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 8-11, 19-29 are pending in the current application.
2. This application is a 371 of PCT/CN2019/105938 09/16/2019.
Restriction Election Maintained
3. Applicant’s election of group I in the reply filed on March 16, 2022 was previously acknowledged. A provisional species election of compound 2 was made.
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Compound 2 would read on claim 1, if B is pyridine fused to A which was phenyl, 1 k is 1, A is an arene (benzene), m is 3, X is O, C is the polythiophene shown above, M is Al, n is 0. Since A and B cannot be fused no generic claims read on the elected species.
Response to Amendments
4. Rejections of canceled claims are withdrawn.
Various new grounds of rejection are set forth below.
Improper Markush
5. Claims 23-29 are rejected on the 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). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of claim 23 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: The specification discloses only four compounds on pages 19-21, which have a very simple structure unrelated to the claimed formula. These are the compounds in allowed claims 19-22.
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All of the compounds disclosed are aluminum complexes of an 8-hydroxyquinoline with a polythiophene group in the 4 position. The instant claims now delete the only disclosed compounds above, by changing the hydroxyquinoline to an undefined group, since A and B are not defined, and a mélange of unrelated rings in A and B in dependent claim 24-29. L is also undefined in claim 23. C is not drawn to the only photochromic unit disclosed, the polythiophene above. The claims are structurally unrelated to the disclosed compounds.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim Rejections - 35 USC § 112
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.
6. Claims 23-29 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. Claim 23 fails to define the groups A and B. The group L is also undefined. Claim 23 also makes reference to a “cyclic structure derivative” but does not explain what this refers to. Claim 26 lists pyran as a heteroarene, however pyran is aromatic.
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.
7. Claims 24-29 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.
Dependent claims 24-28 are drawn to A and B definitions however since in the claim from which they depend A and B are not defined, the claims are of improper dependent form. In claim 29, L is defined, however in the claim from which it depends it has no definition.
Claim 27 is also deficient for additional reasons. The rings in B in claim 25 are limited to 5-membered or 6-membered nitrogen containing heteroarene or heterocycles, however a large number of the rings in claim 27 are not 5 or 6 membered heteroarenes or heterocycles including various fused heteroaryls that are not provided for including indole, benzimidazole, benzothiazole. Ring B in claim 25 may not be substituted. Claim 26 lists pyran as a heteroarene, however pyran is not aromatic and does not fall under the list in claim 24.
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.
Allowable Subject Matter
8. Claims 19-22 are allowed. The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Rodriguez, F. “Tuning light emission colour of AlQ3 through oligothiophene substituents” Organic Optoelectronics and Photonics II, Proc. of SPIE Vol. 6192, 619238, (2006). Rodriguez reports “here on the synthesis of a novel emissive material based on oligothiophene substituted 8- hydroxyquinoline. This emissive material combines the high quantum efficiency of A1Q3 with charge transport properties of oligothiophenes, which are known to be a good electron and hole transport material.” The closest compound is:
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In order to arrive at the compound of the instant claims the thiophene would need to be replaced with the claimed substituted thiophenes. At least 5-[4-[2-(2,5-dimethyl-3-thienyl)-1-methyl-1H-indol-3-yl]-5-methyl-2-thienyl is not a known compound. Assuming one were motivated to modify Rodriguez by modifying the thiophene groups, it would make sense to choose from known thiophenes not ones that did not exist at the time the invention was made. Zhen, Shijie; “Synthesis, structure, photoluminescence and photochromism of phosphindole oxide and benzo[b]thiophene S,S-dioxide derivatives.” Journal of Photochemistry and Photobiology, A: Chemistry, 355, 274-282 2018 discloses compound B in Figure 6 which contains the methylated fragment of compound 2 in claim 20, however there is no suggestion to combine it with the teaching of Rodriguez. There are a number of ways to attach it as a substituent and to arrive at the arrangement claimed one would need to remove the methyl group and attach it directly and there is no teaching.
Conclusion
9. 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 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
1 Claim 1 has been amended where A, B and L are not defined and C is not the group in the species. Claims 23-29 do not read on the elected species.