www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/528,258
`
`11/17/2021
`
`Tian-Yi LI
`
`206157-0074-00US
`
`3427
`
`Riverside Law LLP/Universal Display Corporation
`175 Strafford Avenue
`Suite 100
`Wayne, PA 19087
`
`CLARK, GREGORY D
`
`ART UNIT
`1786
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/30/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`dcoccia @riversidelaw.com
`dockets @riversidelaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/528,258
`Li et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`GREGORYD CLARK
`1786
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 11/17/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)() This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-19 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`CL] Claim(s)__is/are allowed.
`Lj Claim(s)__ is/are rejected.
`() Claim(s)
`is/are objected to.
`Claim(s) 1-19 are subject to restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)7) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.1.) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) [[] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240930
`
`

`

`Application/Control Number: 17/528,258
`Art Unit: 1786
`
`Page 2
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`DETAILED ACTION
`
`Election/Restrictions
`
`1.
`
`Claim 1
`
`is generic to the following disclosed patentably distinct species:
`
`A compound (Species A).
`
`Applicant is required to select a SINGLE material for Species A from the
`
`materials in the claims or alternatively applicant can elect the select the single material
`
`for Species A from another material supported by the specification.
`
`For the single material elected for Species A, applicant is further required to elect
`
`a single representative for EACH variable, EACH substituent and EACH coefficient
`
`present in the elected material. Failure to limit the election of Species A to a single
`
`fully define material will be treated as not fully compliant.
`
`The species are independent ordistinct because as disclosed the different
`
`species have mutually exclusive characteristics for each identified species.
`
`In addition,
`
`these species are not obvious variants of each other based on the current record.
`
`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or
`
`a single grouping of patentably indistinct species, for prosecution on the merits to which
`
`the claims shall be restricted if no generic claim is finally held to be allowable.
`
`2.
`
`There is a search and/or examination burden for the patentably distinct species
`
`as set forth above becauseat least the following reason(s) apply:
`
`the compound
`
`encompass numerous organic classes of materials with variable substituent options
`
`which represent a serious search burden to achieving a reasonable search parameter
`
`query.
`
`

`

`Application/Control Number: 17/528,258
`Art Unit: 1786
`
`Page 3
`
`Applicant is advised that the reply to this requirement to be complete must
`
`include (i) an election of a species or a grouping of patentably indistinct species
`
`to be examined even though the requirement may be traversed (37 CFR 1.143) and
`
`(ii) identification of the claims encompassing the elected species or grouping of
`
`patentably indistinct species, including any claims subsequently added. An argument
`
`that a claim is allowable or that all claims are generic is considered nonresponsive
`
`unless accompanied by an election.
`
`The election may be made with or without traverse. To preserve aright to
`
`petition, the election must be madewith traverse. If the reply does notdistinctly and
`
`specifically point out supposed errors in the election of species requirement, the election
`
`shall be treated as an election without traverse. Traversal must be presented at the time
`
`of election in order to be considered timely. Failure to timely traverse the requirement
`
`will result in the loss of right to petition under 37 CFR 1.144.
`
`If claims are added after
`
`the election, applicant must indicate which of these claims are readable on the elected
`
`species or grouping of patentably indistinct species.
`
`3.
`
`Should applicant traverse on the ground that the species, or groupings of
`
`patentably indistinct species from which election is required, are not patentably distinct,
`
`applicant should submit evidenceor identify such evidence now of record showing the
`
`species to be obvious variants or clearly admit on the record that this is the case. In
`
`either instance, if the examiner finds one of the species unpatentable overthe priorart,
`
`the evidence or admission may be usedin a rejection under 35 U.S.C. 103 or pre-AlA
`
`35 U.S.C. 103(a) of the other species.
`
`

`

`Application/Control Number: 17/528,258
`Art Unit: 1786
`
`Page 4
`
`Upon the allowance of a generic claim, applicant will be entitled to consideration
`
`of claims to additional species which depend from or otherwise require all the limitations
`
`of an allowable generic claim as provided by 37 CFR 1.141.
`
`4.
`
`Applicant is reminded that upon the cancellation of claims to a non-elected
`
`invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one
`
`or more of the currently named inventors is no longer an inventor of at least one claim
`
`remaining in the application. A request to correct inventorship under 37 CFR 1.48(a)
`
`must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that
`
`identifies each inventor by his or her legal name and by the processing fee required
`
`under 37 CFR 1.17(i).
`
`The examiner has required restriction between product or apparatus claims and
`
`process claims. Where applicant elects claims directed to the product/apparatus, and all
`
`product/apparatus claims are subsequently found allowable, withdrawn process claims
`
`that includeall the limitations of the allowable product/apparatus claims should be
`
`considered for rejoinder. All claims directed to a nonelected processinvention must
`
`include all the limitations of an allowable product/apparatus claim for that process
`
`invention to be rejoined.
`
`In the event of rejoinder, the requirementfor restriction between the
`
`product/apparatus claims and the rejoined process claims will be withdrawn, and the
`
`rejoined processclaims will be fully examined for patentability in accordance with 37
`
`CFR 1.104. Thus, to be allowable, the rejoined claims must meetall criteria for
`
`patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Uniil all
`
`

`

`Application/Control Number: 17/528,258
`Art Unit: 1786
`
`Page 5
`
`claims to the elected product/apparatus are found allowable, an otherwise proper
`
`restriction requirement between product/apparatus claims and process claims may be
`
`maintained. Withdrawn process claims that are not commensurate in scope with an
`
`allowable product/apparatus claim will not be rejoined. See MPEP § 821.04.
`
`Additionally,
`
`in order for rejoinder to occur, applicant is advised that the process claims
`
`should be amended during prosecution to require the limitations of the
`
`product/apparatus claims. Failure to do so mayresult in no rejoinder. Further, note
`
`that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply
`
`wheretherestriction requirement is withdrawn by the examiner before the patent
`
`issues. See MPEP § 804.01.
`
`Conclusion
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to GREGORY D CLARK whosetelephone numberis
`
`(571)270-7087. The examiner can normally be reached on 8AM-4PM M-F.
`
`Examinerinterviews 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:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Jennifer Chriss can be reached on 571-272-7783. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 17/528,258
`Art Unit: 1786
`
`Page 6
`
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`
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`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see
`
`https://ppairmy.uspto.gov/pair/PrivatePair. Should you have questions on accessto the
`
`Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197
`
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`
`If you would like assistance from a USPTO Customer Service Representative
`
`or accessto the automated information system, call 800-786-9199 (INUSA OR
`
`CANADA)or 571-272-1000.
`
`/GREGORYD CLARK/
`Primary Examiner, Art Unit 1786
`
`