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 .
Election/Restrictions
Applicant's election with traverse of the following species(*) in the reply filed on 4 May 2026 is acknowledged. The traversal is on the ground(s) that “with traverse, because the claims are directed to a reasonable number of species”. This is not found persuasive because in the compound of formula (I)
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, there are hundreds of possible combinations for X1, X2, X3, X4, X5, and R1 for the substituent A1
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alone, there are hundreds of possible combinations for Ar and R1 for the substituent A2
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alone, and hundreds of possible combinations for Ar and R1 for the substituent A3
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alone, thus rendering infinitesimal possible compounds when combined.
The requirement is still deemed proper and is therefore made FINAL.
(*) applicants have elected compound A59
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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 1-15 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.
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).
Claim 1 is rejected as being vague and indefinite when it recites “with the proviso that at least one of R2 and R4 is present and independently selected from H or D; at least three of R1, R2, R3, R4 or R5 are present, and at least one of R1, R2, R3, R4 or R5 is not H or D” (emphasis added); the scope of the protection sought is not clear. 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 “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”, and the claim also recites “at least one of R2 and R4 is present” and “at least three of R1, R2, R3, R4 or R5 are present” which are the narrower statements of the range/limitation. 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. Claim 1 fails to particularly point out and distinctly claim the substituents in the group (II) contained in the claimed compound of formula (I).
Claim 9 is rejected as being vague and indefinite when it recites a “composition comprising a compound of formula (IV) and at least one compound of formula (IVa) to (IVd)” (emphasis added); the scope of the protection sought is not clear, as there appears to be insufficient antecedent basis for “a compound of formula (IV)”. Claim 9 fails to particularly point out and distinctly claim the contents of the claimed composition.
Claim 15 is rejected as being vague and indefinite when it recites a “display device comprising an organic electronic device” (emphasis added) without any further limitations; the scope of the protection sought by a device comprising a device is not clear.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Werner et al. (U.S. Patent No. 8,951,443).
Claim 11 of Werner et al. teaches a compound and the corresponding use thereof said compound in a composition, as well as the corresponding use thereof said composition an organic semiconductor layer, characterized in that said compound is a radialene compound inclusive of the of the present formula (I) as well as the elected species A59, as represented therein by
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; the Examiner notes that the substituents R1, R2, R3, R4 and R5 are “electron-poor substituents”.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Werner et al. (European Patent No. EP 2684932 B1).
Werner et al. teaches a compound and the corresponding use thereof said compound in a composition, as well as the corresponding use thereof said composition an organic semiconductor layer, characterized in that said compound is a radialene compound inclusive of the of the present formula (I) as well as the elected species A59, as represented therein by
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Preferred examples are the following compounds: 2,2',2"-(cyclopropane-1,2,3 -triylidene)- tris (2-perfluorophenyl-acetonitrile), 2,2',2"-(cyclopropane-1,2,3-triylidene)-tris[2-(perfluoropyridin-4-yl)-acetonitrile], 2,2',2"-(cyclopropane-1,2,3-triylidene)-tris[2-(4-cyanoperfluorophenyl)-acetonitrile], 2,2',2"-(cyclopropane-1,2,3-triylidene)-tris[2-(2,3,5,6-tetrafluoro-4-trifluoromethylphenyl)-acetonitrile], and 2,2',2"-(cyclopropane-1,2,3- triylidene)-tris[2-(2,6-dichloro-3,5-difluoro-4-trifluoromethylphenyl)-acetonitrile].
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 1-15 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). 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.
Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: U.S. Patent Application Publication No. 2023/0240139, which is the pre-grant publication corresponding to the present application.
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, Mark F Huff can be reached at 571-272-1385. 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
Prosecution Insights