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 .
Election of Species
Applicant’s election without traverse of the following species in the reply filed on 15 September 2026 is acknowledged:
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Claim Objections
Claims 6 and 15 are objected to because of the following informalities: each is missing a period at the end of the claim. Appropriate correction is required.
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 1-20 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.
Claims 1, 17 and 20 are rejected as being vague and indefinite when they each recite the structure for the ligand LA of formula I
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(emphasis added); the scope of the protection sought by each “-----” is not clear. Claim 1 fails to particularly point out and distinctly claim the compound comprising the ligand LA of formula I. Claims 17 and 20 each fail to particularly point out and distinctly claim the compound comprising the ligand LA of formula I contained in the respectively claimed OLED and consumer product. Claim 5 is similarly rejected as being vague and indefinite when it recites the structures in LIST A, as the scope of the protection sought by each “-----” is said structures is not clear.
Claims 1, 17 and 20 are rejected as being vague and indefinite when they each recite “wherein LA is coordinated to a metal M” (emphasis added); the scope of the protection sought is not clear. Claim 1 fails to particularly point out and distinctly claim the compound comprising the ligand LA of formula I. Claims 17 and 20 each fail to particularly point out and distinctly claim the compound comprising the ligand LA of formula I contained in the respectively claimed OLED and consumer product.
Claims 1, 17 and 20 are rejected as being vague and indefinite when they each recite “wherein the bond between ring A and M is a carbene bond” (emphasis added); the scope of the protection sought is not clear, in part as there is insufficient antecedent basis for “the bond between ring A and M”. Claim 1 fails to particularly point out and distinctly claim the compound comprising the ligand LA of formula I. Claims 17 and 20 each fail to particularly point out and distinctly claim the compound comprising the ligand LA of formula I contained in the respectively claimed OLED and consumer product.
Claims 1, 17 and 20 are rejected as being vague and indefinite when they each recite “wherein any two substituents may be joined or fused to form a ring” (emphasis added); the scope of the protection sought by and antecedent basis of “any two substituents” is not clear, particularly since the claim itself is drawn to an incomplete compound comprising the ligand LA of formula I, and there are multiple recitations of various provisos regarding the coordination of said ligand LA of formula I to a metal M. Claim 1 fails to particularly point out and distinctly claim the compound comprising the ligand LA of formula I. Claims 17 and 20 each fail to particularly point out and distinctly claim the compound comprising the ligand LA of formula I contained in the respectively claimed OLED and consumer product.
Claim 6 is rejected as being vague and indefinite when it recites (simply a representative example of the recitation in the claim)
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(emphasis added); the scope of the protection sought by these columns is not clear. Claim 6 fails to particularly point out and distinctly claim the structure of the claimed compound.
Claim 10 is rejected as being vague and indefinite when it recites the structures in LIST E; the scope of the protection sought by each “-----” therein said structures is not clear. Claim 10 fails to particularly point out and distinctly claim the ligands LB and LC contained in the claimed compound.
Claim 14 is rejected as being vague and indefinite when it recites the structures in LIST L and LIST M; the scope of the protection sought by each “-----” therein said structures is not clear. Claim 14 fails to particularly point out and distinctly claim the ligands LA’ and Ly contained in the claimed compound.
Claim 14 is rejected as being vague and indefinite when it recites “wherein each RAA, RBB, RE, RF, RX, RY, and RZ is independently selected from the structures of LIST B as defined above” (emphasis added); the scope of the protection sought is not clear. As there is insufficient antecedent basis for “LIST B”. Claim 14 fails to particularly point out and distinctly claim the substituents RAA, RBB, RE, RF, RX, RY, and RZ in the ligands LA’ and Ly contained in the claimed compound.
Claim 15 is rejected as being vague and indefinite when it recites (simply a representative example of the recitation in the claim)
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(emphasis added); the scope of the protection sought by these columns is not clear. Claim 15 fails to particularly point out and distinctly claim the structure of the claimed compound.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/501,070 (corresponding to U.S. Patent Application Publication No. 2024/0224783). 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 compound, the corresponding use thereof said compound in an organic light emitting device, as well as the corresponding use thereof said organic light emitting device in a consumer product, characterized in that said compound encompasses the elected species.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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. 2024/0065090, 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
Prosecution Insights