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 .
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 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a number of compounds largely based on carbazole and cyano-phenyl derivatives, does not reasonably provide enablement for the unlimited scope of a first compound and a fourth compound in claim 1. The specification does not enable a person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with claim 1.
The genus “compounds” with various electronic relationships shows a lack of a scope of enablement to clearly define the material options.
(A) The breadth of the claims far exceeds the written description which is limited only a few examples.
(B) The nature of the invention as provided by the specification limits the materials to a few classes of organic compounds for which the claims are not so limited.
(C) The state of the prior art is limited in the written description which does not reflect the unlimited scope of the claims.
(D) The level of one of ordinary skill in the art without specific guidance would not be deemed to have the know-how to carry out the full scope of the invention as recited in the claims due to a lack of a written description.
(E) The level of predictability in the art is indeterminate as the class or function of the first to the fourth compounds shows a scope in the claims beyond the written description. How would one determine the class and function of suitable compounds for the first compound and the fourth compound?
(F) The amount of direction provided by the inventor in the selection of the first compound and the fourth compound suitable to practice the invention is lacking based on the limited written description.
(G) Working examples are limited to a few examples far beneath the scope of the claims.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure is excessive as the claimed scope would be expected to encompass a plethora of compound classes not included in the written description.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to carry out the full scope of the invention in the claims.
Therefore, claim 1 and all claims requiring the limitations claim 1 are rejected based on the lack of a clear scope of enablement.
Response to Amendment
Applicant while narrowing the scope of the second compound and the third compound, the first compound and the fourth compound remain unlimited in scope. There remains no guidance as to the classes of chemical compounds to select from nor is there any information as to how to select compounds to meet the criteria needed for the electronic relations between Comp 1, Comp 2, Comp 3, and Comp4.
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 GREGORY D CLARK whose telephone number is (571)270-7087. The examiner can normally be reached on 8AM-4PM M-F.
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 supervisor, Jennifer Chriss 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GREGORY D CLARK/Primary Examiner, Art Unit 1786
Prosecution Insights