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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 04/25/2024 is acknowledged. Accordingly, claims 1-20 are pending and claims 3-9 are withdrawn.
Summary of Claims
Claim 1 is amended due to Applicant's amendment dated 10/14/2025. Claims 1-20 are pending and claims 3-9 are withdrawn.
Response to Amendment
The objection to claim 1 as set forth in the previous Office Action is overcome due to the Applicant's amendment dated 10/14/2025.
The rejection of claims 1, 10-11, and 16 under 35 U.S.C. 103 as being unpatentable over Okamoto (English translation of JP 2015185620 A obtained from Espacenet) in view of Lee (US 2011/0174377 A1) and Takeya (US 2016/0104842 A1) is overcome due to the Applicant’s amendment dated 10/14/2025. The rejection is withdrawn.
The rejection of claims 2 and 14-15 under 35 U.S.C. 103 as being unpatentable over Okamoto in view of Lee, Takeya, Kitamura (US 2017/0098786 A1), and Aramaki (English translation of JP 2007112748 A obtained from Global Dossier) is overcome due to the Applicant’s amendment dated 10/14/2025. The rejection is withdrawn.
The rejection of claims 12-13 and 18-19 under 35 U.S.C. 103 as being unpatentable over Okamoto in view of Lee, Takeya, and Yamaguchi (US 2019/0244942 A1) is overcome due to the Applicant’s amendment dated 10/14/2025. The rejection is withdrawn.
The rejection of claims 17 and 20 under 35 U.S.C. 103 as being unpatentable over Okamoto in view of Lee, Takeya, Kitamura, Aramaki, and Yamaguchi is overcome due to the Applicant’s amendment dated 10/14/2025. The rejection is withdrawn.
However, as outlined below, new grounds of rejection have been made.
Response to Arguments
Applicant’s arguments on pages 8-10 of the reply dated 10/14/2025 with respect to the rejection of claims 1-2 and 10-20 as set forth in the previous Office Action have been fully considered but they are not persuasive.
Applicant's argument –Applicant argues on pages 8-10 that the cited references fail to teach the claims as amended. In particular, Applicant argues that while Okamoto describes an organic semiconductor film with a thickness of 16nm, Okamoto does not describe an average film thickness within the range of 2 to 16 nm. Additionally, Applicant argues Takeya fails to teach an organic semiconductor film with an area of 10,000 mm2.
Examiner's response –With respect to the average film thickness, as discussed below and in the previous rejection, Okamoto teaches the organic semiconductor film of Example 1 formed with a thickness of 16 nm (Table 2-1 on page 18). Okamoto further teaches this is the average film thickness (¶ [0076]). Accordingly, as the claimed range of 2 to 16 nm includes the end point of 16 nm, the organic semiconductor of Okamoto teaches the claimed average thickness limitation.
Additionally, as discussed in the rejection below, while Okamoto in view of Lee and Takeya do not specifically teach an area of the organic semiconductor film is 100 cm2 (10,000 mm2) or more, it should be noted that the area of an organic semiconductor film is a result effective variable. For example, Bulgarevich (previously cited in the office action dated 02/12/2025) teaches an organic semiconductor crystal film having an area of 2.5 mm2 or more can be easily used in organic electronic devices (¶ [0019]). Accordingly, the size of an organic semiconductor film affects its ease of use. Additionally, one of ordinary skill in the art would expect the properties of an organic semiconductor device to change based on the area of the organic semiconductor film within. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to create an organic semiconductor film specifically having an area within the claimed range of 10,000 mm2 or more since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05. In the present invention, one would have been motivated to optimize the ease of use, and the desired properties of the resulting organic semiconductor device.
Accordingly, the cited references teach the claims as amended.
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 1-2 and 10-20 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.
Claim 1 recites the newly added limitation of an average film thickness of the organic semiconductor single crystal film is 2 to 16 nm.
The instant specification recites an organic semiconductor single crystal film having an average film thickness of 2 to 100 nm, preferably 4 to 20 nm (¶ [0013] and [0017]). However, nowhere in the instant specification does it specifically recite an average film thickness of 16 nm. Accordingly, while there is sufficient support in the instant specification for an average film thickness of 2 to 100 nm or 4 to 20 nm, there is not sufficient support for an average film thickness of 2 to 16 nm. For this reason, claim 1 is considered to have new matter.
