DETAILED ACTION
Response to Amendment
This office action is in response to the amendment received June 30, 2026. Claims 1 and 7 were amended according to applicant’s remarks. It is noted that claim 7 in the June 30, 2026 claim listing contains an incorrect status identifier and the status identifier should have been listed as (Amended) in place of (Original). Claims 4-6 are cancelled claims. Claims 1-3 and 7 as presented in the June 30, 2026 claim set are under consideration.
The previous rejection of claims 1-3 and 7 under 35 USC 103 as unpatentable over Ahn WO 2017/030283 A1 or family equivalent US 2018/0208837 A1 is withdrawn in view of the amendment of claim 1 in the June 30, 2026 claim set.
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 1-3 and 7 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. [Note: Dependent claims are included in the rejection(s) for dependence upon rejected claims.]
Claim 1 recites the limitation "the heteroaryl(ene)" on page 3 of the claim set with respect to the definitions for Formula (1). While “(3- to 30-membered)heteroaryl” is listed as a definition for R5 variable and with respect to a substituent of R6 variable, it is not seen where “heteroarylene” is set forth. There is insufficient antecedent basis for “ heteroarylene” at this occurrence in the claim as heteroarylene is not previously set forth in the claim.
With respect to defining formula (3) in claim 1, the limitation “the heteroaryl(ene)” is set forth at the end of claim 1. It is not seen where the specific words “heteroaryl” or “heteroarylene” are used in defining features of formula (3). Accordingly, the limitation beginning “the heteroaryl(ene) contains” at the end of claim 1 is considered indefinite with respect to what is being further limited for a formula (3) compound.
Clarification and/or correction are required.
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 1-3 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, and 7 of U.S. Patent No. 11,737,353. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘353 claims in claim 1 a plurality of compounds including a first host compound of formula 2 where R3 substituents may be linked to form an aromatic ring, which corresponds to forming a core group within instant formula 1. Variables of ‘353 formula 2 are defined to encompass groups in instant claim 1 formula 1. US ‘353 claim 1 further recites formula (3), which corresponds to instant formula 3. Defined groups for the plurality of compounds of US ‘353 claim 1 encompass recited groups in the instant claims. With respect to instant claim 2, US ‘353 claim 2 recites formula 2 (where R3s may join to form an aromatic ring as previously stated) may specifically be formula 1-4 having heteroatoms N and O per instant formula 1-3. With respect to instant claim 3, US ‘353 claim 3 recites formula 3-1, which corresponds to instant 3-1, and claim 3 recites 3-4, which corresponds to instant 3-4 (further see correction page of US patent ‘353). US ‘353 claim 7 device including a plurality of materials corresponds to features of instant claim 7 device.
Therefore, given the overlap between the present claims and the patented claims, it would have been within the skill level of, as well as obvious to, one of ordinary skill in the art to select and use compounds which are both disclosed by patent US 11,737,353 and encompassed by the scope of the present claims and thereby arrive at the present invention.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dawn Garrett whose telephone number is (571)272-1523. The examiner can normally be reached Monday through Thursday (Eastern Time).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAWN L GARRETT/Primary Examiner, Art Unit 1786
Prosecution Insights