CTNF 18/633,298 CTNF 82948 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claims 13-32 are before the Examiner. Claim Rejections – Improper Markush Group The nonstatutory Markush grouping rejection is based on a judicially approved “improper Markush grouping” doctrine. Claims 13-32 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. Base claim 13 formula PNG media_image1.png 218 476 media_image1.png Greyscale See In re Harnisch , 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi , 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature. A Markush claim contains an “improper Markush grouping” if: (1) the species of the Markush group do not share a single structural similarity,” OR (2) the species do not share a common use. Members of a Markush group share a "single structural similarity” when they belong to the same recognized physical or chemical class or to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the specification or known in the art to be functionally equivalent (see Federal Register, Vol. 76, No. 27, Wednesday, February 9, 2011, p. 7166, left and middle columns, bridging paragraph). This rejection applies to the definition of the multiple moieties in the claimed monomer. These moieties are broad and divergent in nature. The compounds do not even belong to a recognized class of compounds because every variable varies having complex meanings and endless permutations and combinations. Further, the compounds include many known and unknown structural motifs defined by their function. The members of the recited Markush group are so disparate chemically as not to be members of a recognized chemical class of compounds. Further the point of attachment and how these are linked to each render the conceivable compounds structurally different. In view of these claimed elements and the divergent substitutions on the above groups, the physical and chemical properties of claimed compounds are going to be different. Applicants’ may have to establish the core structure for their claimed compound. It cannot be said that all members of the Markush group have a single structural similarity, based on the above described structural differences. Specifically, the species of the Markush group do not share a “single structural similarity” because there are no required structural features within each variable definition such that each member of the group would have at least one structural feature, which feature is essential to the activity/function of the claimed compounds, in common. In addition alternatively usable member of the Markush group for example, the inhibitors or binders of different enzymes, does not share a common use, absent evidence to the contrary. The question of whether the lack of a specific statutory basis is a fatal flaw against a holding of an Improper Markush group was decided in In re Harnish , 206 USPQ 300, 305, where the court said, “…we think it should be clear from our actions in Weber and Haas II that we there recognized the possibility of such a thing as an "improper Markush grouping." We were and are aware that it does not have a specific statutory basis …” The court went on to reverse the rejection, (which had been made by the Board under Rule 196(b)) but not on the lack of a specific statutory basis but rather, “Clearly, they are all coumarin compounds which the board admitted to be "a single structural similarity." We hold, therefore, that the claimed compounds all belong to a subgenus, as defined by appellant, which is not repugnant to scientific classification. Under these circumstances we consider the claimed compounds to be part of a single invention so that there is unity of invention…” Thus, the rejection was overturned not because of any lack of a specific statutory basis, but because of the specific facts in the case. The Markush group was held proper in that case, as was the case also in Ex parte Price 150 USPQ 467, Ex parte Beck and Taylor, 119 USPQ 100, and Ex parte Della Bella and Chiarino 7 USPQ2d 1669. Cases where the Markush group was held improper include Ex Parte Palmer , 7 USPQ 11, In re Winnek , 73 USPQ 225, In re Ruzicka , 66 USPQ 226, Ex parte Hentrich , 57 USPQ 419, Ex parte Barnard , 135 USPQ 109, Ex parte Reid , 105 USPQ 251, Ex parte Sun and Huggins , 85 USPQ 516, In re Thompson and Tanner , 69 USPQ 148, In re Swenson , 56 USPQ 180, and In re Kingston , 65 USPQ 371. Note In re Milas 71 USPQ 212 in which the structural difference between vitamin A and D was sufficient to uphold the improper Markush rejection. Also see In re Winnek 73 USPQ 225 and In re Ruzicka 66 USPQ 226 in which structural differences were small and yet a similar holding was maintained. All these cases involved compounds in the pharmaceutical art known to be structure-sensitive. Of particular interest is Ex Parte Hozumi , 3 USPQ2d 1059, which reversed an improper Markush rejection “in view of the relatively large proportion of the structure of the compounds in the claimed class which is common to the entire class”. Here, by contrast, the amount in common is none. Consider base claim 13 formula III: PNG media_image1.png 218 476 media_image1.png Greyscale Other than the possibilities for M, none of the variables, all the other variables are defined with substituent that are uncommon in the art of fluorescent emitters. The recited possibilities defy commonsense chemistry principles of metal coordination compounds. The Applicant is directed to the third paragraph of MPEP 803.02 as was stated in the election of species requirement: “Since the decisions in In re Weber, 580 F.2d 455, 198 USPQ 328 (CCPA 1978) and In re Haas, 580 F.2d 461, 198 USPQ 334 (CCPA 1978), it is improper for the Office to refuse to examine that which applicants regard as their invention, unless the subject matter in a claim lacks unity of invention. In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980); and Ex parte Hozumi, 3 USPQ2d 1059 (Bd. Pat. App. & Int. 1984). Broadly, unity of invention exists where compounds included within a Markush group (1) share a common utility, and (2) share a substantial structural feature essential to that utility.” In the instant case, the claims are claimed to share a common utility, namely to be used as fluorescence of phosphorescence emitters. However, the genus does not share a substantial structural feature essential to the utility. There is no component other than the metal center that is shared throughout the entire genus. Such a grouping would be repugnant to scientific classification because the there is no structural feature common to the genus that is responsible for the utility, and the wide variety of rings connected directly or indirectly to the bridging group do not allow the genus to have an art recognized classification. Therefore, the Markush grouping is improper. In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1) (emphasis provided). Claim Rejections - 35 USC § 112 07-30-01 AIA The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Claims 13-32 are rejected under 35 U.S.C. 112, first paragraph, , because the specification, while being enabling for making few possibilities of the combination of the possibilities of formula III, does not reasonably provide enablement for the plethora of possibilities