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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/14/2026 have been fully considered but they are not persuasive.
Applicant first argues (paragraph beginning “First” on Page 2 of the Remarks) that according to the Stille coupling example shown in Fig. 1 of Van Keuren, the terminal electron-withdrawing group used in Mahmood (which Applicant refers to as “Cited reference 2”) “is not involved in above Still coupling reaction scheme in [Van Keuren]”. This argument is, therefore, only directed to claim 6 as that is the only claim rejected with Mahmood. This argument is not persuasive as the rejection did not rely on the terminal group of Mahmood being explicitly listed in the reaction of Van Keuren. Instead, the rejection of claim 6 used the obvious modification of Van Keuren in view of Mahmood. 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 next argues (paragraph beginning “Then” on Page 3 of the Remarks) that “Mahmoood [sic] used IDT as the core structure . . . and . . . RCN as the terminal group.” This argument is not persuasive as Mahmood was not relied upon for disclosing the core structure (the core structure having been introduced in claim 1, from which claim 6 depends, which was rejected under Van Keuren alone).
Applicant next argues (same paragraph) that “[b]esides, it can be understood that the core structure [of Mahmood] and the terminal structure both are restricted and not arbitrarily changed.” This argument is not persuasive as the rejection of claim 6 did not modify the structure of Mahmood. Instead, claim 6 discussed the obvious modification of the structure of Van Keuren in view of the teachings of Mahmood.
Applicant next argues (paragraph beginning “Thence” on Page 4 of the Remarks) that “the content of [Van Keuren] does not indicate that and fails to disclose that the terminal group can be the terminal electron-withdrawing group of [Mahmood].” This argument is not persuasive as Van Keuren was not relied upon for disclosing the specific terminal group of Mahmood. 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 further argues (same paragraph) 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 “Further” on Page 5 of the Remarks) that “[t]he Examiner raised that replacing the terminal group of [Van Keuren] with the chemical structure in [Mahmood]” and that “[o]bviously, the above interpretation of Examiner about [Van Keuren and Mahmood] is not based on a solid factual foundation and involves concerns about over-inference and improper interpretation. Therefore, the interpretation of Examiner about organic semiconducting compound comprising chemical structures combined by groups A2-A4 in Amended Claim 1 is not persuasive.” This argument is not persuasive as it is a mere allegation not supported by evidence (i.e., Applicant has not specifically identified any alleged lack of solid factual foundation, concern about over-inference, or improper interpretation).
Applicant further argues (paragraph beginning “In summary” on page 6 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
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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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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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/C.A.C/ Examiner, Art Unit 2815 /JOSHUA BENITEZ ROSARIO/Supervisory Patent Examiner, Art Unit 2815
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