DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
All outstanding objections and rejections, except for those maintained below, are withdrawn in light of applicant's amendment filed on 2/13/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant's amendment filed on 2/13/2026. In particular, original Claim 1 has been amended to recite limitations not previously presented. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the proviso “at least one of Ar1 in the number of m1 is a group including Si or a carbazole group unsubstituted or substituted with at least one R10a, or at least one of R3 in the number of a3 is a group represented by Formula 2 or a carbazole group unsubstituted or substituted with at least one R10a”. The recitation of the limitation “a group including Si” raises the issue of new matter in the claim for the following reasons. Original claim 1 as well as Paragraph [0013] of the instant Specification disclose a number of chemical species that Ar1 can represent including -Si(Z1)(Z2)-, where Z1 and Z2 are hydrogen, deuterium, etc. Thus, claim 1 recites a specific species encompassed by -Si(Z1)(Z2)-. However, the limitation “a group including Si” encompasses each and every bivalent Si group including groups that are not encompassed by -Si(Z1)(Z2)-, such as C80 carbocyclic groups, C100-200 alkyls, etc. Thus, while there is support in claims to recite a specific group that contains Si, i.e. -Si(Z1)(Z2)-, there is no support in the Specification as originally filed to recite that Ar1 can be “a group including Si” as recited in the as-amended claim.
Claim 10 recites the proviso “at least one of Ar1 in the number of m1 is a group including Si or a carbazole group unsubstituted or substituted with at least one R10a, or at least one of R3 in the number of a3 is a group represented by Formula 2 or a carbazole group unsubstituted or substituted with at least one R10a”. The recitation of the limitation “a group including Si” raises the issue of new matter in the claim for the following reasons. Original claim 10 as well as Paragraph [0013] of the instant Specification disclose a number of chemical species that Ar1 can represent including -Si(Z1)(Z2)-, where Z1 and Z2 are hydrogen, deuterium, etc. Thus, claim 1 recites a specific species encompassed by -Si(Z1)(Z2)-. However, the limitation “a group including Si” encompasses each and every bivalent Si group including groups that are not encompassed by -Si(Z1)(Z2)-, such as C80 carbocyclic groups, C100-200 alkyls, etc. Thus, while there is support in claims to recite a specific group that contains Si, i.e. -Si(Z1)(Z2)-, there is no support in the Specification as originally filed to recite that Ar1 can be “a group including Si” as recited in the as-amended claim.
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 1-19 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 pre-AIA the applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation:
“Ar1 is a single bond, a C3-C60 carbocyclic group unsubstituted or substituted with at least one R10a, a C1-C60 heterocyclic group unsubstituted or substituted with at least one R10a, *-C(Z1)(Z2)-*, *-Si(Z1)(Z2)-*', or *-Ge(Z1)(Z2) -*”,
and the claim also recites the proviso that:
“at least one of Ar1 in the number of m1 is a group including Si or a carbazole group unsubstituted or substituted with at least one R10a, or at least one of R3 in the number of a3 is a group represented by Formula 2 or a carbazole group unsubstituted or substituted with at least one R10a”,
which is the narrower statement of the range/limitation. Specifically, the recitation of “a group including Si “ in the proviso is broader in scope than the particular Si containing specifies, i.e. *-Si(Z₁)(Z₂)-*' recited for Ar1.The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation:
“Ar1 is a single bond, a C3-C60 carbocyclic group unsubstituted or substituted with at least one R10a, a C1-C60 heterocyclic group unsubstituted or substituted with at least one R10a, *-C(Z1)(Z2)-*, *-Si(Z1)(Z2)-*', or *-Ge(Z1)(Z2) -*”,
and the claim also recites the proviso that:
“at least one of Ar1 in the number of m1 is a group including Si or a carbazole group unsubstituted or substituted with at least one R10a, or at least one of R3 in the number of a3 is a group represented by Formula 2 or a carbazole group unsubstituted or substituted with at least one R10a”,
which is the narrower statement of the range/limitation. Specifically, the recitation of “a group including Si “ in the proviso is broader in scope than the particular Si containing specifies, i.e. *-Si(Z₁)(Z₂)-*' recited for Ar1.The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Allowable Subject Matter
Claim 20 is allowable over the “closest” prior Ihn et al (US 2023/0078199), Fan (CN 201710174510, see English language translation attached to previous Office Action), and PubChem SCHEMBL22525507 (see pages of PubChem Compound Summary for CID 155188518, 5-(2,3-Dimethylbutan-2-yl)-1,2,3,4,4a,7,8,9,10,11a-decahydropyridazino[1,2-a]benzotriazole, attached to previous Office Action) for the reasons set forth below.
Ihn et al discloses the following compound:
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656
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However, this compound does not correspond to any of the compounds recited in claim 20, and therefore, the reference does not disclose or suggest the compounds as required by the present claim.
Fan discloses compounds such as:
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388
342
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However, this compound does not correspond to any of the compounds recited in claim 20, and therefore, the reference does not disclose or suggest the compounds as required by the present claim.
PubChem SID 43461379 discloses the following compound:
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690
684
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However, this compound does not correspond to any of the compounds recited in claim 20, and therefore, the reference does not disclose or suggest the compounds as required by the present claim.
In light of the above, it is clear that Ihn et al, Fan, and PubChem SID 43461379, either alone or in combination do not disclose or suggest the compounds as required by claim 20.
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but are moot in light of the new grounds of rejection set forth above.
In light of the amendments to the claims, the claims objections, as well as the 35 U.S.C. 102 and 103 rejections set forth in the previous Office Action are withdrawn.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER C. KOLLIAS whose telephone number is (571)-270-3869. The examiner can normally be reached on Monday-Friday, 8:00AM – 5:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached on (571)-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER C KOLLIAS/Primary Examiner, Art Unit 1786