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
With regards to the prior rejections under 35 U.S.C. § 102, the amendments overcome the anticipation rejections noted in the prior Office action.
However, claims 1, 3, 5, and 6 are obvious over Van Keuren in view of Mahmood, as discussed in the rejections above.
Applicant's arguments filed 9/15/2025 have been fully considered but they are not persuasive. Applicant argues (Page 20 of the Remarks) that Van Keuren and Mahmood “are different in research motivation, design method, and technical content. The content of both Cited references cannot be easily connected or replaced.” This argument is not persuasive as the research motivation of both Van Keuren and Mahmood is researching the light absorption properties of different materials (“linear absorption spectra”, Abstract of Van Keuren; “improve light absorption”, Page 2129, Col. 2, Paragraph 2 of Mahmood); the design method of both Van Keuren and Mahmood is constructing new compounds (Fig. 3 of Van Keuren; Fig. 1 of Mahmood); and the technical content of both Van Keuren and Mahmood is thiophene based terminal groups (Fig. 3 of Van Keuren; Fig. 1 of Mahmood).
Applicant further argues (paragraph beginning “Obviously” on page 20 of the Remarks) that “[f]urthermore, based on the holistic invention of this application, the person skilled in the art cannot intuitively complete the overall technical content which is disclosed in this application through the contents of [Van Keuren and Mahmood].” In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “the overall technical content which is disclosed in this application”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 CHRISTOPHER A CULBERT whose telephone number is (571)272-4893. The examiner can normally be reached M-F 9-5.
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/C.A.C/Examiner, Art Unit 2815 /JOSHUA BENITEZ ROSARIO/Supervisory Patent Examiner, Art Unit 2815
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