claimed. For example it is not seen where in the specification enabling disclosure is found for making compounds of the claimed formulae wherein the metal coordinating variables V1, V4, V12 or V9 is/are PNG media_image2.png 18 228 media_image2.png Greyscale . Similarly, it is not seen where the specification is enabling for X1 being any of PNG media_image3.png 16 186 media_image3.png Greyscale This are just examples. The determination that "undue experimentation" would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion reached by weighing all the relevant factual considerations. Enablement is considered in view of the Wands factors (MPEP 2164.01 (a)). These include: (1) breadth of the claims; (2) nature of the invention; (3) state of the prior art; (4) amount of direction provided by the inventor; (5) the level of predictability in the art; (6) the existence of working examples; (7) quantity of experimentation needed to make or use the invention based on the content of the disclosure; and (8) relative skill in the art. All the factors have been considered with regard to the claims, with the most relevant factors discussed below: The claims are drawn to chemical formula PNG media_image1.png 218 476 media_image1.png Greyscale The compounds are drawn to 4 coordinated Pt or Pd complexes with two heterocycles, wherein the two heterocycles linked by X = PNG media_image4.png 16 268 media_image4.png Greyscale The undefined heterocycles and the X1 with large number of substituents layered on top substituents that render the scope of the claims wide. These substituents are known in the art to greatly alter spectroscopic properties. For example, the intended utility of the claimed compounds is based on the fluorescence properties. Fluorescence is the emission of light by a substance that has absorbed light or other electromagnetic radiation. It is a form of luminescence. In most cases, the emitted light has a longer wavelength, and therefore lower energy, than the absorbed radiation. One of skill in the art would anticipate that substituents with electron donating property (such as NH2 or alkyl) and (electron withdrawing property (such as NO2) would have opposite effect. It is one of commonsense that because of the steric and geometric constraints that govern how many ligands can surround a central metal ion, whether any and all can be present in the coordination sphere. These limitations are primarily determined by the size of the central ion, the size and bulkiness of the ligands, and the desired geometry. Why it is commonsense: Consider the two of the many possibilities for X1, O and Se. Se has four electron shells, whereas O has only two. The extra shells in Se significantly increase its radius, making it nearly twice as large as an O atom. Applicant is encouraged to place on record that such statements are assertions and need reference. Such considerations make most of recited substituents impossible. If a substituent is impossible, the claim can properly be rejected under 35 USC 112 paragraph 1 or 2. A compound with an impossible substituent clearly cannot be made, and hence a paragraph 1 rejection is proper. Alternatively, if it is impossible, then it is not correct. The chemistry schemes (guidance) to make the claimed compounds is limited and is predicated on the Pd or Cu-catalyzed diaryl-ether formation for X1, entailing displacement of halogen (Br) from one of the aryl rings, by phenolic oxygen of the other aryl ring. This at once limits what substituents PNG media_image5.png 16 214 media_image5.png Greyscale the plethora of rings in the formula can have. At the minimum these just cannot be halogen and further be compatible with vagaries (see Dorwald reference below) associated with these PD metal catalyzed rings. Also not that the two aryl rings also are formed using metal catalyzed reactions, for example, see Example 1 at page 246. There is no General Chemistry Scheme. The direction, guidance and working examples required for the how to make prong of 112-1 requirement is limited to 91 exemplifications noted above. Further there is no guidance on how to introduce substituents such as PNG media_image6.png 18 330 media_image6.png Greyscale PNG media_image7.png 150 624 media_image7.png Greyscale subsequent to assembling the invariable core structure of the formula. These R groups also contain reactive functionalities such as the halogen, hydroxyl, amino etc., incompatible (as per exemplifications) incompletely and impossible substituents that cannot be just willed into existence. There is no prior art reference citations in the specification on how to make such starting materials or any disclosure with respect to where to procure such starting materials and/or how to use to them in the disclosed chemistry schemes. These starting materials just cannot be willed into existence. According to the U.S. Court of Customs and Patent Appeals in In re Argoudelis , De Boer, Eble, and Herr 168 USPQ 99 at 101, "[o]rdinarily no problem in this regard arises since the method of preparing almost all starting materials can be set forth in writing if the materials are not already known and available to the workers in the art, and when this is done the specification is enabling to the public". In re Argoudelis , De Boer, Eble, and Herr 168 USPQ 99 at 104, "it is essential that there be no question that, at the time an application for patent is filed, (emphasis in original) the invention claimed therein is fully capable of being reduced to practice (i.e., that no technological problems, the resolution of which would require more than ordinary skill and reasonable time, remain in order to obtain an operative, useful embodiment)." . Organic chemistry is unpredictable and capricious as taught by Dorwald F. A. Side Reactions in Organic Synthesis, 2005, Wiley: VCH, Weinheim pg. IX of Preface pg. 1-15 which teaches that ” …as will be shown throughout this book, the outcome of organic reactions is highly dependent on all structural features of a given starting material, and unexpected products may readily be formed. [8]……...Even the most experienced chemist will not be able to foresee all potential pitfalls of a synthesis, especially so if multifunctional, structurally complex intermediates must be prepared.…..” Arguments presented above for lack guidance, working example and teaching are only examples. The position taken is that there is a substantial gap between what is taught in the specification and what is being claimed. For these reasons, one skilled in the art would be faced with undue amount of research. The specification lacks disclosure sufficient to make and use, in predictable manner, the invention commensurate with the scope of the claims, without undue effort. MPEP 2164.01(a) states, “A conclusion of Iack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. ln re Wright , 999 F.2d 1557,1562, 27 USPQ 2d 1510, 1513 (Fed. Cir. 1993).'' That conclusion is clearly justified here. Thus, undue experimentation would be required to make and use Applicants' invention. Genentech Inc. v. Novo Nordisk A/S (CA FC) 42 USPQ2d 1001, states “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion” and “[p]atent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable”. