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
Claims 3-16 are pending in the application. Claims 7 and 9-16 are rejected. Claims 3-6 and 8 are withdrawn from further consideration.
Response to Amendment / Argument
Objections and rejections made in the previous Office Action that do not appear below have been overcome by Applicant's amendments to the claims or specification. Therefore, arguments pertaining to these objections and rejections will not be addressed.
On page 15 of the response filed October 29th, 2025, Applicant traverses the improper Markush grouping rejection based on the amendment to X7 and Y4. This argument is not found persuasive since the permutations still result in diverse heterocycles not possessing any heteroatom arrangements in common. The rejection below has been modified to address Applicant’s amendments.
Election/Restrictions
Applicant’s elected species appears allowable. As noted in MPEP 803.02:
If the elected species or group of patentably indistinct species is not anticipated by or obvious over the prior art, the examiner should extend the search and examination to a non-elected species or group of species that falls within the scope of a proper Markush grouping that includes the elected species. The search and examination should be continued until either (1) prior art is found that anticipates or renders obvious a species that falls within the scope of a proper Markush grouping that includes the elected species, or (2) it is determined that no prior art rejection of any species that falls within the scope of a proper Markush grouping that includes the elected species can be made. The examiner need not extend the search beyond a proper Markush grouping.
In this situation, Applicant has cancelled previously presented claim 1 and narrowed the scope of claim 7 (the independent claim under examination). As noted in the previous action, there appeared to be several ways to form a proper Markush grouping. In view of Applicant’s amendment, the Examiner has reconsidered what would constitute the broadest proper Markush grouping within amended claim 7. The broadest proper Markush grouping would appear to be the scope where X7 is a sulfur atom. Therefore, the search and examination was extended to include this scope.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement(s) filed on February 2nd, 2026.
Improper Markush Grouping
Claims 7 and 9-16 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of formulas (5) and (5-2) are improper because the alternatives defined by the Markush grouping do not share both a single structural similarity for the following reasons: the various permutations of the X7 variables result in compounds that only minimally require a heteroaromatic ring that is at least pentacyclic, which is not a significant structural similarity. The varying permutations are not recognized to belong to the same physical or chemical class or to the same art-recognized class. For example, in the CPC classification system, heterocyclic rings contain multiple oxygen containing heterocycles in a condensed system are classified in C07D 493/02; heterocyclic rings contain multiple sulfur containing heterocycles in a condensed system are classified in C07D 495/02; and heterocyclic rings contain multiple nitrogen containing heterocycles in a condensed system are classified in C07D 487/02.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use. One scope of formulas (5) and (5-2) (inclusive of the elected species) that would form a proper Markush grouping would be the scope of claim 7 where X7 is a sulfur atom. There would appear to be several different ways in which a proper Markush grouping could be derived from the scope instantly claimed; however, defining the X and Y variables (in each case) would appear to be a minimum requirement since the current options result in numerous dissimilar heteroaryl permutations.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7, 9 and 14-16 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.
Claims 7, 9 and 14-16 are rejected as indefinite based on the limitation (in claim 7) that “only one of combinations consisting of adjacent two of R25 to R28 constitutes Formula (6) and only one combinations consisting of adjacent two of R29 to R32 constitutes Formula (6-2) below, each of which forms a 5- or 6-memebered ring;…” but where the formulas (6) and (6-2) only provide for options where the ring formed would be 5-membered. It is unclear which options are permitted to form a 6-member ring, if any. Dependent claims 9 and 14-16 are rejected as indefinite for the same reason for not obviating the issue.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 7, 9 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pan et al. Synthetic Communications 2000, 30, 3569-3573.
The prior art teaches the following compound on page 3571:
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The compound is embraced by instant claim 7 where R25 and R26 are taken together to form formula (6), R31 and R32 are taken together to formula formula (6-2), R27, R28, R29, R30, R69 and R70 are hydrogen, X7 is sulfur, Y4 is CR37 where R37 is hydrogen, and R33 and R33b are represented by formula (2) where n and l are zero, m is 1, Z1 and Z2 are hydrogen and A is alkenyl having 2 carbon atoms. The compound is embraced by claims 7 and 9.
Regarding instant claim 14, the prior art teaches generation of solutions in the paragraph bridging pages 3572 and 3573 either as an initial reaction mixture followed by formation of a first product molecule or, for instance, with extraction with chloroform. The limitation of “for forming an organic semiconductor layer” is considered an intended use that does not limit the scope of the claim.
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 MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626