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
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.
Claims 25-26, 30-31, 34 and 37-42 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 25 recites that Y is C if bonded to Ar2 or a group Z, but there is not a possibility for Y to bond to either Ar2 or Z in the structure. The claim is therefore confusing.
In claim 26, the phrase “with the proviso that the group CRz correspond [sic] to a group C at the bonding position of the adjacent anthracene” is unclear. Perhaps the phrase should be amended to “with the proviso that the group CRz at the bonding position of the anthracene corresponds to C”.
Claim 30 recites that V is C if bonded to Ars, which is not found in formula (H1-2).
The preamble of claim 31 is grammatically erred and should be corrected, e.g., to “The composition according to claim 23, wherein…” Also, claim 31 recites that the symbols of the chemical structure have the same meaning as in claim 23, but claim 23 does not have a description for V.
Claim 34 is indefinite for a number of reasons. First, while not a reason for rejection, “Ar2, Ar4” should be corrected to “Ar2 and Ar4”. Second, the claim recites that the groups Ar2 and Ar4 are on each occurrence, consisting of phenyl, biphenyl…..and dibenzothiophene,” which is not possible as each of Ar2 and Ar4 can only be one group, not all of the listed groups simultaneously. Third, the claim recites that Ar2 and Ar4 may be a combination of the “previously cited groups”. Now, the previously cited groups may be the groups listed in claim 34 or the groups listed in claim 23, and these groups are not the same. Thus, the phrase is ambiguous. Perhaps, claim 34 should be amended to “The composition according to claim 23, wherein the groups Ar2 and Ar4 are selected from the group consisting of phenyl…..and dibenzothiophene, or a combination thereof.”
Claim 37 is indefinite for a number of reasons. First, in the definition of E20, the claim states that Ar21, Ar23 and E20 together form a ring, but formula E-2 does not have Ar23. Second, R0 is said to be H, D, F, straight-chain alkyl, branched or cyclic alkyl, each of which may be substituted…. “and where one or more H atoms may be replaced by D or F, or an aromatic or heteroaromatic ring systems [sic]…” As written, a hydrogen atom of the alkyl groups may be replaced by an aromatic or a heteroaromatic ring system. But that does not seem to be the intention, which is suspected to be that R0 may be an aromatic or a heteroaromatic ring system. The confusing listing of groups separated from one another by commas renders the description of R0 misleading. The description of R0 should be amended. Third, in the description of the subscript r, the German word “oder” has not been translated to “or”.
Claim 38 is indefinite because it is unclear if the percents are by weight, by volume, or by mole.
Claim 39 is grammatically erred and should be corrected, e.g., to “A formulation comprising at least one composition according to claim 23 and at least one solvent.”
Claim 40 should have a word or phrase connecting the preamble with the steps. For example, the colon after “claim 23” may be replaced by a comma, followed by the phrase “comprising the following steps:”. Also, an “and” should be inserted before step c. Claims 41-42 are indefinite by virtue of their dependency on claim 40.
Allowable Subject Matter
Claims 23-24, 27-29, 32-33, 35-36 and 43-44 are allowed.
Claims 25-26, 30-31, 34 and 37-42 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The composition of claim 23 is not disclosed or suggested by the prior art of record. While the claimed compounds are individually known in the art, e.g., US 2009/0026919 A1 and US 2010/0187505 A1, there is not an obvious reason for a POSITA to combine them to arrive at the claimed composition.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VU ANH NGUYEN whose telephone number is (571)270-5454. The examiner can normally be reached M-F 8:00 AM-5:00 PM.
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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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/VU A NGUYEN/Primary Examiner, Art Unit 1762
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