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 13-32 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. The recitation PNG media_image8.png 22 126 media_image8.png Greyscale is confusing, because while some aromatic systems such as benzene and pyridine, pyrrole could be accommodated, the possibilities PNG media_image9.png 24 232 media_image9.png Greyscale PNG media_image10.png 18 180 media_image10.png Greyscale would include ring systems that are hitherto unknown. Further, it is unclear what if these atoms are not present. With these in combination with the claim language PNG media_image11.png 20 68 media_image11.png Greyscale PNG media_image12.png 14 54 media_image12.png Greyscale renders the metes and bounds of the claim unclear. Further if presence of Ys and the linkage between Vs are optional, L2 need not be present in the gross structure. In addition as defined, the formulae includes ring systems deemed ‘impossible substituents’ because with PNG media_image13.png 16 232 media_image13.png Greyscale is present would result in situation without any coordinating atoms. Note that if a substituent is impossible, the claim can properly be rejected under 35 USC 112 paragraph 1 or 2. A compound with an impossible substituent clearly cannot be made, and hence a paragraph 1 rejection is proper. Alternatively, if it is impossible, then it is not correct. Consistent with the exemplifications, the claimed formula III PNG media_image14.png 230 476 media_image14.png Greyscale is interpreted as being drawn to compounds four coordinated palladium or platinum complexes and their applications in light emitting devices thereof, wherein the four coordinating ligands are four heterocycles, with two of the heterocycles linked, further having at least 6 aryl or heteroaryl groups, (even though the term ‘if present’ implies, as explained above, L2 and L5 need not be present; the fusion of L2 and l5 is considered). Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-27-aia AIA Claim s 13-32 are rejected under 35 U.S.C. 102( (a)(1) ) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Xiu US9735378 and Xiu US9947880 . Instant base claim 13: Compounds of formula III drawn to 4 coordinated Pt or Pd complexes with two heterocycles, wherein the two heterocycles linked by X = PNG media_image4.png 16 268 media_image4.png Greyscale The undefined heterocycles and the X are with large number of substituents layered on top substituents that render the scope of the claims wide. The cited references are drawn to similar complexes wherein the heterocycles a re defined, while in the instant case the heterocycles a re n ot defined, with the linker X is limited to O in the prior art: g enus- s pecies relationship Xiu teaches CAS REG No. 1395090-64-8 PNG media_image15.png 204 284 media_image15.png Greyscale in Table 1 column 125-126 Compound B (also indicated as Pt moiety in Figure 5) The blue colored portion of the falls under the scope of the claimed formula III, PNG media_image16.png 186 338 media_image16.png Greyscale for example, instantly exemplified at page 338, compound MC79 with the naphthalene pointed out with arrow PNG media_image17.png 194 328 media_image17.png Greyscale The green color and square box, portion is same as in Xiu compounds shown above (and also in other Xiu US9735378 compounds pictured at the end of this rejection). Fusion of rings L2 and l5 to the rings that coordinate with the metal to make tetracoordinate complexes are subject matter found in Xiu US9947880 Xiu US9947880, teaches large number of compounds at column 345-382 falling under the scope of claimed formula III, with the difference being the rings (on the left side of the formula III as pictured) as explained for Xiu US9735378, some of these are PNG media_image18.png 620 706 media_image18.png Greyscale The difference in the specific Xiu US9735378 compound shown above and MC79 and other naphthalene portion here as opposed to benzene pointed out in Xiu compound. The rings L1-l3, as defined includes all aryls which thus include benzene and naphthalene, the latter being substituted (fused) benzene. Again the prior art compounds of both Xius are have same core structures, 4 coordinated Pt ligands of two heterocycles, the two heterocycles linked by O. With that, again, the difference is the different similar rings systems with substituents decorating the core template. These different possibilities are generically pictured in the cited prior art. For example, see column 7-10 of US9947880. The dependent claims 25-32 are drawn to intended use of the claimed compounds in preamble, same as per disclosure in Xiu. Structurally similar compounds are anticipated to have similar properties and therefore same intended use. As such nothing unobvious is seen in the claims. Other Xiu US9735378 compounds other having the core structure of claimed formula PNG media_image19.png 112 920 media_image19.png Greyscale PNG media_image20.png 110 820 media_image20.png Greyscale PNG media_image21.png 126 802 media_image21.png Greyscale PNG media_image22.png 118 832 media_image22.png Greyscale PNG media_image23.png 118 828 media_image23.png Greyscale 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. PNG media_image24.png 172 800 media_image24.png Greyscale ------------------------------------------------------------------------------------------------------------------ Note: Excessive redundancy found in the following is as per examination guidelines . Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 13-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-5 of U.S. Patent No. 12010908 further in view of Xiu US9735378 and Xiu US9947880 . Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claim compounds are species of the genus of the instant compounds . 12010908: PNG media_image25.png 234 302 media_image25.png Greyscale PNG media_image26.png 586 296 media_image26.png Greyscale Instant claim 13: PNG media_image27.png 148 302 media_image27.png Greyscale The claimed formula/compounds of 12010908 fall under the scope of the instant formula/compounds formula III. In the conflicting claims and in the cited references the metal complexes are drawn to similar complexes wherein the heterocycles a re defined, while in the instant case the heterocycles a re n ot defined, with the linker X is limited to O in the secondary references: g enus- s pecies relationship with respect to ring systems. X1 =O Y1, Y2 , Y3, Y4 and V8-V7 link and V5-V6 link absent L1 aryl L3 heteroaryl L4 aryl And L6 heteroaryl in instant claimed formula III corresponds to PNG media_image28.png 164 198 media_image28.png Greyscale of conflicting dependent claim 4. On top of this the difference if any, is in the heterocyclics of the left hand side as pictured portion are previously known and fall under the generic language of the instant claims for this portion. In addition the difference if any of this portion for such Pt and Pd complexes are obvious to one of skill in the art is per the teachings of Xiu US9735378 and Xiu US9947880. Xiu teaches CAS REG No. 1395090-64-8 PNG media_image15.png 204 284 media_image15.png Greyscale in Table 1 column 125-126 Compound B (also indicated as Pt moiety in Figure 5) The blue colored portion of the falls under the scope of the claimed formula