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 .
Claims 1-16 are pending in the instant application. Claims 8-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected subject matter. The withdrawn subject matter is patentably distinct from the elected subject matter as it differs in structure and element and would require separate search considerations. In addition, a reference which anticipates one group would not render obvious the other. Claims 1-3 are rejected. Claims 4-7 are objected.
Priority
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statements
The information disclosure statements filed on December 18, 2023 and June 14, 2023 have been considered and signed copies of form 1449 are enclosed herewith.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, in the response filed on November 5, 2025 is acknowledged. The restriction requirement is still deemed proper and is hereby made final.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 111362813 A1.
CN 111362813 A1 discloses compounds, such as compound 215 (see page 13), for example, which anticipates a compound of Formula I or Formula 1-1 of the instant claims wherein X1-X10 are CR11-R20; R11-R18 and R20 are hydrogen; n is 0 or n is 1 and L1 is a direct bond; R7 is C6 aryl; R1-R6 are hydrogen; R19 is a represented by Formula 1-4 wherein m is 0 or m is 1 and L2 is a direct bond, Ra is a substituted C13 aryl and Rb is a substituted C6 aryl.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-9 of copending Application No. 18/038,602 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons given below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Copending Application No. 18/038,602 claims heterocyclic compounds represented by Formula 1 which fit within the scope of instant compounds of Formulae 1, 1-1, 1-2, and 1-3 (i.e., R7 of the instant compounds can include a substituted or unsubstituted C2 to C60 heteroaryl group). The compounds disclosed in the reference can be used in an organic light-emitting device and a composition for an organic layer similar to the instant compounds. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention through routine experimentation to arrive at a compound of the instant claims in view of the reference with a reasonable expectation of success. The motivation would have been to find the optimal compounds for the above-mentioned use. Thus, a prima facie case of obviousness has been established.
Claim Objections
Claims 4-7 are objected to for depending on a previous rejected claim.
Conclusion
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622