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 “5% by weight or more of a first component having a low polarity of −5<Δε<5” (emphasis added) and “60% by weight or more of a second polar component of Δε of 20 or more at 20° C. and 1 KHz”(emphasis added); the scope of the protection sought by “Δε,” is not clear. Claim 1 fails to particularly point out and distinctly claim the dielectric anisotropy of the first and second components contained in claimed liquid crystalline medium.
Claim 1 is rejected as being vague and indefinite when it recites “60% by weight or more of a second polar component of Δε of 20 or more at 20° C. and 1 KHz” (emphasis added); the scope of the protection sought is not clear, since there is insufficient antecedent basis for a first polar component. Claim 1 fails to particularly point out and distinctly claim the contents of the claimed liquid crystalline medium.
Claim 4 is rejected as being vague and indefinite when it recites “comprising one or more compounds of formula IA”; the scope of the protection sought is not clear. Claim 4 fails to particularly point out and distinctly claim the contents of the claimed liquid crystalline medium i.e., whether the first component is represented by the compounds of formula IA, whether the second component is represented by the compounds of formula IA, or whether the compounds of formula IA are contained in the claimed medium in addition to the first and second components compounds. Claim 5 is similarly rejected as being vague and indefinite when it recites “comprising one or more compounds of formula IA-A”. Claim 6 is similarly rejected as being vague and indefinite when it recites “comprising one or more compounds selected from formula IB or IC”. Claim 8 is similarly rejected as being vague and indefinite when it recites “comprising one, two, three or more compounds selected from formula ID-1 to ID-4”.
Claim 4 is rejected as being vague and indefinite when it recites “L3A are each independently H, alkyl, alkoxy or alkoxyalkyl, each with 1 to 7 C atoms” (emphasis added); the scope of the protection sought is not clear. Claim 4 fails to particularly point out and distinctly claim the substituent L3A in compound of formula IA contained in the claimed liquid crystalline medium.
Claim 5 is rejected as being vague and indefinite when it recites “L3A is defined as for formula IA, preferably H or CH3” and “L4A is F or H, preferably H” (emphasis added); the scope of the protection sought by “preferably” 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 5 recites the broad recitation that the substituent L3A is “defined as for formula IA” and that the substituent L4A is “F or H”, and the claim also recites that the substituent L3A is “preferably H or CH3” and that the substituent L4A is “preferably H” 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 5 fails to particularly point out and distinctly claim each of the substituents L3A and L4A in compound of formula IA-A contained in the claimed liquid crystalline medium.
Claim 6 is rejected as being vague and indefinite when it recites “X1C denotes -CN, F, CF3, -OCF3, -NCS, SF5 or O-CF═CF2, preferably -CN” (emphasis added); the scope of the protection sought by “preferably” 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 6 recites the broad recitation “X1C denotes -CN, F, CF3, -OCF3, -NCS, SF5 or O-CF═CF2”, and the claim also recites “preferably -CN” 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 6 fails to particularly point out and distinctly claim the substituent X1C in compound of formula IC contained in the claimed liquid crystalline medium.
Claim 7 is rejected as being vague and indefinite when it recites “comprising at least 80% altogether of compounds of formula IA, IB and IC” (emphasis added); the scope of the protection sought by “altogether” is not clear. Also, there is insufficient antecedent basis in claim 6 for the compounds of formula IA. Claim 7 fails to particularly point out and distinctly claim the contents of the claimed liquid crystalline medium i.e., whether the first component is represented by the compounds of formula IA, IB and IC whether the second component is represented by the compounds of formula IA, IB and IC or whether the compounds of formula IA, IB and IC are contained in the claimed medium in addition to the first and second components compounds.
Claim 8 is rejected as being vague and indefinite when it recites “comprising one, two, three or more compounds selected from formula ID-1 to ID-4” (emphasis added); the scope of the protection sought is not clear. Claim 8 fails to particularly point out and distinctly claim the minimum number of compounds selected from formulae ID-1 to ID-4 required in the claimed liquid crystalline medium.