III, PNG media_image16.png 186 338 media_image16.png Greyscale for example, instantly exemplified at page 338, compound MC79 with the naphthalene pointed out with arrow PNG media_image17.png 194 328 media_image17.png Greyscale The green color and square box, portion is same as in Xiu compounds shown above (and also in other Xiu US9735378 compounds pictured at the end of this rejection). Fusion of rings L2 and l5 to the rings that coordinate with the metal to make tetracoordinate complexes are subject matter found in Xiu US9947880 Xiu US9947880, teaches large number of compounds at column 345-382 falling under the scope of claimed formula III, with the difference being the rings (on the left side of the formula III as pictured) as explained for Xiu US9735378, some of these are PNG media_image18.png 620 706 media_image18.png Greyscale The difference in the specific Xiu US9735378 compound shown above and MC79 and other naphthalene portion here as opposed to benzene pointed out in Xiu compound. The rings L1-l3, as defined includes all aryls which thus include benzene and naphthalene, the latter being substituted (fused) benzene. Again the prior art compounds of both Xius are have same core structures, 4 coordinated Pt ligands of two heterocycles, the two heterocycles linked by O. With that, again, the difference is the different similar rings systems with substituents decorating the core template. These different possibilities are generically pictured in the cited prior art. For example, see column 7-10 of US9947880. The dependent claims 25-32 are drawn to intended use of the claimed compounds in preamble, same as per disclosure in Xiu. Structurally similar compounds are anticipated to have similar properties and therefore same intended use. Other Xiu US9735378 compounds other having the core structure of claimed formula PNG media_image19.png 112 920 media_image19.png Greyscale PNG media_image20.png 110 820 media_image20.png Greyscale PNG media_image21.png 126 802 media_image21.png Greyscale PNG media_image22.png 118 832 media_image22.png Greyscale PNG media_image23.png 118 828 media_image23.png Greyscale Reliance on spec ification of a potentially conflicting patent or application is generally pro hibited. However limited exceptions do exist. Exceptions to the General Prohibition of Using the Disclosure of a Potentially Conflicting Patent or Application include Dictionary for claim terminology, Portions of the disclosure which provide support for the claims in the potentially conflicting patent or application. The MPEP refers to two exceptions to the general prohibition of using the disclosure of a potentially conflicting patent or application in an ODP-Obviousness analysis. The two exceptions are: 1. The disclosure can be used as a dictionary for claim terminology; and 2. “[T]hose portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent” (MPEP § 804). The MPEP further notes: The court in Vogel recognized “that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,” but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first “determine how much of the patent disclosure pertains to the invention claimed in the patent” because only “[t]his portion of the specification supports the patent claims and may be considered.” The court pointed out that “this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103 since only the disclosure of the invention claimed in the patent may be examined.”) 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Feldman, Understanding ‘Evergreening’ : Making Minor Modifications Of Existing Medications To Extend Protections, Health Affairs June 2022 41:6, 801-804 Dwivedi, Evergreening: A deceptive device in patent rights, Technology in Society 32 (2010) 324–330 . 08-34 AIA Claim s 13-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-5 of U.S. Patent No. 10516117 further in view of Xiu US9735378 and Xiu US9947880 . Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claim compounds are species of the genus of the instant compounds . 10516117: PNG media_image29.png 236 294 media_image29.png Greyscale PNG media_image30.png 454 312 media_image30.png Greyscale Instant claim 13: PNG media_image27.png 148 302 media_image27.png Greyscale The claimed formula/compounds of 10516117 fall under the scope of the instant formula/compounds formula III. In the conflicting claims and in the cited references the metal complexes are drawn to similar complexes wherein the heterocycles a re defined, while in the instant case the heterocycles a re n ot defined, with the linker X is limited to O in the secondary references: g enus- s pecies relationship X1 =O Y1, Y2 , Y3, Y4 and V8-V7 link and V5-V6 link absent L1 aryl L3 heteroaryl L4 aryl And L6 heteroaryl in instant claimed formula III corresponds to PNG media_image31.png 156 204 media_image31.png Greyscale of claim 3. On top of this the difference if any, is in the heterocyclics of the left hand side as pictured portion are previously known and fall under the generic language of the instant claims for this portion. In addition the difference if any of this portion for such Pt and Pd complexes are obvious to one of skill in the art is per the teachings of Xiu US9735378 and Xiu US9947880. Xiu teaches CAS REG No. 1395090-64-8 PNG media_image15.png 204 284 media_image15.png Greyscale in Table 1 column 125-126 Compound B (also indicated as Pt moiety in Figure 5) The blue colored portion of the falls under the scope of the claimed formula III, PNG media_image16.png 186 338 media_image16.png Greyscale for example, instantly exemplified at page 338, compound MC79 with the naphthalene pointed out with arrow PNG media_image17.png 194 328 media_image17.png Greyscale The green color and square box, portion is same as in Xiu compounds shown above (and also in other Xiu US9735378 compounds pictured at the end of this rejection). Fusion of rings L2 and l5 to the rings that coordinate with the metal to make tetracoordinate complexes are subject matter found in Xiu US9947880 Xiu US9947880, teaches large number of compounds at column 345-382 falling under the scope of claimed formula III, with the difference being the rings (on the left side of the formula III as pictured) as explained for Xiu US9735378, some of these are PNG media_image18.png 620 706 media_image18.png Greyscale The difference in the specific Xiu US9735378 compound shown above and MC79 and other naphthalene portion here as opposed to benzene pointed out in Xiu compound. The rings L1-l3, as defined includes all aryls which thus include benzene and naphthalene, the latter being substituted (fused) benzene. Again the prior art compounds of both Xius are have same core structures, 4 coordinated Pt ligands of two heterocycles, the two heterocycles linked by O. With that, again, the difference is the different similar rings systems with substituents decorating the core template. These different possibilities are generically pictured in the cited prior art. For example, see column 7-10 of US9947880. The dependent claims 25-32 are drawn to intended use of the claimed compounds in preamble, same as per disclosure in Xiu. Structurally similar compounds are anticipated to have similar properties and therefore same intended use. Other Xiu US9735378 compounds