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 .
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12598909. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant and patented claims claim many of the same compounds and devices.
Claim Rejections - 35 USC § 102
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 8-11, 13 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al (US 2017/0309841) (Kim).
In reference to claim 8-11, 13, and 15-16, Kim teaches the compound H-10 as shown below that reads on the instant claims.
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For Claim 8: Reads on wherein X1 to X3 are each N, a1 is 0, Ar1 is Formula 2-3, b4 is 1, one R4 is cyano, a2 and a3 are each 0, Ar2 is formula 2-1, b5 is 0, and Ar3 is formula 2-1, b5 is 1, and R1 is Si(Q1)(Q2)(Q3), and Q1, Q2 and Q3 are each phenyl.
For Claim 9: Reads on formula wherein at least one is different.
For Claim 10: Reads on condition i.
For Claim 11: Reads on condition i.
For Claim 13: Reads on 2-1(1), 2-1(2) and 2-3(1).
For Claim 15: Reads on 2-1(2).
For Claim 16: Reads on X1 to X3 are each N.
Claims 1-7, 12, 14, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US 2017/0309841).
In reference to claims 1-7, Kim teaches devices comprising an anode, cathode, emitting layer, electron transport layer, hole transport layer and including a compound of formula 2 as a host in an emitting layer with Pt dopants or iridium dopants such as compound D-96 as shown below as a phosphorescent dopant. The office notes that the drawing of D-96 includes an obvious drawing error.
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While Kim does not exemplify a device with the claimed features, Kim teaches that such application is one of the possible device applications of the device of Kim. The ordinarily skilled artisan would find using the device of Kim in the application taught by Kim immediately obvious without an explicit example.
In reference to claims 12, 14 and 17-20, Kim teaches the device as described above for claim 8 and further teaches that hydrogen in various groups of formula (2) (compound H-10 is a compound of formula (2)) can be substituted for deuterium (Kim [0034]).
Kim discloses the compound of formula (2) that encompasses the presently claimed compound, including wherein one or more hydrogen atoms are substituted for deuterium. Each of the disclosed substituents from the substituent groups of Kim are considered functionally equivalent and their selection would lead to obvious variants of the compounds of formula (2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, in the absence of unexpected results, to have selected these substituents among those disclosed for formula (2) to provide the compound described above, which is both disclosed by Kim and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean M DeGuire whose telephone number is (571)270-1027. The examiner can normally be reached Monday to Friday, 7:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer A. 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.
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/Sean M DeGuire/Primary Examiner, Art Unit 1786
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