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 .
Claims 13-32 are before the Examiner.
Responses to Applicants Remarks are at the bottom of reformatted rejections.
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
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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:
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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).
Response to Remarks filed 07/24/2026:
Applicants’ arguments focus on the following:
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That there share a common use and
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Response:
Consider the following options to claim 13 compounds
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the above choice would provide for the species (with PdII)
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Applicant is encouraged to place on record that the above species would share a common use with
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and functionally equivalent, such that the above
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An assertion would defy commonsense. As such the position taken is that
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not
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Suggestion: MPEP 1204 Notice of Appeal [R-01.2024]
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 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 phrases
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render the structural make-up of the claimed compounds unclear.
For example, the phrase
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means that that some or all of
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need not be present.
Which of the Vs need to be present to make the complex for which protection is sought is unclear.
The optional presence of the variables, the M without any (coordinate) bond cannot make a complex. This creates ‘dangling valency’ and ‘impossible substituent’ situation. 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.
Consider recitations such as ‘valency permits in the claims.
X1= CR7 means R7 is a divalent moiety. R7, however, is defined with monovalent groups.
This is an example for vagueness of interpretation.
A patent search cannot be done for the claimed formula.
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Also see, In re Zletz, 13 USPQ2d 1320,1322. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Suggestion: MPEP 1204 Notice of Appeal [R-01.2024].
Claim Rejections - 35 USC § 112
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.
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
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The compounds are drawn to 4 coordinated Pt or Pd complexes. With complex meaning for the apathetes, there is nothing in the above formula that is at once recognizable. As noted in the section under 112-2, the variables create ‘impossible substituent’ and ‘dangling valency’ problem.
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.
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
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the plethora of rings in the formula can have. At the minimum these just cannot be halogens and further be incompatible with Pd catalyzed reactions necessary for assembling/linking the 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
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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) incomplete 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”.
Response:
Applicants arguments focus on the amendments to claims and
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This is not persuasive for Reasons discussed above.
Consider for example, the combination of the for V1=V2=V4=V12=V11=V10=V9,
all being ‘present’ and selected from C, N, O and S.
No such compounds exists.
Even as per
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there is no need for working examples for any or all of the combinations of the variables as recited, even if makeable, expecting ‘predictable intended use’ for these contradicts commonsense as explained above.
Suggestion: MPEP 1204 Notice of Appeal [R-01.2024].
Applicant is also encouraged to contact this Examiner’s supervisors, Directors and other relevant improper unreasonable rejection.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 13-32 are rejected under 35 U.S.C. 103 as being unpatentable over obvious over Xia US9735378, Xia US9947880 and Xia WO2012116231.
Xia2012 reference is new in view of amendments to claims and to augment the rejection of record.
Xia2012 teaches the following compounds:
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Xiu teaches CAS REG No. 1395090-64-8
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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,
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for example, instantly exemplified at page 338, compound MC79 with the naphthalene pointed out with arrow
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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
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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 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
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Response:
Applicants’ Remarks focus on the following:
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Applicants’ arguments are not persuasive.
In contrast to Examiner’s effort at structural correlation of prior art compounds with the claimed formula, Applicants’ arguments do not have any chemical structures to point out which the rings or bonds are present or absent in the relevant formulae.
L variables as per definition need not be present in the claimed formula. However, Applicant points out that the cited references do
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A persuasive argument need to point out structural difference(s) and how the differences are unobvious to one of skill in the art.
Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art.
Accordingly, the claims do not recite an unobvious distinction over the prior art. Further, a reference is relevant not only for what it expressly teaches, but also for what it would have conveyed to one of ordinary skill in the art. See In re Opprecht, 12 USPQ2d 1235, 1236 (Fed. Cir. 1989); In re Bode, 193 USPQ 12 (CCPA 1976). In light of the foregoing discussion, the Examiner finds that the claimed subject matter as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made, in view of the cited references and the knowledge generally available in the art. Accordingly, the claims are rejected under 35 U.S.C. § 103.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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Suggestion: MPEP 1204 Notice of Appeal [R-01.2024].
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 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.
The rejection is held in abeyance as requested by Applicant.
Claims 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.
The rejection is held in abeyance as requested by Applicant.
Claims 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 Xia US9735378, Xia US9947880 and Xia WO2012116231.
The entirety of discussion under Claim Rejections - 35 USC § 103 (including the response to Applicants Remarks) is invoked here in the obviousness analysis.
Applicants’ arguments focus on the following:
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The formulae of claims of 10177323
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in the context of the teachings of the three Xia reference includes the instant compounds of instant formula
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Likewise, (Likewise for the same reasons as above)
Claims 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 Xia US9735378, Xia US9947880 and Xia WO2012116231.
Claims 13-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11945985 further in view of Xia US9735378, Xia US9947880 and Xia WO2012116231.
Claim 1 of 11945985 is drawn to compounds of formula
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Instant claim 13 is drawn to compounds of formula
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There is extensive overlap in the above formulae. Formula of 11945985 can be regarded as species falling under the genus of instant formula.
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.
Suggestion: MPEP 1204 Notice of Appeal [R-01.2024].
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.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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