other having the core structure of claimed formula PNG media_image19.png 112 920 media_image19.png Greyscale PNG media_image20.png 110 820 media_image20.png Greyscale PNG media_image21.png 126 802 media_image21.png Greyscale PNG media_image22.png 118 832 media_image22.png Greyscale PNG media_image23.png 118 828 media_image23.png Greyscale Reliance on spec ification of a potentially conflicting patent or application is generally pro hibited. However limited exceptions do exist. Exceptions to the General Prohibition of Using the Disclosure of a Potentially Conflicting Patent or Application include Dictionary for claim terminology, Portions of the disclosure which provide support for the claims in the potentially conflicting patent or application. The MPEP refers to two exceptions to the general prohibition of using the disclosure of a potentially conflicting patent or application in an ODP-Obviousness analysis. The two exceptions are: 1. The disclosure can be used as a dictionary for claim terminology; and 2. “[T]hose portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent” (MPEP § 804). The MPEP further notes: The court in Vogel recognized “that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,” but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first “determine how much of the patent disclosure pertains to the invention claimed in the patent” because only “[t]his portion of the specification supports the patent claims and may be considered.” The court pointed out that “this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103 since only the disclosure of the invention claimed in the patent may be examined.”) 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Feldman, Understanding ‘Evergreening’ : Making Minor Modifications Of Existing Medications To Extend Protections, Health Affairs June 2022 41:6, 801-804 Dwivedi, Evergreening: A deceptive device in patent rights, Technology in Society 32 (2010) 324–330 . 08-34 AIA Claim s 13-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11063228 further in view of Xiu US9735378 and Xiu US9947880 . Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claim compounds are species of the genus of the instant compounds . 11063228: PNG media_image32.png 480 306 media_image32.png Greyscale PNG media_image33.png 358 292 media_image33.png Greyscale Instant claim 13: PNG media_image27.png 148 302 media_image27.png Greyscale The claimed formula/compounds of 11063228 fall under the scope of the instant formula/compounds formula III. In the conflicting claims and in the cited references the metal complexes are drawn to similar complexes wherein the heterocycles a re defined, while in the instant case the heterocycles a re n ot defined, with the linker X is limited to O in the secondary references: g enus- s pecies relationship Also note that the right hand side of the p ictured formulae in the genus and species formula are same and the left hand side of the instant encompasses, for example the carbazole of formula VI (species) of 11063228. On top of this the difference if any, is in the heterocyclics of the left hand side as pictured portion are previously known and fall under the generic language of the instant claims for this portion. In addition the difference if any of this portion for such Pt and Pd complexes are obvious to one of skill in the art is per the teachings of Xiu US9735378 and Xiu US9947880. Xiu teaches CAS REG No. 1395090-64-8 PNG media_image15.png 204 284 media_image15.png Greyscale in Table 1 column 125-126 Compound B (also indicated as Pt moiety in Figure 5) The blue colored portion of the falls under the scope of the claimed formula III, PNG media_image16.png 186 338 media_image16.png Greyscale for example, instantly exemplified at page 338, compound MC79 with the naphthalene pointed out with arrow PNG media_image17.png 194 328 media_image17.png Greyscale The green color and square box, portion is same as in Xiu compounds shown above (and also in other Xiu US9735378 compounds pictured at the end of this rejection). Fusion of rings L2 and l5 to the rings that coordinate with the metal to make tetracoordinate complexes are subject matter found in Xiu US9947880 Xiu US9947880, teaches large number of compounds at column 345-382 falling under the scope of claimed formula III, with the difference being the rings (on the left side of the formula III as pictured) as explained for Xiu US9735378, some of these are PNG media_image18.png 620 706 media_image18.png Greyscale The difference in the specific Xiu US9735378 compound shown above and MC79 and other naphthalene portion here as opposed to benzene pointed out in Xiu compound. The rings L1-l3, as defined includes all aryls which thus include benzene and naphthalene, the latter being substituted (fused) benzene. Again the prior art compounds of both Xius are have same core structures, 4 coordinated Pt ligands of two heterocycles, the two heterocycles linked by O. With that, again, the difference is the different similar rings systems with substituents decorating the core template. These different possibilities are generically pictured in the cited prior art. For example, see column 7-10 of US9947880. The dependent claims 25-32 are drawn to intended use of the claimed compounds in preamble, same as per disclosure in Xiu. Structurally similar compounds are anticipated to have similar properties and therefore same intended use. Other Xiu US9735378 compounds other having the core structure of claimed formula PNG media_image19.png 112 920 media_image19.png Greyscale PNG media_image20.png 110 820 media_image20.png Greyscale PNG media_image21.png 126 802 media_image21.png Greyscale PNG media_image22.png 118 832 media_image22.png Greyscale PNG media_image23.png 118 828 media_image23.png Greyscale In addition, for the definition of this left hand side part of the pictured formulae, as whether it includes the formula of 11063228 is ascertained by consulting the disclosures in the conflicting cases. Reliance on spec ification of a potentially conflicting patent or application is generally pro hibited. However limited exceptions do exist. Exceptions to the General Prohibition of Using the Disclosure of a Potentially Conflicting Patent or Application include Dictionary for claim terminology, Portions of the disclosure which provide support for the claims in the potentially conflicting patent or application. The MPEP refers to two exceptions to the general prohibition of using the disclosure of a potentially conflicting patent or application in an ODP-Obviousness analysis. The two exceptions are: 1. The disclosure can be used as a dictionary for claim terminology; and 2. “[T]hose portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent” (MPEP § 804). The MPEP further notes: The court in Vogel recognized “that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,” but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first “determine how much of the patent disclosure pertains to the invention claimed in the patent” because only “[t]his portion of the specification supports the patent claims and may be considered.” The court pointed out that “this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103 since only the disclosure of the invention claimed in the patent may be examined.”) 