combinations thereof” (emphasis added); the scope of the protection sought is not clear in light of the additional recitations that “wherein at least one of RA, RB, RC, and RD comprises a first chemical structure selected from Formula II-VI” and “wherein at least one of RA, RB, RC, and RD comprises a second chemical structure selected from Formula II-VI”. Amended claims 1, 18 and 20 each fails to particularly point out and distinctly claim that at least one of RA, RB, RC, and RD in the compound of formula I comprises a first structure selected from Formula II-VI and a second structure selected from Formula II-VI, which may be the same or different.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wolohan et al. (U.S. Patent Application Publication No. 2020/0168812).
Wolohan et al. discloses a compound, the corresponding use thereof said compound in an organic light-emitting device, and the corresponding use thereof said organic light-emitting device in a consumer product, characterized in that said compound is inclusive of the compound of the present formula I characterized by comprising a substituent comparable to the present RA, RB, RC, and RD being at least one first group inclusive of the present formula (II) through (VI) and a substituent comparable to the present RA, RB, RC, and RD being at least one second group inclusive of the present formula (II) through (VI), as generally represented therein by any one of
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(page 30).
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/062,118 (corresponding to U.S. Patent Application Publication No. 2023/0192636). Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to a compound, the corresponding use thereof said compound in an organic light-emitting device, and the corresponding use thereof said organic light-emitting device in a consumer product, characterized in that said compound is inclusive of the compound of the present formula I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm.
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, Anthony J Zimmer can be reached at (571)270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737
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