DETAILED ACTION
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 .
Status of claims
The amendment to claims filed on 2/9/2026 is acknowledged. Claim 1 is amended. Claim 9 is canceled. Currently, claims 1, 3-8, and 10-24 are pending in the application with claim 13 being withdrawn from consideration.
Previous 112 rejections of claim 9 are withdrawn in view of the above amendment.
Previous prior art rejection is withdrawn in view of the above amendment.
Claims 1, 3-8, 10-12 and 14 are rejected on a new ground of rejection. See the rejection below.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “formula (2) and (3)” in line 7. It is suggested to be change to “formulas (2) and (3)”. Appropriate correction is required.
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.
Claims 1, 3-8, 10-12 and 14 are 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.
As amended, claim 1 recites “a polymer compound containing a repeat unit represented by formula (2) and (3) described below…
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” in lines 6-7, 13 and 29, “the polymer compound has side chains containing a crosslinkable group, the crosslinkable group being a group that forms mutual bonds between carbon atoms of the crosslinkable group of other side chains of the polymer compound at 230oC” in lines 8-11, “wherein the groups that form the mutual bonds between the carbon atoms of the crosslinkable group at 230oC represented by formula (1I)
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” in lines 24-26.
Applicant does not have the support for the limitations in the originally filed disclosure. Applicant points to paragraphs [0037]-[0039] and [0017]-[0021] for the support of the limitations. However, paragraphs [0037]-[0039] describe the polymer compound including the repeating unit having formula (3) which has side chains containing a crosslinkable group that form mutual bonds between the carbon atoms of the crosslinkable group to be benzocyclobutane (or benzocyclobutene)
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having formula (1A) in paragraph [0021]; paragraphs [0017]-[0021] describe the naphthalenecyclobutane (or naphthalenecyclobutene) of formula (1I) is the alternative to benzocyclobutane (or benzocyclobutene) having formula (1A). Formula 2 does not have carbon (C) in the back bone for the crosslinking group mutually bonded to. Formula 3 has a carbon (C) in the back bone, but is mutually bonded to the benzocyclobutane (formula 1A), and no place for other crosslinking group such as naphthalenecyclobutene (formula 1I) to be mutually bonded to. Applicant does not disclose a polymer compound having repeating unit of formula (2) and formula (3) with a crosslinking group to be
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and
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.
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, 3-8, 10-12 and 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.
As amended, claim 1 recites “a polymer compound containing a repeat unit represented by formula (2) and (3) described below…
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” in lines 6-7, 13 and 29, “the polymer compound has side chains containing a crosslinkable group, the crosslinkable group being a group that forms mutual bonds between carbon atoms of the crosslinkable group of other side chains of the polymer compound at 230oC” in lines 8-11, “wherein the groups that form the mutual bonds between the carbon atoms of the crosslinkable group at 230oC represented by formula (1I)
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” in lines 24-26. It is unclear what “side chains containing a crosslinkable group, the crosslinkable group being a group that forms mutual bonds between the carbon atoms of the crosslinkable group of other side chains of the polymer compound at 230oC” being claimed or being referred to, e.g. a process limitation or a structural limitation.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3, 7-8, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Urano et al. (US 2012/0193617) in view of Sekine et al. (US 2015/0115204), and further in view of Ilda et al. (US 2015/0102334).
Regarding claim 1, Urano et al. discloses an organic photodiode (e.g. organic solar cell element, fig. 2, [0031]), comprising, in sequence:
a first electrode (see anode 2, fig. 2, [0468]),
a hole transport layer (see hole extraction layer 10, fig. 2, [00468]),
a photoelectric conversion layer (see photoelectric conversion layer 11, fig. 2, [00468]), and
a second electrode (see cathode 9, fig. 2, [0468]);
wherein the photoelectric conversion layer (11) contains a p-type semiconductor and an n-type semiconductor (see [0473-0483]);
wherein the hole transport layer (or hole extraction layer 10) preferably to be the polymer of the disclosed invention (see [0486]), which contains a repeat unit represented by formula (IV) (see [0020-0022] and [0180-0190]),
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The formula (IV) of Urano et al. is similar to the claimed formula (2), in which m of claimed formula (2) - or p in formula IV of Urano et al. - is an integer of 0 to 3 (see [0020] and [[0180]), Ar11 and Ar12 (or also Ar11 and Ar12 in formula IV of Urano et al.) are each independently a direct bond or an aromatic ring group with may have a substituent (see [0020] and [0180]), Ar13 to Ar15 (or also Ar13 to Ar15 in formula IV of Urano et al.) are each independently represent an aromatic ring which may have a substituent (see [0021] and [0181]), and provided that Ar11 and Ar12 are not both direct bond (see [0022] and [0182]).