Claims 2 and 10-20 are rejected for their dependency upon claim 1.
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 11, 15-16, and 19 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.
Claims 11 and 15-16 recite the organic semiconductor single crystal film comprises an average film thickness of 4 nm or more and 20 nm or less. However, claim 1 recites the newly amended limitation wherein the average film thickness of the organic semiconductor single crystal film is 2 to 16 nm. Accordingly, it is unclear whether the upper limit of the average film thickness is 16 nm (as recited in claim 1) or 20 nm (as recited in claims 11 and 15-16). For purposes of examination, the limitations in claims 11 and 15-16 will be interpreted as the organic semiconductor single crystal film comprises an average film thickness of 4 nm or more and 16 nm or less.
Claim 19 is rejected for its dependency upon indefinite claim 11.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11, 15-16, and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As discussed above in the rejection of claims 11 and 15-16 under 35 U.S.C. 112(b), claims 11 and 15-16 recite the organic semiconductor single crystal film comprises an average film thickness of 4 nm or more and 20 nm or less. As claim 1 recites the upper limit of the average film thickness is 16 nm but claims 11 and 15-16 recite an upper limit of 20 nm, claims 11 and 15-16 do not properly depend from claim 1.
Claim 19 is rejected for its dependency upon claim 11.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 10-11, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto (English translation of JP 2015185620 A obtained from Espacenet) in view of Lee (US 2011/0174377 A1), Takeya (US 2016/0104842 A1), and Bulgarevich (English translation of JP 2014216598 A obtained from Global Dossier), supporting evidence provided by Ehrenstein (Ehrenstein, Gottfried W., Gabriela Riedel, and Pia Trawiel. Thermal analysis of plastics: theory and practice. Carl Hanser Verlag GmbH Co KG, 2004. Properties of Key Polymers Table.)
Regarding claims 1, 10-11, and 16, Okamoto teaches an organic semiconductor device having excellent quality stability and high carrier mobility including a high-quality single crystal organic semiconductor film (¶ [0001], [0007], and [0027]). Okamoto teaches examples of organic semiconductor devices including Example 1, which includes a glass substrate and an organic semiconductor film formed there upon, wherein the organic semiconductor film is formed from the compound (1A) with a thickness of 16 nm (¶ [0053], [0071], and [0073]; Table 2-1) (claims 11-16). Compound (1A) reads on the claimed Formula (6) wherein R15 and R17 are each an alkyl group having 10 carbon atoms and R16 and R18 are each hydrogen.
(1A):
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Okamoto fails to teach the glass substrate has a glass transition point of 120°C or less or undergoes sublimation, melting, or decomposition at 120°C or less, as required by claim 1. However, Okamoto teaches the substrate may be made of material such as glass or plastic wherein the substrate may be rigid or flexible (¶ [0052]).
In the art of flexible devices such as semiconductor devices, Lee teaches a PET-based plastic substrate is superior in economical aspects as PET is inexpensive (¶ [0002], [0036], and [0047]).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to use a PET-based plastic substrate in the device of Okamoto, based on the teaching of Lee. The motivation for doing so would have been to provide an inexpensive substrate, as taught by Lee.
As evidenced by Ehrenstein, PET has a glass transition temperature of 70-80°C (see page 2 of Table).
Okamoto is silent as to the area of the organic semiconductor film. However, Okamoto does teach the single crystal film is advantageous in application to a large-area electronic device (¶ [0032]). Additionally, Okamoto teaches the organic semiconductor film is prepared using 3-chlorothiophene as a solvent and is formed using a solvent-evaporation method (¶ [0010]).
Takeya teaches a method for manufacturing a large-area organic semiconductor single crystal thin film by a solvent evaporation method based on droplet formation, wherein the film obtains high charge mobility (¶ [0001] and [0012]-[0013]). The resulting thin film obtains a shape that is 1 cm or more on a side (i.e., an area of several square centimeters) and 100 nm or less thick (¶ [0017] and [0074]). For example, the resulting thin film may obtain an area of not less than 5 cm x 5 cm (¶ [0058]). By manufacturing the thin film through this method, the thin film can have uniform high mobility over the entire region so that the organic semiconductor device can have excellent properties for practical use (¶ [0020]).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to form Okamoto’s organic semiconductor film based on the method taught by Takeya, wherein the film obtains an area of not less than 5 cm x 5 cm and a thickness of 100 nm or less. The motivation for doing so would have been to provide a thin film having uniform high mobility over the entire region and thus obtain a device with excellent properties, as taught by Takeya.
