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 .
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.
Claims 1-24 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 and 2 are rejected as being vague and indefinite when they each recite “wherein the light-emitting material is configured to emit fluorescent light” (emphasis added); the scope of the protection sought is not clear. Amended claims 1 and 2 each fail to particularly point out and distinctly claim the contents of the claimed light-emitting device.
Amended claims 1 and 2 are rejected as being vague and indefinite when it recites “wherein the organic compound is configured to convey triplet excitation energy into light emission” (emphasis added); the scope of the protection sought is not clear. Amended claims 1 and 2 each fail to particularly point out and distinctly claim the contents of the claimed light-emitting device.
Amended claim 1 is rejected as being vague and indefinite when it recites “wherein the first material is configured to emit delayed fluorescent light” (emphasis added); the scope of the protection sought is not clear. Amended claim 1 fails to particularly point out and distinctly claim the contents of the claimed light-emitting device.
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 and 35 USC § 103
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.
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.
Claims 1-24 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ohsawa et al. (U.S. Patent Application Publication No. 2021/0057667).
Ohsawa et al. teaches a light-emitting device and corresponding use thereof said light-emitting device in an apparatus, display device and/or electronic device, characterized in that said light-emitting device comprises a first electrode, a second electrode, and a first layer comprising a light-emitting material, a first organic compound, and a first material, wherein the light-emitting material emits fluorescent light, wherein the first organic compound converts triplet excitation energy into light emission, and wherein the first material emits delayed fluorescent light at room temperature.
Ohsawa et al. discloses all the limitations of a claim except a property or function, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02. Although Ohsawa et al. does not specify the claimed absorption spectrum of the light-emitting material or the spectrum of light emitted by the first organic compound, since a composition of matter is claimed, and Ohsawa et al. discloses the claimed contents, as well as that the first material emits fluorescent light at room temperature, it is asserted that the light-emitting device of et al. inherently possesses the recited absorption spectrum of the light-emitting material or the spectrum of light emitted by the first organic compound, and that the claimed light-emitting device lacks novelty, absent object evidence to the contrary. Assuming arguendo that the light-emitting device of Ohsawa et al. does not inherently possess the recited absorption spectrum of the light-emitting material or the spectrum of light emitted by the first organic compound, then Ohsawa et al. is also relied upon under 35 U.S.C. § 103 because it would have been obvious to one of ordinary skill in the art to modify the amount of each of the components therein with reasonable expectation of achieving the advantages generally taught therein, absent object evidence to the contrary.
Claims 1-24 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ohsawa et al. (U.S. Patent No. 9,362,517).
Ohsawa et al. teaches a light-emitting device and corresponding use thereof said light-emitting device in an apparatus, display device and/or electronic device, characterized in that said light-emitting device comprises a first electrode, a second electrode, and a first layer comprising a light-emitting material, a first organic compound, and a first material, wherein the light-emitting material emits fluorescent light, wherein the first organic compound converts triplet excitation energy into light emission, and wherein the first material emits delayed fluorescent light at room temperature.
Ohsawa et al. discloses all the limitations of a claim except a property or function, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02. Although Ohsawa et al. does not specify the claimed absorption spectrum of the light-emitting material or the spectrum of light emitted by the first organic compound, since a composition of matter is claimed, and Ohsawa et al. discloses the claimed contents, as well as that the first material emits fluorescent light at room temperature, it is asserted that the light-emitting device of et al. inherently possesses the recited absorption spectrum of the light-emitting material or the spectrum of light emitted by the first organic compound, and that the claimed light-emitting device lacks novelty, absent object evidence to the contrary. Assuming arguendo that the light-emitting device of Ohsawa et al. does not inherently possess the recited absorption spectrum of the light-emitting material or the spectrum of light emitted by the first organic compound, then Ohsawa et al. is also relied upon under 35 U.S.C. § 103 because it would have been obvious to one of ordinary skill in the art to modify the amount of each of the components therein with reasonable expectation of achieving the advantages generally taught therein, absent object evidence to the contrary.
Claims 1-24 are rejected under 35 U.S.C. 102(a)() as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ishisone et al. (U.S. Patent No. 10,998,516).
Ishisone et al. teaches a light-emitting device and corresponding use thereof said light-emitting device in an apparatus, display device and/or electronic device, characterized in that said light-emitting device comprises a first electrode, a second electrode, and a first layer comprising a light-emitting material, a first organic compound, and a first material, wherein the light-emitting material emits fluorescent light, wherein the first organic compound converts triplet excitation energy into light emission, and wherein the first material emits delayed fluorescent light at room temperature.
Ishisone et al. discloses all the limitations of a claim except a property or function, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02. Although Ishisone et al. does not specify the claimed absorption spectrum of the light-emitting material or the spectrum of light emitted by the first organic compound, since a composition of matter is claimed, and Ishisone et al. discloses the claimed contents, as well as that the first material emits fluorescent light at room temperature, it is asserted that the light-emitting device of et al. inherently possesses the recited absorption spectrum of the light-emitting material or the spectrum of light emitted by the first organic compound, and that the claimed light-emitting device lacks novelty, absent object evidence to the contrary. Assuming arguendo that the light-emitting device of Ishisone et al. does not inherently possess the recited absorption spectrum of the light-emitting material or the spectrum of light emitted by the first organic compound, then Ishisone et al. is also relied upon under 35 U.S.C. § 103 because it would have been obvious to one of ordinary skill in the art to modify the amount of each of the components therein with reasonable expectation of achieving the advantages generally taught therein, absent object evidence to the contrary.
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, 2, 4, 5, 10-13, 15, 16, and 21-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 15, and 18-29 of copending Application No. 17/052,245 (corresponding to U.S. Patent Application Publication No. 2021/0057667). 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 light-emitting device and corresponding use thereof said light-emitting device in an apparatus, display device and/or electronic device, characterized in that said light-emitting device comprises a first electrode, a second electrode, and a first layer comprising a light-emitting material, a first organic compound, and a first material, wherein the light-emitting material emits fluorescent light, wherein the first organic compound converts triplet excitation energy into light emission, and wherein the first material emits delayed fluorescent light at room temperature.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 4, 5, 10-13, 15, 16, and 21-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 9,362,517. 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 light-emitting device and corresponding use thereof said light-emitting device in an apparatus, display device and/or electronic device, characterized in that said light-emitting device comprises a first electrode, a second electrode, and a first layer comprising a light-emitting material, a first organic compound, a second organic compound and a first material, wherein the light-emitting material emits fluorescent light, the first organic compound converts triplet excitation energy into light emission, and said second compound forms an exciplex.
Claims 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10,998,516. 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 light-emitting device and corresponding use thereof said light-emitting device in a display device characterized in that said light-emitting device comprises a light-emitting layer containing a first organic compound, a second organic compound, and a third organic compound, wherein a LUMO level of one of the first organic compound and the second organic compound is higher than or equal to a LUMO level of the other of the first organic compound and the second organic compound, wherein a HOMO level of the one of the first organic compound and the second organic compound is higher than or equal to a HOMO level of the other of the first organic compound and the second organic compound, wherein the first organic compound and the second organic compound, in combination, are capable of forming an exciplex, wherein the first organic compound is capable of converting triplet excitation energy into light emission at room temperature, wherein the third organic compound is capable of converting singlet excitation energy into light emission, and wherein light emitted from the light-emitting layer comprises light emitted from the third organic compound.
Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: U.S. Patent Application Publication No. 2024/0130225, which is the pre-grant publication corresponding to the present application.
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.
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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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