Urano et al. further discloses the polymer includes a crosslinkable compound such as benzocyclobutane ([0379-380]), and more specifically the crosslinkable compound of benzocyclobutane is at the side chain (see formulae XXI and XXIII).
Sekine et al. discloses a crosslinkable group having formula Q-01 to Q-19 (see [0152]), wherein formula Q-11 (shown in page 40) is the same as the claimed formula (11) and formulas Q-16 and Q-17 (shown in page 41) are benzocyclobutane. In other words, Sekine et al. discloses benzocyclobutane is equivalent crosslinkable group as the claimed formula (11) – or naphthocyclobutane.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the organic photodiode of Urano et al. by using crosslinkable group of naphthocyclobutane – or formula Q11 of Sekine et al. or claimed formula (11) – taught by Sekine et al., because Sekine et al. teaches naphthocyclobutane having formula (11) as claimed is equivalent crosslinkable group to benzocyclobutane that is taught by Urano et al. Such modification would involve nothing more than use of known material for its intended use in a known environment to accomplish entirely expected result. International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). The Courts have held that the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (See MPEP 2144.07).
Urano et al. teaches the polymer compound containing a repeating unit having formula (2), but does not disclose a repeating unit having formulas (2) and (3).
Ilda et al. discloses a polymer compound containing a repeating unit having formulas (2) and (3) as claimed (see formulas (2) and (3) in paragraphs [0017-0028], formulas (3a) described in paragraph 0115, or [Chemical Formula 12] described in [0118-0109]). Ilda et al. discloses adding the formula (3) would provide excellent charge-transporting properties and excellent electrical durability (see [0092]).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the polymer compound of modified Urano et al. by incorporating formula (3) to the polymer compound such that the polymer compound containing a repeating unit having formulas (2) and (3) as taught by Ilda et al., because Ilda et al. teaches adding formula (3) would provide excellent charge-transporting properties and excellent electrical durability.
Modified Urano et al. discloses the same groups as claimed, more specifically as claimed in claim 2, the groups will have the characteristics of form mutual bonds between carbon atoms of side chains of molecules of the polymer compounds at 230oC as claimed. Same chemical groups have the same characteristics. See MPEP 2112.
Regarding claim 3, modified Urano et al. discloses an organic photodiode as in claim 1, wherein Urano et al. discloses the crosslinkable groups including epoxy and oxetane (see claim 1 above), which correspond to the claimed “groups that form the mutual bonds between the carbon atoms of the side chains at 230°C are each a group that undergoes ring-opening polymerization” in the instant claim.
Regarding claim 7, modified Urano et al. discloses an organic photodiode as in claim 1 above, wherein Urano et al. discloses the polymer compound contains, as a partial structure, a monovalent or di- or higher valent group derived from a fluorene ring ([0051] and [0062] or [0072] and [0084]).
Regarding claim 8, Urano et al. discloses an organic photodiode as in claim 1 above. Urano et al. teaches the weight-average molecular weight (Mw) of the polymer is generally 3,000,000 or lower and generally 1,000 or higher, and more preferably 500,000 or lower and more preferably 5,000 or higher (see [0174]); and the number-average molecular weight (Mn) is generally 2,500,00 or lower and generally 500 or higher, and more preferably 400,00 or lower and more 3,000 or higher (see [0175]). As such, the polydispersity index (or Mw/Mn) is found to be generally in the range 0.0004 (=1000/2500000) to 6000 (=3,000,000/500) and preferably in the range 0.0125 (=5000/400000) to 166.67 (=500,000/3000). Urano et al. also exemplifies the polymer having polydispersity index (or Mw/Mn) of 1.48. 1.48 is right within the claimed range of 2.5 or less.
Urano et al. does not disclose the exact ranges of the weight-average molecular weight (Mw) to be 20,000 or more and a polydispersity index (Mw/Mn) to be 2.5 or less.
