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 .
This office action is responsive to the Amendment and Remarks filed 1 September 2026, wherein claim 7 was canceled. Subsequently, claims 1-6 and 8-15 remain pending and presently under consideration in this application.
Response to Amendment
Applicant’s amendments have failed to satisfactorily address the rejection of claim 1 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 5 of the previous office action on the merits.
The rejection of claims 1 and 9 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as respectively set forth in paragraphs 6 and 7 of the previous office action on the merits, are hereby withdrawn in view of applicant’s amendments to the same.
Response to Arguments
Applicant's arguments filed 1 September 2026 in response to the rejection of claims under as set forth in paragraph 5 of the previous office action on the merits, said arguments to the effect that “redundancy is not indefiniteness” have been fully considered but they are not persuasive. Since claim 1 recites that “X1 is selected from CR1 or N; X2 is selected from CR2 or N; X3 is selected from CR3 or N; X4 is selected from CR4 or N; X5 is selected from CR5 or N”, the phrase “whereby when any of R1, R2, R3, R4 and R5 is present, then the corresponding X1, X2, X3, X4 and X5 is not N” (emphasis added) adds absolutely nothing to the scope of the claim since if any of the R1-5 are present, then by default, the corresponding X1-5 is/are not “N”?
Applicant's arguments filed 1 September 2026 in response to the rejection of claims under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 6-8 of the previous office action on the merits, have been fully considered and are persuasive. The aforementioned rejections have been withdrawn.
Applicants’ arguments filed 1 September 2026 with respect to the rejection of claims under 35 U.S.C. 102(a)(1) over each of the Werner et al. references, as set forth in paragraphs 10 and 11 of the previous office action on the merits, said arguments to the effect that the inventive compound is distinguished from that of the prior art of record in that the substituents ”A1 differ from at least one of A2 or A3“ in the compound of formula (1), have been fully considered and are persuasive. The aforementioned rejections have been withdrawn.
Applicant's arguments filed 1 September 2026 in response to the rejection of claims on the ground of nonstatutory double patenting, as set forth in paragraphs 13 and 14 of the previous office action on the merits, said arguments to the effect that said rejection will attend to this rejection once allowable subject matter has been identified, have been fully considered but they are not persuasive.
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 1-6 and 8-15 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.
Amended claim 1 is rejected as being vague and indefinite when it recites “whereby when any of R1, R2, R3, R4 and R5 is present, then the corresponding X1, X2, X3, X4 and X5 is not N”(emphasis added); the scope of the protection sought is not clear since claim 1 recites that “X1 is selected from CR1 or N; X2 is selected from CR2 or N; X3 is selected from CR3 or N; X4 is selected from CR4 or N; X5 is selected from CR5 or N”. Claim 1 fails to particularly point out and distinctly claim the substituents in the group (II) contained in the claimed compound of formula (I).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 8-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/573,265 (corresponding to U.S. Patent Application Publication No. 2024/0298523). Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to a compound, the corresponding use thereof said compound in an organic semiconductor layer, as well as the corresponding use thereof said organic semiconductor layer in an organic electronic device, characterized in that said compound is a radialene compound which encompasses the present elected species A59, as represented therein by
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 11-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/000,910 (corresponding to U.S. Patent Application Publication No. 2023/0225201), which has been allowed. Although the claims at issue are not identical, the Examiner notes that they are obvious variants thereof each other, and that they are not patentably distinct from each other because both sets of claims are drawn to a compound, the corresponding use thereof said compound in an organic semiconductor layer, as well as the corresponding use thereof said organic semiconductor layer in an organic electronic device, characterized in that said compound is a radialene compound which encompasses the present elected species A59, as represented therein by
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
THIS ACTION IS MADE FINAL. 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 Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm.
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, Anthony J Zimmer can be reached at (571)270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737