08-34 AIA Claim s 13-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11183670 further in view of Xiu US9735378 and Xiu US9947880 . Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claim compounds are species of the genus of the instant compounds . 11183670: Compounds of formulae PNG media_image34.png 900 592 media_image34.png Greyscale Instant claim 13: PNG media_image27.png 148 302 media_image27.png Greyscale The claimed formula/compounds of PNG media_image33.png 358 292 media_image33.png Greyscale fall under the scope of the instant formula/compounds formula III. In the conflicting claims and in the cited references the metal complexes are drawn to similar complexes wherein the heterocycles a re defined, while in the instant case the heterocycles a re n ot defined, with the linker X is limited to O in the secondary references: g enus- s pecies relationship On top of this the difference if any, is in the heterocyclics of the left hand side as pictured portion are previously known and fall under the generic language of the instant claims for this portion. In addition the difference if any of this portion for such Pt and Pd complexes are obvious to one of skill in the art is per the teachings of Xiu US9735378 and Xiu US9947880. Xiu teaches CAS REG No. 1395090-64-8 PNG media_image15.png 204 284 media_image15.png Greyscale in Table 1 column 125-126 Compound B (also indicated as Pt moiety in Figure 5) The blue colored portion of the falls under the scope of the claimed formula III, PNG media_image16.png 186 338 media_image16.png Greyscale for example, instantly exemplified at page 338, compound MC79 with the naphthalene pointed out with arrow PNG media_image17.png 194 328 media_image17.png Greyscale The green color and square box, portion is same as in Xiu compounds shown above (and also in other Xiu US9735378 compounds pictured at the end of this rejection). Similarly, Xiu US9947880, teaches large number of compounds at column 345-382 falling under the scope of claimed formula III, with the difference being the rings (on the left side of the formula III as pictured) as explained for Xiu US9735378, some of these are PNG media_image18.png 620 706 media_image18.png Greyscale The difference in the specific Xiu US9735378 compound shown above and MC79 and other naphthalene portion here as opposed to benzene pointed out in Xiu compound. The rings L1-l3, as defined includes all aryls which thus include benzene and naphthalene, the latter being substituted (fused) benzene. Again the prior art compounds of both Xius are have same core structures, 4 coordinated Pt ligands of two heterocycles, the two heterocycles linked by O. With that, again, the difference is the different similar rings systems with substituents decorating the core template. These different possibilities are generically pictured in the cited prior art. For example, see column 7-10 of US9947880. The dependent claims 25-32 are drawn to intended use of the claimed compounds in preamble, same as per disclosure in Xiu. Structurally similar compounds are anticipated to have similar properties and therefore same intended use. Other Xiu US9735378 compounds other having the core structure of claimed formula PNG media_image19.png 112 920 media_image19.png Greyscale PNG media_image20.png 110 820 media_image20.png Greyscale PNG media_image21.png 126 802 media_image21.png Greyscale PNG media_image22.png 118 832 media_image22.png Greyscale PNG media_image23.png 118 828 media_image23.png Greyscale Reliance on spec ification of a potentially conflicting patent or application is generally pro hibited. However limited exceptions do exist. Exceptions to the General Prohibition of Using the Disclosure of a Potentially Conflicting Patent or Application include Dictionary for claim terminology, Portions of the disclosure which provide support for the claims in the potentially conflicting patent or application. The MPEP refers to two exceptions to the general prohibition of using the disclosure of a potentially conflicting patent or application in an ODP-Obviousness analysis. The two exceptions are: 1. The disclosure can be used as a dictionary for claim terminology; and 2. “[T]hose portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent” (MPEP § 804). The MPEP further notes: The court in Vogel recognized “that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,” but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first “determine how much of the patent disclosure pertains to the invention claimed in the patent” because only “[t]his portion of the specification supports the patent claims and may be considered.” The court pointed out that “this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103 since only the disclosure of the invention claimed in the patent may be examined.”) 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Feldman, Understanding ‘Evergreening’ : Making Minor Modifications Of Existing Medications To Extend Protections, Health Affairs June 2022 41:6, 801-804 Dwivedi, Evergreening: A deceptive device in patent rights, Technology in Society 32 (2010) 324–330 . 08-34 AIA Claim s 13-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10793546 further in view of Xiu US9735378 and Xiu US9947880 . Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claim compounds are species of the genus of the instant compounds . 10793546: PNG media_image35.png 452 296 media_image35.png Greyscale Instant claim 13: PNG media_image27.png 148 302 media_image27.png Greyscale The claimed formula/compounds of PNG media_image33.png 358 292 media_image33.png Greyscale fall under the scope of the instant formula/compounds formula III. In the conflicting claims and in the cited references the metal complexes are drawn to similar complexes wherein the heterocycles a re defined, while in the instant case the heterocycles a re n ot defined, with the linker X is limited to O in the secondary references: g enus- s pecies relationship On top of this the difference if any, is in the heterocyclics of the left hand side as pictured portion are previously known and fall under the generic language of the instant claims for this portion. In addition the difference if any of this portion for such Pt and Pd complexes are obvious to one of skill in the art is per the teachings of Xiu US9735378 and Xiu US9947880. Xiu teaches CAS REG No. 1395090-64-8 PNG media_image15.png 204 284 media_image15.png Greyscale in Table 1 column 125-126 Compound B (also indicated as Pt moiety in Figure 5) The blue colored portion of the falls under the scope of the claimed formula III, PNG media_image16.png 186 338 media_image16.png Greyscale for example, instantly exemplified at page 338, compound MC79 with the naphthalene pointed out with arrow PNG media_image17.png 194 328 media_image17.png Greyscale The green color and square box, portion is same as in Xiu compounds shown above (and also in other Xiu US9735378 compounds pictured at the end of this rejection). Similarly, Xiu US9947880, teaches large number of compounds at column 345-382 falling under the scope of claimed formula III, with the difference being the rings (on the left side of the formula III as pictured) as explained for Xiu US9735378, some of these are