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 .
This Office action is in response to Amendments filed 2/4/2026.
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.
Claim(s) 1, 3, 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Keuren et al. (“Linear and third order nonlinear optical properties of substituted oligothiophenes”, Journal of Chemical Physics (1999), 110(7), 3584-3590; a copy of which was already provided) in view of Mahmood et al. (“First-principles theoretical designing of planar non-fullerene small molecular acceptors for organic solar cells: manipulation of noncovalent interactions”, Phys. Chem. Chem. Phys., 2019, 21, 2128; a copy of which was already provided).
Regarding claim 1, Van Keuren discloses an organic semiconducting compound (Compound 366-88-1 in Fig. 3) which is satisfies Applicant’s formula of claim 1 (wherein m = n = o = p = 0; as such A2 is any of the listed compounds as o and p are set to zero and A3 is any of the listed compounds as m and n are set to zero) except Van Keuren does not disclose that the terminal group A4 is polycyclic.
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Van Keuren differs from the claimed invention by the substitution of a terminal group A4 being an aromatic ring or heteroaromatic ring group which is polycyclic with thiophene (which is monocyclic). However, using a heteroaromatic ring group which is polycyclic and the corresponding function of acting as a terminal group on both ends of an organic semiconducting compound was known in the art (Mahmood, in the same field of endeavor, discloses organic semiconducting compounds to have a terminal group of 2-(1,1-Dicyanomethylene)rhodamine (RCN)
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which is a heteroaromatic ring group which is polycyclic). As such, it would have been obvious to one having ordinary skill in the art before the Application's effective filing date to have substituted the known group of 2-(1,1-Dicyanomethylene)rhodamine (RCN) as taught by Mahmood for the terminal groups of Van Keuren and the results of the substitution would have been predictable. (see MPEP § 2143(I)(B)).
Regarding claim 3, Van Keuren in view of Mahmood discloses the organic semiconducting compound of claim 1, as discussed above. This compound also satisfies claim 3 as A2 is any of the listed compounds as o and p are set to zero.
Regarding claim 5, Van Keuren in view of Mahmood discloses the organic semiconducting compound of claim 1, as discussed above. This compound also satisfies claim 5 as A3 is any of the listed compounds as m and n are set to zero.
Regarding claim 6, Van Keuren in view of Mahmood discloses the organic semiconducting compound of claim 1, as discussed above. The terminal group disclosed by Mahmood does not read upon any of the listed groups for A4 as claim 6 has been amended to remove the terminal group of Mahmood as a possibility.
However, as noted in the Requirement for Restriction mailed 2/21/2025, for compound A4, the restriction required an election of a single species among the 26 disclosed possibilities for chemical group A4 (Page 8 of the restriction). These 26 different compounds were the explicit possibilities that were set forth by Applicant in claim 6 as originally filed. The restriction also stated (Page 15) that “Should applicant traverse on the ground that the species . . . are not patentably distinct, applicant should . . . clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.”
In the response to restriction (Applicant Arguments/Remarks dated 4/21/2025), Applicant clearly admitted that the compounds are not patentably distinct because they are obvious variants (“groups A1, A2, A3 and A4 are considered as obvious variants and necessary groups and should not be elected individually”; Page 5 of the Remarks).
As such, the remaining options for compound A4 in claim 6 are obvious variants of 2-(1,1-Dicyanomethylene)rhodamine (RCN) and each of these remaining options satisfy the requirements for compound A4 in claim 6. As such, claim 6 is obvious over Van Keuren in view of Mahmood.
Response to Arguments
Applicant's arguments filed 7/22/2026 have been fully considered but they are not persuasive.
Applicant argues (Argument 1) that “The Examiner stated that Compound 366-88-1 I Fig. 3 of the Cited reference 1 (hereinafter as called “Van Keuren”) discloses the organic semiconducting compound as claimed in claim 1 of this Application.” This argument is not persuasive as the Examiner did not make such a statement. Instead, the Examiner noted that the organic semiconducting compound as claimed in claim 1 is obvious over Van Keuren in view of Mahmood.
Applicant next argues (Argument 2) that Van Keuren uses one step to synthesize a compound while Mahmood uses two steps. This argument is not persuasive as Applicant has not presented evidence sufficiently demonstrating that a reaction cannot be modified to use a different number of steps.
Applicant next argues (Argument 3) that the proposed combination “will also cause uncontrollable results in the chemical and physical properties of the compound.” This argument is not persuasive as Applicant has not provided evidence sufficiently demonstrating that the new compound would be “uncontrollable”.
Applicant next argues (Argument 4) is that prior amendments distinguish over the prior art combination. This argument is not persuasive as Applicant has already set forth the differences are obvious variants.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER A CULBERT whose telephone number is (571)272-4893. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Benitez can be reached at (571) 270-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER A CULBERT/Examiner, Art Unit 2815
