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 .
Priority
This application is a 371 of PCT/EP2022/075943 (filed 09/19/22), which application claims priority to: EP 21197757.4 (filed 09/20/21) and to EP 21197750.9 (filed 09/20/21) and to EP 21197667.5 (filed 09/20/21).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Amendment(s)
The Preliminary Amendment filed 09/24/25 is entered. Claims 17-28, 30-33 are pending.
The Substitute Specification filed 03/14/24 is entered.
Drawings
The Drawings filed 03/14/24 are approved by the examiner.
Election/Restrictions
Applicant’s election without traverse of formula (I) (independent claim 17) in the Reply filed 09/24/25 is acknowledged.
Information Disclosure Statement
The IDS statements filed 03/14/24, 05/08/24, and 09/23/25 have been considered. Initialed copies accompany this action.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892 or by applicant on form PTO-1449, they have not been considered.
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 17-28, 30-33 is/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.
In independent claim 17, the examiner submits the presence of multiple nested “wherein…” clauses for both variables R1 and R3 renders the claims indefinite in that such leads to multiple interpretations of the required substitutes. Specifically, it is unclear if the substituents recites after the “wherein” clause are required irrespective of the Markush members selected, or if such are only required if “substituted” Markush members are selected. For example, if species unsubstituted C6 aryl is selected for R1, do the subsequent “wherein” clauses require that additional elements are present (e.g. at least one substituent is selected from partially or fully fluorinated C1 to C12 alkyl, or CN). Similarly, with respect to R3, if species unsubstituted C1 alkyl is selected for R1, do the subsequent “wherein” clauses require that additional elements are present (e.g. F, CN, C1-C6 alkyl, CF3).
Clarification is required.
With respect to dependent claim 23, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim recites the broad recitation, and the claim also recites “more preferred” (twice at last line) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-28, 30-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/693,208 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of the copending application are drawn to a metal compound (and OLED device comprising the compound) comprising M linked to an oxygen moiety and optionally a charge-neutral ligand (L). The copending application recites Cu, Zn, AL or Hf as M species (dependent claim 2), and further delineates species of R1, R2 and R3, n and m within the scope of the instant claims:
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-28, 30-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-31 of copending Application No. 18/691,243 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the above listed claims of the copending application are drawn to a metal compound (and OLED device comprising the compound) comprising M linked to an oxygen moiety and optionally a charge-neutral ligand (L). The copending application recites Cu, Zn, AL or Hf as M species (dependent claim 23), and further delineates species of R1, R2 and R3, n and m within the scope of the instant claims (dependent claim 21):
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
If both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome. Provisional nonstatutory double patenting rejections are subject to the requirements of 37 CFR 1.111(b). Thus, applicant can overcome a provisional nonstatutory double patenting rejection by filing a reply that either shows that the claims subject to the rejection are patentably distinct from the claims of the reference application, or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection. If the reply is sufficient, the examiner will withdraw the nonstatutory double patenting rejection in the application in which it was submitted.
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.
Allowable Subject Matter
Instant claims 1-28, 30-33 are allowable over the prior art. JP 2010-122269 discloses compounds falling within the recited formula 1 (i.e. compounds 21 and 58 pages 14-21), which compounds have been excluded by claim limitations added via preliminary amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK T KOPEC whose telephone number is (571)272-1319. The examiner can normally be reached Monday-Friday 9:00a-5:00p 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, Robert Jones can be reached at 5712707733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
November 12, 2025