Claim 8 is rejected as being vague and indefinite when it recites “L1D, L2D, L3D, L4D, L5D, L6D and L7D, independently denote F, H, alkyl, alkoxy or alkoxyalkyl, each with 1 to 7 C atoms” (emphasis added); the scope of the protection sought is not clear. Claim 8 fails to particularly point out and distinctly claim the substituents L1D, L2D, L3D, L4D, L5D, L6D and L7D in the compounds selected from formulae ID-1 to ID-4 contained in the claimed liquid crystalline medium.
Claim 9 is rejected as being vague and indefinite when it recites “exhibiting a ferroelectric smectic phase at least at a temperature from 10° C. to 0° C. upon cooling from higher temperatures” (emphasis added); the scope of the protection sought is not clear, especially as line 1 of claim 1 already recites that the claimed liquid crystalline medium exhibits ferroelectric smectic phase. Claim 9 fails to particularly point out and distinctly claim the contents of the claimed liquid crystalline medium.
Claim 10 is rejected as being vague and indefinite when it recites “exhibiting a hysteresis in its dielectric properties over varying temperature” (emphasis added); the scope of the protection sought by “a hysteresis in its dielectric properties” is not clear. Claim 10 fails to particularly point out and distinctly claim the contents of the claimed liquid crystalline medium.
Claim 12 is rejected as being vague and indefinite when it recites a “method of preparation of a liquid crystalline medium exhibiting a ferroelectric smectic phase“ (emphasis added); the scope of the protection sought is not clear. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claim 12 fails to particularly point out and distinctly claim the steps in the claimed method.
Claim 12 is rejected as being vague and indefinite when it recites “and any other components or additives are combined and mixed with each other” (emphasis added); the scope of the protection sought by “any other components or additives” is not clear.
Regarding claim 12, the phrase "or the like" renders the claim indefinite because the claim includes components and additives not actually disclosed (those encompassed by “any other” components or additives), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). Claim 12 fails to particularly point out and distinctly claim the method of preparation of a liquid crystalline medium.
Claim 13 is rejected as being vague and indefinite when it recites a “method of operating an electro-optical device, supercapacitor, electro-mechanic device, electric generators, or actuator comprising a use of the liquid crystalline medium according to claim 1 (emphasis added); the scope of the protection sought by a “method of operating” “comprising a use” is not clear. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claim 13 fails to particularly point out and distinctly claim the steps in the claimed method.
Claim 14 is rejected as being vague and indefinite when it recites a “method of operating a non-linear optic element, sensor, or memory device comprising a use of the liquid crystalline medium according to claim 1” (emphasis added); the scope of the protection sought by a “method of operating” “comprising a use” is not clear. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claim 14 fails to particularly point out and distinctly claim the steps in the claimed method.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,215,267. Although the claims at issue are not identical, they are not patentably distinct from each other because 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 a ferroelectric liquid crystal medium, and the corresponding process of preparation thereof said ferroelectric liquid crystal medium, characterized in that said ferroelectric liquid crystal medium exhibits a relative dielectric permittivity εr of 700 or more at 10° C. and 1 KHz, exhibits a hysteresis in its dielectric properties over varying temperature, and exhibits an enantiotropic ferroelectric smectic phase, and comprises a compounds inclusive of the compounds of the present formulae IA, IB, and/or IC.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 12 of copending Application No. 18/856,650 (corresponding 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 a ferroelectric liquid crystal medium, and the corresponding process of preparation thereof said ferroelectric liquid crystal medium, characterized in that said ferroelectric liquid crystal medium exhibits a relative dielectric permittivity εr of 700 or more at 10° C. and 1 KHz, exhibits a hysteresis in its dielectric properties over varying temperature, and exhibits an enantiotropic ferroelectric smectic phase, and comprises a compounds inclusive of the compounds of the present formulae IA, IB, and/or IC.
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. 2025/0320408, which is the pre-grant publication corresponding to the present application.
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.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737