DETAILED ACTION
This Office Action is in response to the Applicant’s Amendment field 01/16/26.
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 rejection of Claims 22 and 23 on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 3, 4, 8-11, 13-16, and 19 of U.S. Patent No. 11,711,976 B2 as set forth in the Non-Final Rejection filed 07/17/25 is overcome by the cancellation of the claims.
The rejection of Claims 20, 21, 24-36, 38, and 39 on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 3, 4, 8-11, 13-16, and 19 of U.S. Patent No. 11,711,976 B2 as set forth in the Non-Final Rejection filed 07/17/25 is NOT overcome by the Applicant’s amendments.
The objection to Claim 26 as set forth in the Non-Final Rejection filed 07/17/25 is overcome by the Applicant’s amendments.
The rejection of Claim 32 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 Non-Final Rejection filed 07/17/25 is overcome by the cancellation of the claim.
The rejection of Claims 20, 21, and 34-36 under 35 U.S.C. 102(a)(1) as being anticipated by Turek et al. (Collect. Czech. Chem. Commun. 2005, 70(3), pages 339-349) as set forth in the Non-Final Rejection filed 07/17/25 is overcome by the Applicant’s amendments.
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 20, 21, 24-31, 33-36, 38, and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 3, 4, 8-11, 13-16, and 19 of U.S. Patent No. 11,711,976 B2 (herein referred to as “Stoessel et al.”). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Stoessel et al. claims the following compound:
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(Claim 1) where Ra-b = aryl group (such as phenyl, which can be easily envisioned by one of ordinary skill in the art), Ara-b = aromatic ring system such as phenyl, Q = acceptor = Q1-L1- (with Q1 = electron-withdrawing group and L1 = aromatic ring system such as phenylene), HL = donor group, and Ra and Rb “are joined by a ring closure”; Stoessel et al. claims any one of the following groups for HL:
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(Claim 3), including more narrower forms such as:
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(Claim 4) where p = 0-6 and Ar2 includes the following:
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(Claim 5) or
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(Claim 6). Stoessel et al. further claims any one of the following groups for Q1:
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(Claim 8) where R1 = groups such as H and phenyl, as well as any one of the following groups:
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(Claim 9). Stoessel et al. claims Q1 = aromatic or heteroaromatic ring system which has 5-60 aromatic ring atoms and has one or more electron-withdrawing substituents (Claim 10) such as F (Claim 11). Stoessel et al. claims an oligomer comprising the above inventive compound as substituent (instead of hydrogen) (Claim 13); Stoessel et al. further claims a composition comprising the above inventive compound and further compound such as host material (Claim 14). Stoessel et al. claims TADF material or host material comprising the above inventive compound (Claim 16), and a formulation comprising its inventive compound and at least one solvent (Claim 15). Stoessel et al. claims an organic electroluminescent (EL) device comprising the above inventive compound (Claim 19).
Allowable Subject Matter
Claims 40 and 41 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 closest prior art is provided by Lee et al. (WO 2016/159479 A1), which discloses compounds of the following form:
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where REDG = electron-donating group and REWG = electron-withdrawing group ([0020]-[0023]). An embodiment is disclosed:
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(page 21). However, it is the position of the Office that neither Lee et al. singly nor in further combinations with any other prior art discloses the specific compounds as recited in the claims, particularly in regards to the nature of the substituent groups attached to the core benzene group.
Response to Arguments
Applicant’s arguments on pages 33-35 with respect to the deficiencies of the previously cited prior art have been fully considered and are persuasive in view of the Applicant’s amendments. Hence, the rejection has been withdrawn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY L YANG whose telephone number is (571)270-1137. The examiner can normally be reached Mon-Fri, 6am-3pm.
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/JAY YANG/Primary Examiner, Art Unit 1786
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