PNG media_image18.png 620 706 media_image18.png Greyscale The difference in the specific Xiu US9735378 compound shown above and MC79 and other naphthalene portion here as opposed to benzene pointed out in Xiu compound. The rings L1-l3, as defined includes all aryls which thus include benzene and naphthalene, the latter being substituted (fused) benzene. Again the prior art compounds of both Xius are have same core structures, 4 coordinated Pt ligands of two heterocycles, the two heterocycles linked by O. With that, again, the difference is the different similar rings systems with substituents decorating the core template. These different possibilities are generically pictured in the cited prior art. For example, see column 7-10 of US9947880. The dependent claims 25-32 are drawn to intended use of the claimed compounds in preamble, same as per disclosure in Xiu. Structurally similar compounds are anticipated to have similar properties and therefore same intended use. Other Xiu US9735378 compounds other having the core structure of claimed formula PNG media_image19.png 112 920 media_image19.png Greyscale PNG media_image20.png 110 820 media_image20.png Greyscale PNG media_image21.png 126 802 media_image21.png Greyscale PNG media_image22.png 118 832 media_image22.png Greyscale PNG media_image23.png 118 828 media_image23.png Greyscale Reliance on spec ification of a potentially conflicting patent or application is generally pro hibited. However limited exceptions do exist. Exceptions to the General Prohibition of Using the Disclosure of a Potentially Conflicting Patent or Application include Dictionary for claim terminology, Portions of the disclosure which provide support for the claims in the potentially conflicting patent or application. The MPEP refers to two exceptions to the general prohibition of using the disclosure of a potentially conflicting patent or application in an ODP-Obviousness analysis. The two exceptions are: 1. The disclosure can be used as a dictionary for claim terminology; and 2. “[T]hose portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent” (MPEP § 804). The MPEP further notes: The court in Vogel recognized “that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,” but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first “determine how much of the patent disclosure pertains to the invention claimed in the patent” because only “[t]his portion of the specification supports the patent claims and may be considered.” The court pointed out that “this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103 since only the disclosure of the invention claimed in the patent may be examined.”) 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Feldman, Understanding ‘Evergreening’ : Making Minor Modifications Of Existing Medications To Extend Protections, Health Affairs June 2022 41:6, 801-804 Dwivedi, Evergreening: A deceptive device in patent rights, Technology in Society 32 (2010) 324–330 . 08-34 AIA Claim s 13-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10177323 further in view of Xiu US9735378 and Xiu US9947880 . Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claim compounds are species of the genus of the instant compounds . 10177323: PNG media_image36.png 740 682 media_image36.png Greyscale Instant claim 13: PNG media_image27.png 148 302 media_image27.png Greyscale The claimed formula/compounds of fall under the scope of the instant formula/compounds formula III. In the conflicting claims and in the cited references the metal complexes are drawn to similar complexes wherein the heterocycles a re defined, while in the instant case the heterocycles a re n ot defined, with the linker X is limited to O in the secondary references: g enus- s pecies relationship On top of this the difference if any, is in the heterocyclics of the left hand side as pictured portion are previously known and fall under the generic language of the instant claims for this portion. In addition the difference if any of this portion for such Pt and Pd complexes are obvious to one of skill in the art is per the teachings of Xiu US9735378 and Xiu US9947880. Xiu teaches CAS REG No. 1395090-64-8 PNG media_image15.png 204 284 media_image15.png Greyscale in Table 1 column 125-126 Compound B (also indicated as Pt moiety in Figure 5) The blue colored portion of the falls under the scope of the claimed formula III, PNG media_image16.png 186 338 media_image16.png Greyscale for example, instantly exemplified at page 338, compound MC79 with the naphthalene pointed out with arrow PNG media_image17.png 194 328 media_image17.png Greyscale The green color and square box, portion is same as in Xiu compounds shown above (and also in other Xiu US9735378 compounds pictured at the end of this rejection). Similarly, Xiu US9947880, teaches large number of compounds at column 345-382 falling under the scope of claimed formula III, with the difference being the rings (on the left side of the formula III as pictured) as explained for Xiu US9735378, some of these are PNG media_image18.png 620 706 media_image18.png Greyscale The difference in the specific Xiu US9735378 compound shown above and MC79 and other naphthalene portion here as opposed to benzene pointed out in Xiu compound. The rings L1-l3, as defined includes all aryls which thus include benzene and naphthalene, the latter being substituted (fused) benzene. Again the prior art compounds of both Xius are have same core structures, 4 coordinated Pt ligands of two heterocycles, the two heterocycles linked by O. With that, again, the difference is the different similar rings systems with substituents decorating the core template. These different possibilities are generically pictured in the cited prior art. For example, see column 7-10 of US9947880. The dependent claims 25-32 are drawn to intended use of the claimed compounds in preamble, same as per disclosure in Xiu. Structurally similar compounds are anticipated to have similar properties and therefore same intended use. Other Xiu US9735378 compounds other having the core structure of claimed formula PNG media_image19.png 112 920 media_image19.png Greyscale PNG media_image20.png 110 820 media_image20.png Greyscale PNG media_image21.png 126 802 media_image21.png Greyscale PNG media_image22.png 118 832 media_image22.png Greyscale PNG media_image23.png 118 828 media_image23.png Greyscale Reliance on spec ification of a potentially conflicting patent or application is generally pro hibited. However limited exceptions do exist. Exceptions to the General Prohibition of Using the Disclosure of a Potentially Conflicting Patent or Application include Dictionary for claim terminology, Portions of the disclosure which provide support for the claims in the potentially conflicting patent or application. The MPEP refers to two exceptions to the general prohibition of using the disclosure of a potentially conflicting patent or application in an ODP-Obviousness analysis. The two exceptions are: 1. The disclosure can be used as a dictionary for claim terminology; and 2. “[T]hose portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent” (MPEP § 804). The MPEP further notes: The court in Vogel recognized “that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,” but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first “determine how much of the patent disclosure pertains to the invention claimed in the patent” because only “[t]his portion of the specification supports the patent claims and may be considered.” The court pointed out that “this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103 since only the disclosure of the invention claimed in the patent may be examined.”) 