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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
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 and 3-5 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).
Regarding claim 1, Van Keuren discloses an organic semiconducting compound (Compound 5 in Fig. 2) which only differs by Applicant’s formula of claim 1 (wherein b = c = 0 and a = 1) by a substitution of a thiophene group for A2 whereas Applicant has amended claim 1 to exclude this group.
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However, as noted in the Requirement for Restriction mailed 2/21/2025, for compound A2, the restriction required an election of a single species among the 19 disclosed possibilities for chemical group A2 (Page 5 of the restriction). These 19 different compounds were the explicit possibilities that were set forth by Applicant in claim 3 as originally filed. The restriction also stated (Page 14) 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 A2 in claim 3 are obvious variants of thiophene and each of these remaining options satisfy the requirements for compound A2 in claim 1. As such, claim 1 is obvious over Van Keuren.
Regarding claim 3, as discussed in the rejection of claim 1, above, the options for compound A2 in claim 3 are obvious variants of thiophene. As such, claim 3 is obvious over Van Keuren.
Regarding claim 4, as b = c = 0, A3 of Van Keuren can be considered as any of the compounds listed in claim 4.
Regarding claim 5, as b = c = 0, A3 of Van Keuren can be considered as any of the compounds listed in claim 5.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Keuren as applied to claim 1, above, and further 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 6, the obvious modification of Van Keuren results in the organic semiconducting compound of claim of claim 1, as discussed above.
Van Keuren does not disclose that the terminal group A4 has one of the recited structures.
Van Keuren differs from the claimed invention by the substitution of a terminal group A4 having one of the recited structures in claim 6 with thiophene. However, using a group having one of the recited structures 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 Applicant’s second listed option). 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)).
Response to Arguments
Applicant's arguments filed 8/5/2026 have been fully considered but they are not persuasive.
Applicant’s first argument (Argument I, Pages 17-18 of the Remarks) is that “the Examiner’s proposed combination impermissibly relies on hindsight reconstruction because there is no suggestion or rationale in either Van Keuren or Mahmood to combine their respective narrow disclosures”. This argument is not persuasive as the reason for the combination was noted in the rejection.
Applicant’s next argument (Argument II) is that Van Keuren does not disclose non-thiophene terminal acceptors, Mahmood does not disclose an oligothiophene backbone, and neither suggests combining an unsubstituted thiophene backbone with an RCN moiety. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant’s next argument (Argument III) is that “[t]he electronic polarization, hyperpolarizability, and conjugation length in Van Keuren are fundamentally governed by this specific thiophene-based conjugated framework”. This argument is not persuasive as it is a conclusory statement for which Applicant has not provided any evidence. Applicant further argues that modifying Van Keuren would “frustrates Van Keuren’s stated scientific purpose” and that a primary reference cannot be modified “in a manner that distorts or frustrates its primary operational mechanism”. This argument is not persuasive as Applicant has not established that a “stated scientific purpose” is the same as a “primary operational mechanism”.
Applicant’s next argument (Argument IV) 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.
Applicant’s next argument (Arguments V-VI) is that the prior art references have divergent technical fields and scientific focus and incompatible chemical frameworks. 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’s next argument (Argument VII) is 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
