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 .
Status of the Application
Claims 1-20 are pending, of which claims 3, 4, 6, 7 and 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1, 2, 5, 8-15 are under current examination.
Amendment necessitated new claim rejection as set forth below.
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 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.
(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.
Claims 1-2, 5 and 11-14 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Szigethy (US 9847497 B2).
Szigethy discloses organic electroluminescent compound comprising ligand LA, LB, LC genus and Metal M such as MLALBLC; IrLALBLC, Ir(LA)3 etc:
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Wherein genus for LA, LB and LC disclosed by the cited prior art is encompassed by the genus of the instant claims for LA, LB and LC (LB of the cited prior art is used as LA of the instant claims and LA of the cited prior art as LB of the instant claims) (entire patent, especially col 3, 4, 9-16, 25, 26, 29-33 and claims). The cited prior art discloses several examples of species of LA (i.e. LB of the instant claims) such as:
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The cited prior art discloses compounds comprising ligand LB, which matches with ligand LA of the instant claims
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, which reads on compounds with respect to LA of the instant claims 1-2 and 5, when at least one of X1-X5=N, for example X4=N or X3=X5=N and rest of X are C (satisfy proviso if X1=N, then X5=C; in this case X1=C therefore no restriction on X5); K=direct bond; Z=C; ring B=5-membered heterocyclic ring; and satisfy condition (1) two RB joined to form fused 6-membered carbocyclic ring. Above compounds matches definition of LB, when LB:
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The cited prior art further discloses compounds M(LA)x(LB)y(LC)z.
The cited prior art discloses examples of LC (all of which reads on the instant claims):
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Since the cited prior art reads on all the limitations of the instant claims 1-2, 5 and 11-14, these claims are anticipated.
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 1-2, 5 and 11-14 in the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 9847497 B2; and claims 1, 2, 5, 8-15 in the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12077550 B2, since the claims, if allowed, would improperly extend the “right to exclude" already granted in the patent.
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
The claims 1-2, 5 and 11-14, of instant application and claims 1-26 of U.S. Patent No. 9847497 B2 are drawn to compounds with overlapping scope; and claims 1, 2, 5, 8-15 in the instant application and claims 1-19 of U.S. Patent No. 12077550 B2 are drawn to compounds with overlapping scope.
The difference, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of claims 1-26 of U.S. Patent No. 9847497 B2 and claims 1-19 of U.S. Patent No. 12077550 B2. For the foregoing reasons, the instantly claimed compound is made obvious.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See also MPEP § 804.
Response to Arguments
Applicant’s remarks and amendment, filed on 02/02/2026, have been fully considered but not found persuasive.
Applicant argued over ODP rejection over U.S. Patent No. 9847497 B2.
This is not found persuasive as the patent provides:
LA, LB, LC genus and Metal M such as MLALBLC; IrLALBLC, Ir(LA)3 etc:
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Wherein genus for LA, LB and LC disclosed by the patent is encompassed by the genus of the instant claims for LA, LB and LC (LB of the cited prior art is used as LA of the instant claims and LA of the cited prior art as LB of the instant claims). The patent discloses several examples of species of LA (i.e. LB of the instant claims) such as:
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The patent discloses compounds comprising ligand LB, which matches with ligand LA of the instant claims
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, which reads on compounds with respect to LA of the instant claims 1-2 and 5, when at least one of X1-X5=N, for example X4=N or X3=X5=N and rest of X are C (satisfy proviso if X1=N, then X5=C; in this case X1=C therefore no restriction on X5); K=direct bond; Z=C; ring B=5-membered heterocyclic ring; and satisfy condition (1) two RB joined to form fused 6-membered carbocyclic ring. Above compounds matches definition of LB, when LB:
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The patent further discloses compounds M(LA)x(LB)y(LC)z.
Applicant didn’t argue over ODP rejection over U.S. Patent No. 12077550 B2 and therefore the rejection is maintained.
Rest of applicant’s argument is moot in view of new rejection as set forth above.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milligan Adam can be reached at 571-2707674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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