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 6-13 and 21-32 are pending in the instant application.
Election/Restrictions
Applicant’s election without traverse of Group I,
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and the species of Compound A1, found on page 9 of the instant specification and claimed in instant claim 8 (reproduced below),
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in the reply filed on December 2, 2025 was acknowledged in the previous Office Action. The requirement was deemed proper and therefore made FINAL in the previous Office Action.
Claims 9, 10, and 21-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on
December 2, 2025.
IMPORTANT REMINDER: Applicant is reminded to strictly adhere to claim amendment practice as required by 37 CFR 1.121. The status identifier for each of claims 9, 10 and 21-32 is incorrect in the Amendment filed
May 6, 2026. The correct status identifier which should have been used is “Withdrawn” or “Withdrawn – Previously Presented” instead of “Previously Presented”.
Rejections and objections made in the previous Office Action that do not appear below have been overcome by Applicant’s amendments to the claims. Therefore, arguments pertaining to these rejections and objections will not be addressed.
As a result of the current amendments to the claims per the Amendment filed May 6, 2026, the following rejections and objection now apply.
Claim Objections
Claim 11 is objected to because of the following informalities: Formula (1-5d) at the end of currently amended claim 11 is now illegible.
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.
Claim 13 is 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.
Currently amended claim 13 lacks antecedent basis from claims 6 and 12 because there is no earlier recitation in claims 6 and 12 that each of R1-R20 can represent a hydrogen or a substituent as found in claim 13. Claim 6 stipulates that one of R1-R10 is a single bond for being bonded to L1 and that one of R11-R20 is a single bond for being bonded to L2. No such stipulation is found in claim 13 since each of R1-R20 are defined as representing hydrogen, etc. in claim 13. Therefore, claim 13 is indefinite.
Claim 13 is unclear because this currently amended claim does not state which R1-R20 variable substituent is attached to L1 and L2 in this claim. Therefore, claim 13 is indefinite.
Response to Arguments
Applicant's arguments filed May 6, 2026 have been fully considered. Applicant argues that the claims have been amended to avoid ambiguity.
In response, claim 12 was amended to correct the ambiguity but claim 13 was not amended to correct the ambiguity. Therefore, the rejection is maintained on claim 13.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 does not further limit independent claim 6 or claim 12 because claim 13 is broader in scope than claim 6 and claim 12. Claim 6 stipulates that one of R1-R10 is a single bond for being bonded to L1 and that one of R11-R20 is a single bond for being bonded to L2. However, currently amended claim 13 fails to state these stipulations.
Response to Arguments
Applicant's arguments filed May 6, 2026 have been fully considered. Applicant argues that the claims have been amended to comply with 35 USC 112(d).
In response, claim 12 was amended to comply with
35 USC 112(d) but claim 13 was not amended to comply with 35 USC 112(d). Therefore, the rejection is maintained on claim 13.
Claim Rejections - 35 USC § 102
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 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 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.
Claims 6, 7, and 11-13 are rejected under
35 U.S.C. 102(a)(1) as being anticipated by:
Kato et al. {US 2018/0222844} – who disclose, for instance, the 2nd compound on page 28,
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{a compound of instant Formula (1) and instant Formula (1-1a) as found in
dependent claim 11,
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when
R1 represents hydrogen;
R2 is a single bond for being bonded to L1;
R3 represents hydrogen;
R4 represents hydrogen;
R5 represents hydrogen;
R6 represents hydrogen;
R7 represents hydrogen;
R8 represents hydrogen;
R9 represents hydrogen;
R10 represents hydrogen;
R11 represents hydrogen;
R12 is a single bond for being bonded to L2;
R13 represents hydrogen;
R14 represents hydrogen;
R15 represents hydrogen;
R16 represents hydrogen;
R17 represents hydrogen;
R18 represents hydrogen;
R19 represents hydrogen;
R20 represents hydrogen;
L1 is a C6 arylene (i.e., phenylene);
L2 is a single bond;
L3 is a single bond;
Ar represents definition (i),
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(i); and
R221 represents unsubstituted C14 aryl};
and
the compound of Chemical Abstracts Registry Number 1371651-13-6 {indexed in the Registry file on STN CAS ONLINE April 30, 2012},
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{a compound of instant Formula (1) and instant Formula (1-1a) as found in
dependent claim 11,
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when
R1 represents hydrogen;
R2 is a single bond for being bonded to L1;
R3 represents hydrogen;
R4 represents hydrogen;
R5 represents hydrogen;
R6 represents hydrogen;
R7 represents hydrogen;
R8 represents hydrogen;
R9 represents hydrogen;
R10 represents hydrogen;
R11 represents hydrogen;
R12 is a single bond for being bonded to L2;
R13 represents hydrogen;
R14 represents hydrogen;
R15 represents hydrogen;
R16 represents hydrogen;
R17 represents hydrogen;
R18 represents hydrogen;
R19 represents hydrogen;
R20 represents hydrogen;
L1 represents C10 aryl (i.e., naphthalenylene);
L2 is a single bond;
L3 is a single bond;
Ar represents definition (i),
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(i); and
R221 represents halogen (i.e., bromo)}.
Each of the above cited prior art disclose at least one compound that is embraced by the instant currently amended claimed invention. Therefore, each of the above cited prior art anticipates the instant currently claimed invention.
Response to Arguments
Applicant's arguments filed May 6, 2026 have been fully considered. Applicant argues that the claims have been amended so that the instant L1 variable does not represent a single bond and the Ar variable can no longer represent a phenanthryl group. Applicant argues that the compounds disclosed in Kato et al. do not anticipate the instant currently amended claimed invention.
In response, it is disagreed that there are no compounds in Kato et al. which anticipate the instant currently amended claimed invention. As shown above and indicated in the previous Office Action, there are other compounds disclosed in Kato et al. which anticipate the instant claimed invention. The rejection is deemed proper and therefore, the rejection is maintained.
Note to Applicant: Not every piece of prior art found in the database search or class/subclass search which would anticipate and/or render obvious the instant claimed invention under examination has been applied against the instant currently pending claims under examination. See MPEP §904.03.
Allowable Subject Matter
The elected species of Compound A1, found on page 9 of the instant specification and claimed in instant claim 8, is free of the prior art of record.
Claim 8 is allowed over the prior art of record.
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.
This application contains claims 9, 10 and 21-32 drawn to an invention nonelected without traverse in the reply filed on December 2, 2025. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144) See MPEP §821.01.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Laura L. Stockton
(571) 272-0710.
The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time.
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 acting supervisor,
James Alstrum-Acevedo can be reached on 571/272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620
Technology Center 1600
May 14, 2026
Book XXVIII, page 281
Prosecution Insights