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 .
Claim Objections
Claims 1, 3, 4, and 5 are objected to because of the following informalities: misuse of punctuation in the substituent definitions, such as in the following:
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Appropriate correction is required, i.e., replace the semicolons with commas.
Claim 1 objected to because of the following informalities: lack of a space, such as in, for instance,
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. Appropriate correction is required.
Claim 7 objected to because of the following informalities: some of the substituents and single vs double bonds are clearly discernible. 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 1-16 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.
Claim 1 is rejected as being vague and indefinite when it recites “wherein in the alkyl group, the haloalkyl group, the alkoxy group, the haloalkoxy group, the aryl group, the haloaryl group, the heterocyclic group, and the haloheterocyclic group, at least one substituent selected from the group consisting of deuterium; a nitro group; a cyano group; an amino group; an alkoxy group of C1-C20; a haloalkoxy group of C1-C20; an alkyl group of C1-C20; a haloalkyl group of C1-C20; an alkenyl group of C2-C20; an alkynyl group of C2-C20; an aryl group of C6-C20; an aryl group of C6-C20 substituted with deuterium; a fluorenyl group; a heterocyclic group of C2-C20; an alkylsilyl group of C3-C60; an arylsilyl group of C18-C60; and an alkylarylsilyl group of C8-C60 may be further substituted” (emphasis added); the scope of the protection sought is not clear. Since there are multiple substituents in the compound of formula 1 which constitute the recited groups, the antecedent basis is not clear. Claim 1 fails to particularly point out and distinctly claim the substituents in the compound of formula 1 contained in the claimed organic light emitting element.
Claim 4 fails to particularly point out and distinctly claim that (a) if “Rc is a halogen or a cyano group” then either (“i)” or “ii)”,(b) if “one Re is hydrogen, deuterium, or tritium” then “the other Re is a halogen or cyano group”,(c) if “Rf is a halogen or a cyano group” then either (“i)” or “ii)”, and (d) if “one Rh is hydrogen, deuterium, or tritium” then “the other Rh is a halogen or cyano group” with respect to the compounds of formulae 4 and 5; the scope of the protection sought is not clear. Claim 4 fails to particularly point out and distinctly claim the substituents in the compounds of formulae 4 and 5 contained in the claimed organic light emitting element.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(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.
Claims 1-4 and 8-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shin et al. (U.S. Patent No. 12,364,158).
The claims of Shin et al. teaches an organic light emitting element and the corresponding use thereof said organic light emitting element in a display device, wherein said organic light emitting element comprises a first electrode and a second electrode, and an organic material layer therebetween, characterized in that said organic material layer comprises an indacene compound inclusive of the indacene compounds of the present general formula 1, the indacene compound of the present formulae 2 and 3 as recited in the present claim 2, as well as the indacene compound of the present formulae 4 and 5 as recited in the present claim 3, as represented therein by
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and
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.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claims 1-4 and 8-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shin et al. (U.S. Patent No. 12,349,590).
The claims of Shin et al. teaches an organic light emitting element and the corresponding use thereof said organic light emitting element in a display device, wherein said organic light emitting element comprises a first electrode and a second electrode, and an organic material layer therebetween, characterized in that said organic material layer comprises an indacene compound inclusive of the indacene compounds of the present general formula 1, the indacene compound of the present formulae 2 and 3 as recited in the present claim 2, as well as the indacene compound of the present formulae 4 and 5 as recited in the present claim 3, as represented therein by
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.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claims 1-4 and 8-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shin et al. (U.S. Patent No. 12,167,680).
The claims of Shin et al. teaches an organic light emitting and the corresponding use thereof said organic light emitting element in a display device, wherein said organic light emitting element comprises a first electrode and a second electrode, and an organic material layer therebetween, characterized in that said organic material layer comprises an indacene compound inclusive of the indacene compounds of the present general formula 1, the indacene compound of the present formulae 2 and 3 as recited in the present claim 2, as well as the indacene compound of the present formulae 4 and 5 as recited in the present claim 3, as represented therein by
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and
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.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claims 1-4 and 8-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shin et al. (U.S. Patent No. 11,997,919).
The claims of Shin et al. teaches an organic light emitting element and the corresponding use thereof said organic light emitting element in a display device, wherein said organic light emitting element comprises a first electrode and a second electrode, and an organic material layer therebetween, characterized in that said organic material layer comprises an indacene compound inclusive of the indacene compounds of the present general formula 1, the indacene compound of the present formulae 2 and 3 as recited in the present claim 2, as well as the indacene compound of the present formulae 4 and 5 as recited in the present claim 3, as represented therein by
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.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claims 1-4 and 8-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoon et al. (U.S. Patent No. 11,522,139).
The claims of Yoon et al. organic light emitting element and the corresponding use thereof said organic light emitting element in a display device, wherein said organic light emitting element comprises a first electrode and a second electrode, and an organic material layer therebetween, characterized in that said organic material layer comprises an indacene compound inclusive of the indacene compound of the present formula 1, as generally represented therein by
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, and more specifically an indacene compound inclusive of the indacene compound of the present formula 5 as recited in the present claim 3, as represented by the compounds recited in claim 3 therein.
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 1-4 and 8-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, and 7-14 of U.S. Patent No. 12,364,158.
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 light emitting device and the corresponding use thereof said organic light emitting element in a display device, wherein said organic light emitting element is characterized by comprising an indacene compound inclusive of the indacene compound of the present formula 1, more specifically an indacene compound inclusive of the indacene compound of the present formulae 2 and 3, as well as an indacene compound inclusive of the indacene compound of the present formulae 4 and 5.
Claims 1-4 and 8-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,349,590.
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 light emitting device and the corresponding use thereof said organic light emitting element in a display device, wherein said organic light emitting element is characterized by comprising an indacene compound inclusive of the indacene compound of the present formula 1, more specifically an indacene compound inclusive of the indacene compound of the present formulae 2 and 3, as well as an indacene compound inclusive of the indacene compound of the present formulae 4 and 5.
Claims 1-4 and 8-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,167,680.
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 light emitting device and the corresponding use thereof said organic light emitting element in a display device, wherein said organic light emitting element is characterized by comprising an indacene compound inclusive of the indacene compound of the present formula 1, more specifically an indacene compound inclusive of the indacene compound of the present formulae 2 and 3, as well as an indacene compound inclusive of the indacene compound of the present formulae 4 and 5.
Claims 1-4 and 8-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,997,919.
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 light emitting device and the corresponding use thereof said organic light emitting element in a display device, wherein said organic light emitting element is characterized by comprising an indacene compound inclusive of the indacene compound of the present formula 1, more specifically an indacene compound inclusive of the indacene compound of the present formulae 2 and 3, as well as an indacene compound inclusive of the indacene compound of the present formulae 4 and 5.
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. 2024/0251659, which is the pre-grant publication corresponding to the present application, and WIPO Patent No. WO 2026/022236 A1, which is pertinent to applicant’s disclosure of a compound characterized by comprising an indacene core.
Allowable Subject Matter
Claims 5-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The indacene compounds of the present formulae 6 through 15 are distinguished from the indacene compounds of the prior art by having attached thereto a 4-pyridine ring, a 3-pyridine ring, a pyrimidine ring, or a 1,3,5-triazine ring, characterized in that each of said rings has at least one substituent Ra which is a halogen or a cyano group.
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
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