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 .
Claim Rejections - 35 USC § 112
Claim(s) 1, 3-5, and 8-10 is/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 1 recites a structure A1 having groups X1 and X2, “wherein X1 comprises CH and X2 comprises CR1” and further recites structures A2 and A3 also having groups X1 and X2, “wherein X1 and X2 independently selected from H, F, Cl, or ORx1”. The two different descriptions of groups X1 and X2 render claim indefinite because it is not fully clear what groups are encompassed by each variable group. Based on p10 of Remarks filed 4/2/2026, Applicant appears to intend for the two descriptions to be distinct; however, the use of the same labels with different definitions is confusing and introduces ambiguity in the scope of the claim. Dependent claims are rejected for the same reason.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3-5, and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morse et al. (US 2019/0389832).
Regarding claims 1 and 8-9:
Morse ‘832 discloses semiconducting compounds and compositions containing the same for use in optoelectronics [abstract; 0001; 0016]. Morse discloses a composition comprises one of the compounds and further comprises another compound having a semiconducting property, preferably conjugated polymers [0035; 0037-0040]. Preferred conjugated polymers include those according to the structures P25, P26, and P51, which disclose formulas containing A1 as presently claimed:
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wherein R11 through R17 are H or L, wherein L is selected from, among others, F and Cl; x and y are >0 and <1; and n is >1 [0075; 0129; 0154; 0331-0332]. Morse further teaches acceptor units according to A88 and A99 are preferred acceptor units in the polymer which can be used in combination with acceptor unit A1, wherein A88 units are found in P25 and P26 above and A99 corresponds to presently claimed A2 or A3 [0308-0309; 0315]:
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Given that Morse teaches that A99 units are preferred acceptors which can be used in combination with other acceptor units, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use the A99 unit in place of the A88 unit in the polymers above to provide alternative conjugated diene polymers in accordance with Morse’s teaching that are capable of providing the semiconductor property.
Regarding claim 3:
Morse teaches x and y are preferably each 0.1 to 0.9 [0305].
Regarding claim 4:
At least P25 and P26 disclose units D comprising fused heterocyclic rings within the scope of the claimed structures.
Regarding claim 5:
Groups R11 through R14 can be H or L, wherein L is selected from, among others, F, R0 (C1-C20 alkyl), -OR0, etc.
Regarding claim 10:
Morse teaches optoelectronic devices comprising a substrate, an electrode, a transport layer, a layer comprising the semiconductor, another transport layer, and another electrode [0043; 0051; 0407].
Rejections continued on next page.
Claim(s) 1, 3-5, and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morse et al. (US 2020/0052227).
Regarding claims 1 and 8-9:
Morse ‘227 discloses semiconducting compounds and compositions containing the same for use in optoelectronics [abstract; 0001; 0016]. Morse discloses a composition comprises one of the compounds and further comprises another compound having a semiconducting property, preferably conjugated polymers [0035; 0037-0040]. Preferred conjugated polymers include those according to the structures P25, P26, and P51, which disclose formulas containing A1 as presently claimed:
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wherein R11 through R17 are H or L, wherein L is selected from, among others, F and Cl; x and y are >0 and <1; and n is >1 [0075; 0156; 0239]. Morse further teaches acceptor units according to A88 and A99 are preferred acceptor units in the polymer which can be used in combination with acceptor unit A1, wherein A88 units are found in P25 and P26 above and A99 corresponds to presently claimed A2 or A3 [0225; 023]:
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Given that Morse teaches that A99 units are preferred acceptors which can be used in combination with other acceptor units, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use the A99 unit in place of the A88 unit in the polymers above to provide alternative conjugated diene polymers in accordance with Morse’s teaching that are capable of providing the semiconductor property.
Regarding claim 3:
Morse teaches x and y are preferably each 0.1 to 0.9 [0241].
Regarding claim 4:
At least P25 and P26 disclose units D comprising fused heterocyclic rings within the scope of the claimed structures.
Regarding claim 5:
Groups R11 through R14 can be H or L, wherein L is selected from, among others, F, R0 (C1-C20 alkyl), -OR0, etc.
Regarding claim 10:
Morse teaches optoelectronic devices comprising a substrate, an electrode, a transport layer, a layer comprising the semiconductor, another transport layer, and another electrode [0051; 0285; 0330-0338].
Response to Arguments
Applicant's arguments filed 4/2/2026 have been fully considered but they are not persuasive.
Applicant’s amendments overcome the previous claim objection and rejections under 35 USC 112. The amendments relating to groups X1 and X2, however, introduce a new issue as explained in the rejection of claim 1 and its dependents under 35 USC 112(b) as explained above.
Applicant’s amendments to claim 1 to narrow the scope of A2 and A3 to require specific structures overcome the previous nonstatutory double patenting rejections based on U.S. Patent Nos. 10,759,775 and 10,991,893. The patented claims are silent with regard to a conjugated polymer having such structures.
Applicant’s amendments to claim 1 to narrow the scope of A2 and A3 to require specific structures overcome the previous rejections based on Zhu et al. (US 2013/0200354). The reference is silent with regard to a conjugated polymer having such structures.
Applicant argues each Morse reference discloses structures P25, P26, and P51, which do not satisfy the new requirements the structures A2 and A3 of amended claim 1 (p13).
While the examiner agrees that the identified polymers in Morse ‘832 and Morse ‘227 do not anticipate the claimed invention, the references teach that additional acceptor units can be used, including unit A99 which is encompassed by the claimed invention, such that it would have been obvious to one of ordinary skill in the art to modify the disclosed structures to have the claimed features as described above. Therefore, the examiner maintains the rejections in view of Applicant’s amendments.
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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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