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 .
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.
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Claims 7-12 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,207,542. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6 of ‘542 teach all of the claimed limitations of the instant case, including a method of manufacturing a photoelectric conversion element comprising an active layer with Chemical Formulas 1-3, and all the claimed first layer precursor steps with the first and second heating steps (see claim 1 of ‘542).
Allowable Subject Matter
Claims 7-12 contain allowable subject matter.
The following is a statement of reasons for the indication of allowable subject matter: Takimoto et al US 5486442 and Takekoshi et al US 4716216 are considered the closest prior art of record. Takimoto teaches a method for manufacturing a photoelectric conversion element comprising forming a compound represented by Formulas 1-2 (see col. 9 formulas and col. 10 lines 10-52), wherein a first layer is formed by applying polyamic acid (col. 10, lines 10-52, col. 12, lines 29-55), a first heating step at, for example, 120C for 30 min, followed by a second heating step at over 200 degrees C (see Example 11). However, the second heating step of imidizing the polyamic acid is performed over several hours. Takekoshi teaches a similar process of forming crystalline polyimides using a two-stage process (abstract and col. 6, lines 3-21). None of the prior art teach all of the claimed limitations including the two-step heating process for the claimed durations to form the claimed formulas.
Conclusion
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/NATHAN T LEONG/ Primary Examiner, Art Unit 1715