Accordingly, the organic semiconductor film obtains an area of not less than 25 cm2 (5 cm x 5 cm).
While Okamoto in view of Lee and Takeya do not specifically teach an area of the organic semiconductor film is 100 cm2 (10,000 mm2) or more, it should be noted that the area of an organic semiconductor film is a result effective variable. For example, Bulgarevich teaches an organic semiconductor crystal film having an area of 2.5 mm2 or more can be easily used in organic electronic devices (¶ [0019]). Accordingly, the size of an organic semiconductor film affects its ease of use. Additionally, one of ordinary skill in the art would expect the properties of an organic semiconductor device to change based on the area of the organic semiconductor film within. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to create an organic semiconductor film specifically having an area within the claimed range of 10,000 mm2 or more since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05. In the present invention, one would have been motivated to optimize the ease of use, and the desired properties of the resulting organic semiconductor device.
Per claim 10, Okamoto teaches the film of Example 1 comprises 1 domain/mm2 (¶ [0080]). Accordingly, Example 1 comprises a single domain with a maximum area of 1 mm2. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05.
Claims 2 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto (English translation of JP 2015185620 A obtained from Espacenet) in view of Lee (US 2011/0174377 A1) and Takeya (US 2016/0104842 A1) as applied to claim 1 above, and further in view of Kitamura (US 2017/0098786 A1) and Aramaki (English translation of JP 2007112748 A obtained from Global Dossier).
Regarding claims 2 and 14-15, Okamoto in view of Lee and Takeya teach the organic semiconductor device including the organic semiconductor film formed from compound (1A), as described above with respect to claim 1.
(1A):
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Okamoto’s compound (1A) fails to include an alkyl group that comprises O or S. However, Okamoto does teach an alkyl group of R15 to R18 may contain a hetero atom typically selected from an oxygen atom and a sulfur atom (¶ [0050]). Additionally, in Example 1, the solvent 3-chlorothiphene is used (i.e., a halogen-based solvent).
Kitamura teaches a composition for forming an organic semiconductor film containing a specific organic semiconductor having an alkoxyalkyl group as a component A and a solvent as a component B, in which a content of a non-halogen-based solvent is equal to or greater than 50% by mass with respect to a total content of the component B and a content of the component A is 0.7% to 15% by mass (abstract). Such a composition provides an organic semiconductor film that has excellent preservation stability and provides a device with excellent driving stability in the atmosphere (abstract). Kitamura teaches examples of component A including the compound below shown on pg. 11.
Kitamura’s compound:
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As seen by the above structures, Okamoto’s compound (1A) is identical to Kitamura’s compound except for wherein compound (1A) comprises substituents of C10H12 and Kitamura’s compound comprises substituents of H3C(H2C)4O(H2C)5.
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to 1) substitute the substituents of C10H12 on compound (1A) with H3C(H2C)4O(H2C)5 to arrive at a compound that reads on Kitamura’s component A, wherein the content of the modified compound (1A) is 0.7% to 15% by mass; and 2) to further provide a non-halogen-based solvent in addition to 3-chlorothiphene wherein the non-halogen-based solvent is equal to or greater than 50% by mass with respect to a total solvent content to arrive at a solvent that reads on Kitamura’s component B, based on the teaching of Kitamura. The motivation for doing so would have been to provide an organic semiconductor film that has excellent preservation stability and provides a device with excellent driving stability in the atmosphere, as taught by Kitamura.
The modified compound (1A) fails to include halogen atoms. However, Okamoto does teach a hydrogen atom in the alkyl group may be substituted with halogen (¶ [0051]).
Aramaki teaches fluorination of an organic semiconductor allows for the control of its HOMO and LUMO levels, and improves the injection characteristics and stability against oxidation (¶ [0037]).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to fluorinate the modified compound (1A), based on the teaching of Aramaki. The motivation for doing so would have been to allows for the control of its HOMO and LUMO levels, and improve the injection characteristics and stability against oxidation, as taught by Aramaki.
