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 16-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,800,787. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant and patented claims are drawn to overlapping subject matter, claiming many of the same materials 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)(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.
Claim(s) 16-25 and 27-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Je et al (US 2009/0104472) (Je).
In reference to claims 16-25 and 27-28, Je teaches compound of formula 1, specifically compound 2-9 as shown below ([0011], [0013]).
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For claim 16: Reads on a compound of formula (1) wherein n is 2, two of X form a group of Formula (3), Each group Z is CR1 wherein one group R1 is a group Si(R3)3, each R3 is methyl, two groups X are CR1 and each R1 is methyl, each other group X is CH, p is 0, one group Y is N and each other group Y is CR2, each R2 is hydrogen, L’ is a bidentate acetyl acetate ligand and m is 1.
For Claim 17: Reads on formula (7).
For Claim 18: Reads on wherein no groups X is N and no groups Z is N.
For Claim 19: Reads on formula (7a).
For Claim 20 and 22: Reads on wherein n is 2 and L’ is a non-ortho-metalated ligand.
For Claim 21 and 23: Reads on wherein L’ is a diketonate.
For Claim 24: Reads on formula HetAr-6.
For Claim 25: Reads on wherein R2 radicals are H.
For Claim 27: Reads on wherein each R1 is H, alkyl or Si(R3)3.
For Claim 28: Reads on wherein L’ is bonded via two oxygen atoms.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 26 and 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Je et al (US 2009/0104472) (Je).
In reference to claims 31-32, Je teaches the compound as described above for claim 16 and further teaches its use in an organic electroluminescent device and a luminescent material ([0002]).
While Je does not exemplify a device with this exact material, it would have been immediately obvious to the ordinarily skilled artisan to have used the material of Je in the device application of Je with the anticipation of providing a functional light emitting device.
In reference to claims 29-30, Je teaches that the compounds of the inventive formula 1 are prepared by reaction of the ligand with iridium chloride in a solution of ethyoxyethanol and water [0034].
While Je does not describe this specific materials synthesis using these methods, it would have been immediately obvious to the ordinarily skilled artisan to have used the synthetic procedure of Je in the preparation of alternative organometallic complexes of Je with the anticipation of providing the desired product.
In reference to claims 26, Je teaches a compound of formula 1 as shown below [0011]
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for example, wherein in the formula 1, M is Ir [0041], R3 is a heteroaryl group that is substituted by an aryl group [0011] for example a compound of formula 2-9 that is further substituted.
Je discloses the compound of formula 1 that encompasses the presently claimed compound, including wherein the R3 pyridine is further substituted with an aryl group. Each of the disclosed substituents from the Markush groups of Je are considered functionally equivalent and their selection would lead to obvious variants of the compound of formula 1.
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 the compound of formula 1 to provide the compound described above, which is both disclosed by Je and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
For Claim 26: Reads on HetAr-6a.
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