However, it would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of 20,000 to 3,000,00 or 20,000 to 500,000 in the ranges of generally 3,000,000 or lower and generally 1,000 or higher, and more preferably 500,000 or lower and more preferably 5,000 or higher for the weight-average molecular weight; and overlapping portion of 0.0004 to 2.5 or 0.0125 to 2.5 in the ranges of generally 0.0004 to 6000 or preferably 0.0125 to 166.67, and more specifically 1.48 for the polydispersity index (Mw/Mn) disclosed by Urano et al.; because Urano et al. explicitly exemplifies the polydispersity index (Mw/Mn) of 1.48 and selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
Regarding claim 10, modified Urano et al. discloses an organic photodiode as in claim 1 above, wherein Urano et al. discloses including 1 or 2 crosslinkable groups per compound (see oxetane, epoxy or benzocyclobutane incorporated as shown in pages 27-28, 31-32, [Chem. 43] and [Chem.44), and more specifically 1 group of benzocyclobutane in the compound having molecular weight of about 828.24 in [Chem. 44). As such the groups per molecular weight of 1,000 is found to be 1.2 (or 1 benzocyclobutane group/0.82824). 1.2 is right within the range of 0.01 or more and 3 or less groups per molecular weight of 1,000.
Regarding claims 11-12, modified Urano et al. discloses an organic photodiode as in claim 1 above, wherein Urano et al. teaches using the n-type semiconductor of octaazaporphyrin, aromatic carboxylic acid anhydrides and imides, naphthalenetetracarboxylic anhydride, naphthalenetetracarboxylic acid diimide, perylenetetracarboxylic anhydride, and perylenetetratracarboxylic acid diimide ([0479]), or non-fullerene materials. As such, Urano et al. teaches the percentage of an n- type semiconductor having a fullerene skeleton is 0%, which is within the claimed range of 10% or less by weight based on an n-type semiconductor having no fullerene skeleton as claimed in claim 11, and “substantially no n-type semiconductor having a fullerene skeleton is contained” as claimed in claim 12.
Claim(s) 4-6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over modified Urano et al. (US 2012/0193617) as applied to claim 1 above, and further in view of Lee et al. (“Bandgap Narrowing in Non-fullerene Acceptors: Single Atom Substitution Leads to High Optoelectronic Response Beyond 1000nm”).
Regarding claims 4-6 and 14, modified Urano et al. discloses an organic photodiode as in claim 1 above, wherein Urano et al. teaches using non-fullerene materials for n-type semiconductor (see ([0479]).
Modified Urano et al. does not explicitly disclose the n-type semiconductor is represented by formula (4) with D being a donor site containing a polycyclic aromatic moiety, and each A being an acceptor site containing a malononitrile group.
Lee et al. discloses using an n-type semiconductor (or non fullerene acceptor) of COTIC-4F or SiOTIC-4F (see Fig. 1(a)), which have the formula (4) with D being a donor site containing a polycyclic aromatic moiety, and each A being an acceptor site containing a malononitrile group as claimed in claims 4-6 and 10.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the photoelectric conversion layer of the organic photodiode (or the organic solar cell element) of modified Urano et al. by using the n-type semiconductor of COTIC-4F or SiOTIC-4F as taught by Lee et al.; because Urano et al. suggests using non-fullerene materials for the n-type semiconductor, and Lee et al. teaches the photoelectric conversion layer using such n-type semiconductor would provide an efficient semitransparent organic solar cell that is strongly absorb light in the NIR region of the spectrum while remaining transparent in the visible region (see abstract and introduction in page 1).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-8, 10-12 and 14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues previous cited references do not teach the polymer compound containing a repeat unit represent by formulas (2) and (3) as claimed.
However, Applicant’s arguments are moot in view of the new ground of rejection. Ilda et al. teaches the polymer compound containing a repeat unit represent by formulas (2) and (3) as claimed. See the rejection above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 THANH-TRUC TRINH whose telephone number is (571)272-6594. The examiner can normally be reached 9:00am - 6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey T. Barton can be reached on 5712721307. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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THANH-TRUC TRINH
Primary Examiner
Art Unit 1726
/THANH TRUC TRINH/Primary Examiner, Art Unit 1726
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