DETAILED ACTION
This office action is in response to the Applicant’s filing dated June 26th, 2026.
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
This application is a 371 of PCT/IB2019/061208 filed on December 20th, 2019; and claims benefit of foreign priority of IT102018000020419 filed on December 20th, 2018. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 5 and 14 are pending in the instant application. Acknowledgement is made of Applicant's remarks and amendments filed on June 26th, 2026. Acknowledgement is made of Applicant's amendment of claim 5.
Objections and/or Rejections and Response to Arguments
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated (Maintained Objections and/or Rejections) or newly applied (New Objections and/or Rejections, Necessitated by Amendment or New Objections and/or Rejections, NOT Necessitated by Amendment). They constitute the complete set presently being applied to the instant application.
Maintained Objections and/or Rejections
Claim Objections
Claim 14 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Abbondanza et al (WO 2016/046310 A1), cited in a previous Office action; in view of Ming et al (Polymer Chemistry, 2015; 6(48):8248-8258), cited in a previous Office action.
Regarding claim 5, Abbondanza teaches Formula I shown below (page 4, line 9):
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Abbondanza teaches that Z can be sulfur (S) (page 5, line 15); R1 can be hydrogen (H) or aryl (page 5, lines 16-17), defining “aryl” as including 2,5-dimethylphenyl, 2,6-dimethylphenyl and 2-phenoxyphenyl (page 6, lines 19-21); and R2, R3, R4 and R5 can be H (page 5, lines 20 and 25). Abbondanza further teaches these compounds exhibit fluorescent properties (page 3, lines 4-6 and 26-32; page 4, lines 6-8).
Abbondanza explicitly teaches Example 2 (CAS RN: 1894211-60-9) and Example 3 (CAS RN: 1894211-61-0) shown below (pages 15-17):
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Example 2 is a compound of Abbondanza’s Formula I wherein Z is S; R1 is 2,5-dimethylphenyl; and R2, R3, R4 and R5 are H. Example 3 is a compound of Abbondanza’s Formula I wherein Z is S; R1 is 2,6-dimethylphenyl; and R2, R3, R4 and R5 are H.
The compounds formed when Z is S; R1 is 2,5-dimethylphenyl, 2,6-dimethylphenyl or 2-phenoxyphenyl; and R2, R3, R4 and R5 are H form very similar compounds to the compounds of instant claim 5. The only difference is the presence of a nitrogen (N) atom in the core structure next to the R7 variable in instantly claimed Formula (I) as shown below.
Abbondanza does not teach a compound with an N atom in the core structure at the position indicated by the arrow
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.
Ming teaches Compound Th-PSe (page 8250, Scheme 2):
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Ming teaches this compound exhibits fluorescent properties, disclosing that the compound has a λmax peak absorption for Th-PSe at 313nm (page 8252, Figure 1); and a fluorescence emission spectrum, with a λem peak at 643nm (page 8252, Figures 1 and 2).
It would have been prima facie obvious to a person of ordinary skill in the art to modify the core structure of Abbondanza by incorporating a N atom at the indicated position as taught by Ming. Abbondanza teaches compounds exhibiting fluorescent properties with specific aryl substitutions (e.g. 2,5-dimethylphenyl, 2,6-dimethylphenyl and 2-phenoxyphenyl) for tuning such properties, while Ming teaches structurally similar compounds in which the incorporation of an N atom at the indicated position within the core heteroaromatic structure yields fluorescent compounds. In view of these teachings, one of ordinary skill in the art would have been motivated to make this substitution into the core structure of Abbondanza to obtain a predictable fluorescent variant compound, with modified properties. Moreover, Abbondanza teaches R1 can be H, rendering the core structure even more similar to that disclosed by Ming, and further supporting the compatibility of the teachings. Accordingly, the substitution of an N atom into the core structure at the indicated position represents the predictable use of prior art elements according to their established functions, yielding no more than predictable results.
“[T]he rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Taken together, all of this would result in the compounds of instant claim 5 with a reasonable expectation of success.
Response to Arguments
Applicant argues:
Applicant contends the instantly claimed structures are chemically and structurally distinct from both polymeric systems of Ming and the benzoheterodiazole derivatives of Abbondanza.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
The instantly claimed structures differ from the compounds taught by Abbondanza only by the substitution of an N atom for a C atom at the position indicated by the red arrow
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. Motivation to modify the core structure of Abbondanza by incorporating a N atom at the indicated position as taught by Ming is discussed in the above rejection, thereby arriving at the instantly claimed compounds.
Applicant argues:
Applicant contends the claimed structures are small molecules rather than polymeric or matrix embedded systems.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
The compounds of Abbondanza are nearly identical to the instantly claimed compounds, differing only by the substitution of an N atom for a C atom at the position indicated by the red arrow
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, and thus would also be considered small molecules by one of ordinary skill in the art.
Applicant argues:
Applicant contends that the cited references disclose unrelated end uses (electrochromic behavior vs luminescent solar conversion).
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
The instant claims are directed to the compounds themselves, not any method of use or device comprising the compounds. Moreover, the compounds disclosed by Abbondanza and Ming both possess fluorescent properties and rationales to combine teachings are discussed in the above rejection.
Conclusion
Claim 5 is rejected.
Claim 14 is objected to.
No claim is allowed.
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.
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/C.L.J./Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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