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 .
DETAILED ACTION
1. Claims 4-5, 9-10, 14-15, 17-22 are pending in the current application.
2. This application has PRO 62/957,929 01/07/2020.
Species Election Status
3. Applicant’s election of group I and the species:
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in the reply filed on January 25, 2023 was previously acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election was treated as an election without traverse (MPEP § 818.03(a)). No explanation is provided as to which of the new and/or amended claims read on the elected species. After reviewing the amended claims, no claims read on the elected species. In fact no claims read on any disclosed species. Claim 4 previously read on the elected species, as a compound of the first generic structure on page 14, along with some others:
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These generic structures have been removed and all claims are now drawn to phantom generic structures.
Claim Rejections/Objections Withdrawn
4. The rejection of claim(s) 4 under 35 U.S.C. 103 as being unpatentable over KR 2017126814 A further in view of Su is withdrawn based upon the amendments.
Claim Rejections/Objections Maintained/ New Grounds of Rejection
5. The rejection of claim 4 as well as claims 5, 17-22 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is maintained. Applicants’ representative’s arguments of November 3, 2025 have been fully considered but are not persuasive.
The rejection of claim 4, and claims 5, 17-22 on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). Applicants’ representative’s arguments of November 3, 2025 have been fully considered but are not persuasive.
Rejection under the judicially created doctrine of improper Markush grouping
6. Claims 4-5, 17-22 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature. The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons: The claim 4 is drawn to not a Markush group but multiple Markush groups of a large number of generic formulae with nested variables for Bs, Vs, Rs and Xs, forming or not forming various rings. A Markush claim contains an ‘‘improper Markush grouping’’ if: (1) The species of the Markush group do not share a ‘‘single structural similarity,’’ or (2) the species do not share a common use. The compounds of Formula (I) (II) and (III) do not share a “single structural similarity” since there is no common core due to the variable permutations of the variables. They do not belong to the same recognized physical or chemical class or to the same art-recognized class. This structure is insubstantial to the disclosure of the compounds in the specification. According to the specification the compounds are fluorescent emitters. The structure of the molecule governs its ability to fluoresce.
The specification discloses only two compounds that have the property of fluorescent emitter, and none of the compounds are the compounds claimed. These compounds are homogenous and have other features that are not claimed. In this case the claims are so expansive that a common utility cannot be expected. All of the compounds, have a very specific structure absent from the instant claims.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1) (emphasis provided).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
7. Claim 4-5, 17-22 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The proviso, “provided that at least one or two of X8 to X26 represents N;” is unsupported by the disclosure and is new matter.
Conclusion
8. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID K O'DELL whose telephone number is (571)272-9071. The examiner can normally be reached on Monday - Friday 9:30 - 7:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached on 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID K O'DELL/ Primary Examiner, Art Unit 1621