Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rejected as being vague and indefinite when it recites “X is CN, F, CF3, -OCF3, -NCS, Cl, preferably CN or F” (emphasis added); the scope of the protection sought is not clear. 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 1 recites the broad recitation that the substituent X is “CN, F, CF3, -OCF3, -NCS, Cl”, and the claim also recites “preferably CN or F” 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. Claim 1 fails to particularly point out and distinctly claim the substituent X in the compound of formula I in the ferroelectric liquid crystal material contained in the claimed electro-mechanical conversion machine.
Claim 1 is rejected as being vague and indefinite when it recites “10% by weight or more of one or more compounds of formula IA”, “10% by weight or more of one or more of compounds of formula IB”, “and 10% by weight or more of one or more compounds selected from formula IC-1 to IC-3“ (emphasis added); the scope of the protection sought is not clear in light of the recitation in claim 1 requiring “at least two compounds with a molecular structure of formula I”. Claim 1 fails to particularly point out and distinctly claim the contents of the ferroelectric liquid crystal material contained in the claimed electro-mechanical conversion machine, i.e., whether the “at least two compounds with a molecular structure of formula I” are selected from the compounds of formula IA, IB, IC-1, IC-2, and IC-3.
Claim 2 is rejected as being vague and indefinite when it recites “X1C denotes -CN, F, CF3, -OCF3, -NCS, SF5, or O-CF= CF2, preferably -CN or F” (emphasis added); the scope of the protection sought is not clear. 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 1 recites the broad recitation that the substituent X1C is “-CN, F, CF3, -OCF3, -NCS, SF5, or O-CF= CF2”, and the claim also recites “preferably CN or F” 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. Claim 1 fails to particularly point out and distinctly claim the substituent X1C in the compounds of formulae IC-1 and IC-2 in the ferroelectric liquid crystal material contained in the claimed electro-mechanical conversion machine.
Claim 12 is rejected as being vague and indefinite when it recites “comprising a liquid crystalline material with a ferroelectric nematic phase according to claim 1 as a dielectric material” (emphasis added); the scope of the protection sought is not clear, as claim 1 is drawn to an electro-mechanical conversion machine.
Claim 13 is rejected as being vague and indefinite when it recites “comprising inserting a liquid crystalline medium as dielectric material according to claim 1 into a defined space volume” (emphasis added); the scope of the protection sought is not clear, as claim 1 is drawn to an electro-mechanical conversion machine.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/039,838 (which corresponds to U.S. Patent Application Publication No. 2024/0002727). Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to an electro-mechanical characterized by comprising a ferroelectric nematic liquid crystal material containing a compound of the present formula I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/858,650 (which corresponds to U.S. Patent Application Publication No. 2025/0282995). Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to an electro-mechanical characterized by comprising a ferroelectric nematic liquid crystal material containing a compound of the present formula I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
U.S. Patent Application Publication No. 2025/0246949, which is the pre-grant publication corresponding to the present application,
U.S. Patent No. 12,215,267, which teaches a ferroelectric nematic liquid crystal medium comprising compounds of the present formula I, and
Chinese Patent No. CN 118240559 A, which teaches an electronic device comprising a ferroelectric nematic liquid crystal material containing a compound of the present formula I.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm. 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, Mark F Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737