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
Applicant’s election of a compound 134-1 comprising N as X1 in the reply filed on December 5, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Applicant states that the claims 1, 4, 6-8 and 12-20 would fall within scope of the compound 134-1.
The elected compound 134-1 is found to be allowable and thus the examiner further elects and examines a species comprising a sulfur atom as X1 for formula (10).
SPECIFICATION OBJECTION
The specification is objected since a subsection, “BRIEF DESCRIPTION OF DRAWING”, is missing from page 222 of the specification. Also, a discussion as to Fig. 1 is missing.
DRAWING OBJECTION
Drawings submitted on October 13, 2022 are objected since each drawing must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Claim Rejections - 35 USC § 103
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.
Claims 1, 4, 7-8, 12-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20210010407 A (Jan. 27, 2021).
The examiner provides a clearer version of KR since KR submitted by applicant is not clear.
KR teaches an organic compound having a formula 1 at page 3 and various compounds thereof in claim 4. A second compound in the last raw of page 7 comprises Rx and Ry (i.e., two phenyls) different from the recited for the instant formula (1) comprising the recited formula (10) (i.e., X1 is S, Y1 is C, ring A1 is aromatic hydrocarbon ring having 6 ring carbon atoms, R17 is H and m is 1).
Machine translated KR teaches that X is CR11R12 in claim 1 and that R11 and R12 are same or different including a substituted or unsubstituted aryl, a substituted or unsubstituted heteroaryl or bonded to each other to form a ring in claim 3 of page 2. Machine translated KR teaches that a meaning of “forming ring” encompasses alicyclic ring, aromatic ring or heterocyclic ring in [0043].
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain the instantly recited monocyclic ring obtained by mutually bonded Rx and Ry of claim 1 from the alicyclic ring taught for the CR11R12 as the X of Formula 1 taught by KR.
The instant invention further recites that at least one of R1-18 is a group represented by -N(R131)(R132) of claim 1.
Machine translated KR teaches that R2 to R5 of formula 1 includes halogen groups, a substituted or unsubstituted silyl group or a substituted or unsubstituted amine group in claim 1 of page 1. The substituted amine group taught by KP would encompass the instant recited substitutions for R131 and R132 such as (cyclo)alkyl group having 1-50 carbon atoms, aryl group having 6-50 ring carbon atoms of claim 1.
A simplest substituent for substituted amine group would be two alkyl groups.
Machine translated KR teaches compounds further substituted with F or Si(CH3) in a fourth raw of page 10.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain the instantly recited monocyclic ring obtained by mutually bonded Rx and Ry of claim 1 from the alicyclic ring taught for the CR11R12 as the X of Formula 1 taught by KR with an additional substituent such as –N(CH3) (CH3) since Machine translated KR teaches that R11 and R12 are bonded to each other to form a ring and since Machine translated KR teaches substituted amine group as R2 to R5 and since Machine translated KR teaches compounds further substituted with F or Si(CH3) which is taught and equated with the substituted or unsubstituted amine group in KR absent showing otherwise.
See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
Regarding claim 4, the second compound in the last raw of page 7 meets the claim 4 since it comprises the recited formula (10) (i.e., X1 is S, Y1 is C, ring A1 is aromatic hydrocarbon ring having 6 ring carbon atoms, R17 is H and m is 1).
Regarding claim 7, the second compound in the last raw of page 7 comprising H as R1 to R5, R8 to R15 and CH3 as R16 of the recited formula (10) would meet claim 7.
Regarding claim 8, the second compound in the last raw of page 7 comprising the formula (10) with the ring A1 being an aromatic hydrocarbon having 6 carbon atoms, X1 being an oxygen atom and Y1 being a carbon atom of the recited formula (10) would meet claim 8.
Regarding claim 12, the above discussed simplest substituent for substituted amine group being two alkyl groups would make claim 12 obvious.
Regarding claims 13 and 14, the second compound in the last raw of page 7 comprising X1 being an oxygen atom and all of R171 to R174 being a hydrogen wold meet the recited formula (101).
Regarding claim 15, the second compound in the last raw of page 7 comprising X1 being an oxygen atom would meet the recited formula (134).
Regarding claims 17-20, claims 7-11 of Machine translated KR would meet the claims 17-20.
CLAIM OBJECTION
Claims 6 and 16 are 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, the elected compound (134-1) and any intervening claims.
EXAMINER’S COMMENT
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN 106467554 A teaches organic compounds 82 and 83 at page 22 comprising two methyl group substituents, but fails to teach or suggest the instant formula (10).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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