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 .
Obviousness-type 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 obviousness-type 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); and 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims are rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claims of U.S. Patent No.11977078; U.S. Patent No.11668716; U.S. Patent No.11119107; claims of U.S. Patent No.10605813; claims of U.S. Patent No.10228375; and claims of U.S. Patent No.9719998.
Present claims 100 -119 recite a polymeric tandem dye comprising a light harvesting multichromophore having a conjugated segment compounding a comonomer and a UV absorbance modifying comonomer wherein the multichromophore has an ultraviolet absorption maximum together with an acceptor chromophore covalently linked to the multichromophore in energy receiving proximity. The related patent claims are directed to the same light harvesting multichromophore/polymeric dye subject matter and contain more specific limitations directed to the multichromophore, comonomers, chromophores and other structures.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the related application contains dependent claims which, when read as a whole, contain the same subject as claims of the present application, respectively and thus would have been obvious over the claimed invention. It is clear that all the elements of the application claims are to be found in related application claims (as the application claims fully encompasses related application claims). The difference between the application claims and the related application claims lies in the fact that the related application claim includes many more elements and is, thus, much more specific. Thus, the invention of the claims of the related application is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29USPQ2d2010 (Fed. Cir. 1993). Since application claims is anticipated by claims of the related application, it is not patentably distinct from claims of the related application.
Accordingly the present claims are not patentably distinct from the claims of the related patents.
Allowable Subject Matter over Prior Art
The following is an Examiner's statement of reasons for the indication of allowable subject matter:
Applicant(s) claimed invention is directed to:
A polymeric tandem dye comprising: a light harvesting multichromophore comprising a conjugated segment comprising: a co-monomer; and a UV absorbance-modifying co-monomer, wherein the multichromophore has an ultraviolet absorption maximum; and an acceptor chromophore covalently linked to the multichromophore in energy-receiving proximity therewith.
The crux of the invention lies in the discovery that a UV absorbing polymeric tandem dye in which a light harvesting multichromophore transfers energy to a covalently linked acceptor chromophore while avoiding the problems commonly associated therewith. Such has neither been anticipated by nor made obvious from the prior art.
The closest prior art of record USPub20150226746 discloses light harvesting polymers that transfer energy to an acceptor chromophore. However, the prior art of record does not disclose the claimed polymeric tandem dye having the recited polymer structure together with a covalently linked acceptor chromophore. Thus, the art of record demonstrates other methods used in the art which do not however, result in the same product or contain the advantages as mentioned and neither avoid the problems as mentioned above.
Any comments considered necessary by applicant must be submitted no later
than the payment of the Issue Fee and, to avoid processing delays, should
preferably accompany the Issue Fee. Such submissions should be clearly
labeled "Comments on Statement of Reasons for Allowance."
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Terressa Boykin/Primary Examiner, Art Unit 1765
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