In particular, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to fluorinate at least one hydrogen on each H3C(H2C)4O(H2C)5 substituent, because it would have been choosing from a limited number of positions in which a fluorine atom may be placed, which would have been a choice from a finite number of identified, predictable solutions of a compound useful in the organic semiconductor device of Okamoto and possessing the benefits taught by Aramaki. One of ordinary skill in the art would have been motivated to produce additional compounds comprising fluorine atoms having the benefits taught by Aramaki in order to pursue the known options within his or her technical grasp with a reasonable expectation of success. See MPEP 2143.I.(E).
With respect to claim 14, Okamoto teaches in Example 1 comprises 1 domain/mm2 (¶ [0080]). Accordingly, Example 1 comprises a single domain with a maximum area of 1 mm2. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05.
As discussed above, the organic semiconductor film formed from compound (1A) has a thickness of 16 nm (claim 15).
Claims 12-13 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto (English translation of JP 2015185620 A obtained from Espacenet) in view of Lee (US 2011/0174377 A1) and Takeya (US 2016/0104842 A1) as applied to claims 1 and 10-11 above, and further in view of Yamaguchi (US 2019/0244942 A1).
Regarding claims 12-13 and 18-19, Okamoto in view of Lee and Takeya teach the organic semiconductor device including an organic single crystal semiconductor film comprised of compound (1A), as described above with respect to claims 1 and 10-11.
Okamoto is silent as to the number of molecular layers present in the organic semiconductor film.
With respect to the film’s thickness, Yamaguchi teaches the best organic single crystal semiconductor film is obtained with 3 to 5 molecular layers of a crystal film (¶ [0065]).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to form Okamoto’s organic semiconductor film with 3 to 5 molecular layers, because this would have been combining Okamoto’s organic semiconductor film with the known number of molecular layers of Yamaguchi’s organic semiconductor film according to known methods to yield predictable results of an organic semiconductor device having excellent quality stability and high carrier mobility, as taught by Okamoto. See MPEP 2143.I.(A).
Additionally, it would have been obvious to form Okamoto’s organic semiconductor film with 3 to 5 molecular layers as Yamaguchi teaches this provides the best film.
As discussed above, the organic semiconductor film formed from compound (1A) has a thickness of 16 nm. Accordingly, with 3 to 5 molecular layers and a thickness of 16 nm, each molecular layer would have a thickness of 3 to 5 nm (claims 12-13 and 18-19).
Claims 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto (English translation of JP 2015185620 A obtained from Espacenet) in view of Lee (US 2011/0174377 A1), Takeya (US 2016/0104842 A1), Kitamura (US 2017/0098786 A1), and Aramaki (English translation of JP 2007112748 A obtained from Global Dossier) as applied to claim 2 above, and further in view of Yamaguchi (US 2019/244942 A1).
Regarding claims 17 and 20, Okamoto in view of Lee, Takeya, Kitamura, and Aramaki teach the organic semiconductor device including an organic single crystal semiconductor film comprised of the modified compound (1A), as described above with respect to claim 2.
Okamoto is silent as to the number of molecular layers present in the organic semiconductor film.
With respect to the film’s thickness, Yamaguchi teaches the best organic single crystal semiconductor film is obtained with 3 to 5 molecular layers of a crystal film (¶ [0065]).
Therefore, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to form Okamoto’s organic semiconductor film with 3 to 5 molecular layers, because this would have been combining Okamoto’s organic semiconductor film with the known number of molecular layers of Yamaguchi’s organic semiconductor film according to known methods to yield predictable results of an organic semiconductor device having excellent quality stability and high carrier mobility, as taught by Okamoto. See MPEP 2143.I.(A).
Additionally, it would have been obvious to form Okamoto’s organic semiconductor film with 3 to 5 molecular layers as Yamaguchi teaches this provides the best film.
As discussed above, the organic semiconductor film formed from compound (1A) has a thickness of 16 nm. Accordingly, with 3 to 5 molecular layers and a thickness of 16 nm, each molecular layer would have a thickness of 3 to 5 nm (claims 17 and 20).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRAELYN R WATSON whose telephone number is (571)272-1822. The examiner can normally be reached M-F 7:30am-5pm.
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/BRAELYN R WATSON/Examiner, Art Unit 1786
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