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Feldman, Understanding ‘Evergreening’ : Making Minor Modifications Of Existing Medications To Extend Protections, Health Affairs June 2022 41:6, 801-804 Dwivedi, Evergreening: A deceptive device in patent rights, Technology in Society 32 (2010) 324–330 . 08-34 AIA Claim s 13-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10158091 , further in view of Xiu US9735378 and Xiu US9947880 . Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claim compounds are species of the genus of the instant compounds . 10158091: PNG media_image37.png 242 284 media_image37.png Greyscale PNG media_image38.png 278 302 media_image38.png Greyscale Instant claim 13: PNG media_image27.png 148 302 media_image27.png Greyscale The claimed formula/compounds of fall under the scope of the instant formula/compounds formula III. In the conflicting claims and in the cited references the metal complexes are drawn to similar complexes wherein the heterocycles a re defined, while in the instant case the heterocycles a re n ot defined, with the linker X is limited to O in the secondary references: g enus- s pecies relationship On top of this the difference if any, is in the heterocyclics of the left hand side as pictured portion are previously known and fall under the generic language of the instant claims for this portion. In addition the difference if any of this portion for such Pt and Pd complexes are obvious to one of skill in the art is per the teachings of Xiu US9735378 and Xiu US9947880. Xiu teaches CAS REG No. 1395090-64-8 PNG media_image15.png 204 284 media_image15.png Greyscale in Table 1 column 125-126 Compound B (also indicated as Pt moiety in Figure 5) The blue colored portion of the falls under the scope of the claimed formula III, PNG media_image16.png 186 338 media_image16.png Greyscale for example, instantly exemplified at page 338, compound MC79 with the naphthalene pointed out with arrow PNG media_image17.png 194 328 media_image17.png Greyscale The green color and square box, portion is same as in Xiu compounds shown above (and also in other Xiu US9735378 compounds pictured at the end of this rejection). Similarly, Xiu US9947880, teaches large number of compounds at column 345-382 falling under the scope of claimed formula III, with the difference being the rings (on the left side of the formula III as pictured) as explained for Xiu US9735378, some of these are PNG media_image18.png 620 706 media_image18.png Greyscale The difference in the specific Xiu US9735378 compound shown above and MC79 and other naphthalene portion here as opposed to benzene pointed out in Xiu compound. The rings L1-l3, as defined includes all aryls which thus include benzene and naphthalene, the latter being substituted (fused) benzene. Again the prior art compounds of both Xius are have same core structures, 4 coordinated Pt ligands of two heterocycles, the two heterocycles linked by O. With that, again, the difference is the different similar rings systems with substituents decorating the core template. These different possibilities are generically pictured in the cited prior art. For example, see column 7-10 of US9947880. The dependent claims 25-32 are drawn to intended use of the claimed compounds in preamble, same as per disclosure in Xiu. Structurally similar compounds are anticipated to have similar properties and therefore same intended use. Other Xiu US9735378 compounds other having the core structure of claimed formula PNG media_image19.png 112 920 media_image19.png Greyscale PNG media_image20.png 110 820 media_image20.png Greyscale PNG media_image21.png 126 802 media_image21.png Greyscale PNG media_image22.png 118 832 media_image22.png Greyscale PNG media_image23.png 118 828 media_image23.png Greyscale Reliance on spec ification of a potentially conflicting patent or application is generally pro hibited. However limited exceptions do exist. Exceptions to the General Prohibition of Using the Disclosure of a Potentially Conflicting Patent or Application include Dictionary for claim terminology, Portions of the disclosure which provide support for the claims in the potentially conflicting patent or application. The MPEP refers to two exceptions to the general prohibition of using the disclosure of a potentially conflicting patent or application in an ODP-Obviousness analysis. The two exceptions are: 1. The disclosure can be used as a dictionary for claim terminology; and 2. “[T]hose portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent” (MPEP § 804). The MPEP further notes: The court in Vogel recognized “that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,” but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first “determine how much of the patent disclosure pertains to the invention claimed in the patent” because only “[t]his portion of the specification supports the patent claims and may be considered.” The court pointed out that “this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103 since only the disclosure of the invention claimed in the patent may be examined.”) 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Feldman, Understanding ‘Evergreening’ : Making Minor Modifications Of Existing Medications To Extend Protections, Health Affairs June 2022 41:6, 801-804 Dwivedi, Evergreening: A deceptive device in patent rights, Technology in Society 32 (2010) 324–330. Copending Applications Applicant is encouraged to check for additional copending applications and issued patents for overlapping subject matter in the claims and file terminal disclaimers. MPEP 2001.06(b) Information Relating to or From Copending United States Patent Applications [R-08.2012]: The individuals covered by 37 CFR 1.56 have a duty to bring to the attention of the examiner, or other Office official involved with the examination of a particular application, information within their knowledge as to other copending United States applications which are “material to patentability” of the application in question. As set forth by the court in Armour & Co. v. Swift & Co., 466 F.2d 767, 779, 175 USPQ 70, 79 (7th Cir. 1972): [W]e think that it is unfair to the busy examiner, no matter how diligent and well informed he may be, to assume that he retains details of every pending file in his mind when he is reviewing a particular application . . . [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIZAL S CHANDRAKUMAR whose telephone number is (571)272-6202. The examiner can normally be reached M-F 8-5 EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /NIZAL S CHANDRAKUMAR/Primary Examiner, Art Unit 1625 Application/Control Number: 18/633,298 Page 2 Art Unit: 1625 Application/Control Number: 18/633,298 Page 3 Art Unit: 1625 Application/Control Number: 18/633,298 Page 4 Art Unit: 1625
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