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
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tamano et al. (JP2000077186). The machine translation is replied upon for the rejection purposes.
Regarding claims 1-6, Tamano discloses the following compounds that read on the claimed compound recited in claims 1- 6, specifically the claimed compound 1-3, when Y1-Y4 are O, X1-X7 and X10-X11 each independently represent hydrogen, C1-C30 alkyl, or C6-C30 aryl.
PNG
media_image1.png
104
264
media_image1.png
Greyscale
PNG
media_image2.png
157
254
media_image2.png
Greyscale
PNG
media_image3.png
118
259
media_image3.png
Greyscale
PNG
media_image4.png
146
258
media_image4.png
Greyscale
PNG
media_image5.png
160
255
media_image5.png
Greyscale
PNG
media_image6.png
115
256
media_image6.png
Greyscale
PNG
media_image7.png
133
252
media_image7.png
Greyscale
PNG
media_image8.png
149
254
media_image8.png
Greyscale
PNG
media_image9.png
243
356
media_image9.png
Greyscale
Regarding claim 10, Tamano discloses an organic electroluminescent device comprising the compound of claim 1 (para 0005, 0063-64).
Claims 1-6 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ji et al. (US20190036059).
Regarding claims 1-6, Ji discloses the following compounds (84-131), that read on the claimed compound recited in claims 1- 6, specifically the claimed compounds 1-1, 1-2, 1-3, and 1-4.
PNG
media_image10.png
171
190
media_image10.png
Greyscale
PNG
media_image11.png
172
193
media_image11.png
Greyscale
PNG
media_image12.png
172
184
media_image12.png
Greyscale
PNG
media_image13.png
175
188
media_image13.png
Greyscale
PNG
media_image14.png
149
228
media_image14.png
Greyscale
PNG
media_image15.png
138
207
media_image15.png
Greyscale
PNG
media_image16.png
222
249
media_image16.png
Greyscale
PNG
media_image17.png
208
263
media_image17.png
Greyscale
PNG
media_image18.png
146
198
media_image18.png
Greyscale
Regarding claim 8-9, Ji discloses a plurality of host materials (organic layer) comprising two or more hosts (para 0109). The host contains one of the above compounds and also the following compounds (para 0128).
PNG
media_image19.png
158
398
media_image19.png
Greyscale
PNG
media_image20.png
153
190
media_image20.png
Greyscale
Regarding claim 10, Ji discloses an organic electroluminescent device comprising the compound of claim 1 (para 0092).
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (US20190036059).
Ji discloses the compounds below, wherein Y 2 and Y4 is independently selected from the group consisting of O, N-Ph or NR (para 0085), R and R4-R7 are each hydrogen, aryl or heteroaryl (para 0083)
Ji does not disclose the invention with sufficient specificity because there is some picking and choosing of Y and R groups from the options disclosed in Ji. However, given that Ji teaches the elected substituent groups bonded in the claimed positions to the same 8-membered ring circulene core structure, it would have been within the purview of a skilled artisan before the effective filing date of the claimed invention to select the particular claimed groups from the embodiments of R and X groups taught, disclosed and/or suggested by Ji to arrive at the claimed compounds C-29-C-35, C-181, 132 and C-133.
PNG
media_image21.png
209
224
media_image21.png
Greyscale
PNG
media_image22.png
212
276
media_image22.png
Greyscale
PNG
media_image23.png
221
761
media_image23.png
Greyscale
PNG
media_image24.png
356
383
media_image24.png
Greyscale
PNG
media_image25.png
450
456
media_image25.png
Greyscale
PNG
media_image26.png
308
222
media_image26.png
Greyscale
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, 4-6 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-9, and 11 of copending Application No. 17/209181 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application No. 17/209181 contains substantially similar organic electroluminescent compounds.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAIDUNG D NGUYEN whose telephone number is (571)270-5455. The examiner can normally be reached M-Th: 10a-3p.
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, Angela Brown-Pettigrew can be reached at 571-272-2817. 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.
/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
6/4/2026
Prosecution Insights