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 .
DETAILED ACTION
Claims 1-4, 6-10 and 12-20 of S. Seifermann et al., US 18/418,076 (Jan. 19, 2024) are pending and under examination. Claims -4, 6-10 and 12-20 are rejected.
Election/Restrictions
In the previous Reply filed on February 18, 2025, Applicants elected, without traverse, the following species:
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where Ra is undefined in Applicant’s response. See specification at page 28, [00260]; Id. at page 32, [00318]; Id at pages 57-58, [00543]-[00555] (giving varying meanings to variable Ra).
Claims 1-4, 6-10 and 12-20 read on the elected species. The elected species was searched and determined to be free of the art of record. The search was then further extended to the full scope of all claims. The election of species requirement is withdrawn.
Withdrawal Rejections 35 U.S.C. 112(b)
Rejection of claim 15 under 35 U.S.C. 112(b) as indefinite on the grounds that claim 15 purports to further modify claim 1 by defining variable Rb, but variable Rb is not present in claim 1, is withdrawn in view of Applicant’s amendment.
Rejection of claim 12 under 35 U.S.C. 112(b) as indefinite on the grounds of its dependency upon cancelled claim 11 is withdrawn in view of Applicant’s amendments.
Withdrawal Claim Rejections 35 U.S.C. 112(a) – Written Description
Rejection of claims 1-10 and 12-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement is withdrawn in view of Applicant’s amendments.
Withdrawal Claim Rejections - 35 USC § 102 (AIA )
Claim rejections under § 102 are withdrawn in view of Applicant’s amendments.
Withdrawal Claim Rejections - 35 USC § 103
Claim rejections under § 103 are withdrawn in view of Applicant’s amendments.
Maintained Non-Statutory Double Patenting Rejections
The non-statutory 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 non-statutory 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).
Non-Statutory Double Patenting Rejection over S. Seifermann et al., 16/936,494 (2020), Issued as US 11,944,005 (2024)
Claims 1-4, 6-10 and 12-20 are rejected on the ground of non-statutory double patenting as being unpatentable over conflicting claims 1-4 and 16-19 of S. Seifermann et al., 16/936,494 (2020), Issued as US 11,944,005 (2024). Conflicting claims 1-4 and 16-19 is patentably indistinct from instant claims 1-4, 6-10 and 12-20 because the conflicting claims disclose genera that completely fall within the scope of instant claims 1-10 and 12-20. It is noted that instant claim 1 is different in scope than conflicting claim 1, as highlighted below:
Instant claim 1 . . . wherein MNRCT consists of a structure according to Formula NRCT I:
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Formula NRCT I . . .
Conflicting claim 1 . . . wherein MNRCT comprises of a structure according to Formula NRCT I:
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Formula NRCT I . . .
Terminal Disclaimer
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 non-statutory 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 non-statutory 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.
Applicant’s Argument
Applicants request that the obviousness-type double patenting rejection of claims be withdrawn in view of the above amendments to the claims without requiring a terminal disclaimer and that these claims be allowed. However, Applicants hereby reserve the right to file a terminal disclaimer if required during the prosecution of the application to, e.g., expedite allowance.
Applicant’s arguments are not persuasive to overcome the double patenting rejection.
Subject Matter Free of the Art of Record
Subject to the non-statutory double patenting rejections, claims 1-4, 6-10 and 12-20 are free of the art of record.
Structure of Claim 1 Formula A
The primary structural points of independent claim 1 are summarized as follows. Claim 1 requires that the MTADF portion Formula A must comprise Formula I and Formula II and that this MTADF portion is connected to MNRCT through bridging variable L, represented as follows:
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Where claim 1 dictates that Formula I and Formula II are linked with each other and Formula I is bonded to variable L as follows:
Claim 1 . . . wherein the first chemical moiety is linked to the second chemical moiety via a single bond . . .
. . . # represents the binding site of a single bond linking the second chemical moieties to the first chemical moiety. . .
T [may be] . . . the binding site of a single bond linking the first chemical moiety to the second chemical moiety. . . or
W [may be] . . . the binding site of a single bond linking the first chemical moiety to the second chemical moiety. . .or
And where claim 1 further dictates that the MTADF portion (i.e., Formula I and Formula II) is bonded to variable L though Formula I as follows:
Claim 1 . . . W [may be] . . . the binding site of a single bond linking the TADF moiety MTADF to the bridging unit L . . . or . . .
Y [may be] the binding site of a single bond linking the TADF moiety MTADF to the bridging unit L;
RDi [may be] the binding site of the single bond linking the TADF moiety MTADF to the bridging unit L . .
Claim 1 defines variable L as follows:
Claim 1 . . . L represents a divalent bridging unit that links MTADF and MNRCT and is linked to MTADF and to MNRCT via a single bond each . . .
Claim 1 defines variable MNRCT as follows:
Claim 1 . . wherein MNRCT consists of a structure according to Formula NRCT I:
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Formula NRCT I
Claim 1 and Dependent Claims 2-4, 6-10 and 12-20 Are not Obvious in View of The Closest Art of Record
The closest prior art of record is S. Geum et al., US 2021/0277026 (2021) (“Geum”). Geum is effective prior art under 35 USC § 102(a)(2) respecting the cited subject matter as of the filing date of Geum’s priority document KR 10-2018-0085936 (Jul. 24, 2018) because: (1) Geum is U.S. patent application publication; (2) names another inventor; and (3) the subject matter of Geum cited is disclosed in KR 10-2018-0085936. See MPEP § 2154.01; 35 USC § 102(d).
Geum discloses that compounds of Formula 1 are useful in the organic layer of organic light emitting devices. Geum at page 3, [0041]. The closest structure disclosed by Geum to the claimed compounds is the following:
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The cited Geum compound differs from the claimed compounds in at least that the Geum compound does not include Formula I as required by base claim 1. The art of record does not motivate one of ordinary skill to modify the Geum compound so as to arrive at a claimed compound. MPEP § 2143(E), Example 4 (citing Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 83 USPQ2d 1169 (Fed. Cir. 2007)); see also Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PAGANO whose telephone number is (571)270-3764. The examiner can normally be reached 8:00 AM through 5:00 PM.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
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