DETAILED ACTION
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 .
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.
Status of Claims
This action is in reply to the communication filed on May 29, 2026.
Claims 1 – 6 have been amended and are hereby entered.
Claims 1 – 9 are currently pending and have been examined.
This action is made FINAL.
Response to Amendments
Applicant’s amendments to the specification and drawings, filed May 29, 2026, caused the withdrawal of the corresponding objections
Applicant's amendments to the claims, file May 29, 2026, caused the withdrawal of the rejection of claim 3 under 35 U.S.C. 102(a)(1) as being anticipated by Suh as set forth in the office action filed March 4, 2026.
Response to Arguments
Applicant's arguments filed March 29, 2026 have been fully considered but they are not persuasive.
Applicant argues that as amended, the claims have been amended to clarify the bonding limitation and that amended claim 1 as amended no longer encompasses embodiments in which hydrogen or deuterium would be required to participate in multi-bond ring formation. Examiner respectfully disagrees. The Y ring of Formula A is
PNG
media_image1.png
58
64
media_image1.png
Greyscale
. It is clear that all the bonds can be double or single bonds. However, the definitions for Y1 – Y3 are N-R1, CR2R3, O, S, Se and SiR4R5. Were one of the bonds to be a double bond, it would be impossible for the atom it connects to to be N-R1, CR2R3, O, S, Se and SiR4R5. A double bond would necessitate either a CR group or a N group. However, these are not listed as options for Y1 – Y3. Therefore, the 112(a) enablement rejection is maintained below as Applicant has not explained nor provided evidence that a neutral compound could contain N-R1, CR2R3, O, S, Se, or SiR4R5 atoms connected to a double bond. Additionally, claim 1 still reads “with the proviso that R1 to R5 are bonded to each other or are each linked to an adjacent substituent to further form an alicyclic or aromatic monocyclic or polycyclic ring and are bonded to the Q1 to Q2 ring to further form an alicyclic or aromatic monocyclic or polycyclic ring.” A proviso is a condition. The claim does not contain any requirements for when this proviso would take effect, so as written the proviso is always required. The limitation is that “R1 to R5 are bonded to each other… and are bonded to the Q1 to Q2 ring.” These additional two bonds that are required by all of the R1 to R5 substituents are not known to be chemically possible for single valence elements, such as hydrogen and deuterium, which are part of the definitions for R1 to R5. Therefore, the 112(a) enablement rejection is maintained below as Applicant has not explained nor provided evidence that a compound could contain a hydrogen or deuterium atom with more than one bond as required by the claim. Should applicant desire to not require the proviso as currently written, Examiner recommends amending the claim to recite “with the proviso that R1 to R5 are optionally bonded to each other, or are linked to an adjacent substituent to further form an alicyclic or aromatic monocyclic or polycyclic ring, and are optionally bonded to the Q1 to Q2 ring to further form an alicyclic or aromatic monocyclic or polycyclic ring. Examiner further notes that, were claim 1 to be amended to not require the bonding of the R1 to R5 substituents, the previously cited compound of Suh would appear to anticipate Formula A in Claim 1 wherein Q1 is a C4 aromatic heterocyclic ring.
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 – 9 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 R definitions other than hydrogen and deuterium and dotted lines being single bonds, does not reasonably provide enablement for R groups being hydrogen or deuterium or the dotted lines represented double bonds. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Case law holds that applicant' s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise, undue experimentation would be involved in determining how to practice and use applicant' s invention. The test for undue experimentation as to whether or not [Claimed Feature] within the scope of the claims can be used [meet the claim requirements] as claimed and whether the claims meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1 – 9, it is believed that undue experimentation would be required because:
(A) Breadth of the claims: (B) Nature of the invention:(C) State of the prior art: (D) The level of one of ordinary skill: (E) The level of predictability in the art:(F) Amount of direction provided: (G) The existence of working examples: (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:.
Claim 1 requires a compound of Formula A
PNG
media_image2.png
178
160
media_image2.png
Greyscale
, wherein Y1 to Y6 are defined as being selected from N-R1, CR2R3, O, S, Se, and SiR4R5. R1 to R5 are defined as being selected from hydrogen, deuterium… Claim 1 further states “with the proviso that R1 to R5 are bonded to each other or are each linked to an adjacent substituent to further form an alicyclic or aromatic monocyclic or polycyclic ring and are bonded to the Q1 to Q2 ring to further form an alicyclic or aromatic monocyclic or polycyclic ring.” Applicant has not provided any examples of an R group containing hydrogen or deuterium being linked to further form a ring as required by the claim (Wands Factors (F) and (G)). Furthermore, hydrogen and deuterium contain only one valence electron, which is generally understood to limit its bonding to one group. It is unclear how either of these atoms could be bonded to more than one group to create the ring system claimed (Wands Factors (C), (D), (E)). Additionally, claim 1 recites that dotted lines represent a single bond or a double bond according to the definition of Y1 to Y6. However, in the definitions of Y1 to Y6, all the atoms are saturated. It is unclear how the atoms could take on an extra bond from a double bond (such as 5 bonds) in the carbon atom or 4 bonds in the nitrogen atom of a neutral compound (Wands Factors (C), (D), (E)). Applicant has not provided any examples of a N-R1, CR2R3, O, S, Se, and SiR4R5 atom in a ring with at least one double bond (Wands Factors (F) and (G)).
Claims 2 – 9 are rejected as being dependent on claim 1.
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 3 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 3 is dependent on claim 1. Claim 1 requires a compound of Formula A
PNG
media_image3.png
178
164
media_image3.png
Greyscale
, wherein Y1 to Y6 are defined as being selected from N-R1, CR2R3, O, S, Se, and SiR4R5. Claim 1 further states “with the proviso that R1 to R5 are bonded to each other or are each linked to an adjacent substituent to further form an alicyclic or aromatic monocyclic or polycyclic ring and are bonded to the Q1 to Q2 ring to further form an alicyclic or aromatic monocyclic or polycyclic ring. However, compounds of claim 3, such as
PNG
media_image4.png
144
590
media_image4.png
Greyscale
contain R groups that are not bonded to each other or linked to an adjacent substituent and not linked to the Q1 to Q2 ring as required by the claim. Furthermore, all of the three above compounds are also outside the scope of claim 1 because they each contain 2 CR groups, they do not contain the saturated CR2R3 groups provided in the definition for Y1 to Y6 as the only option for carbon atoms.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
For examination purposes, claim 3 has been examined as an independent claim.
Conclusion
Applicant's amendment necessitated any 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 JENNA N CHANDHOK whose telephone number is (571)272-5780. The examiner can normally be reached on Monday through Friday from 6:30 - 3:30.
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, Marla McConnell can be reached on (571) 270-7692. 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.
/JENNA N CHANDHOK/Primary Examiner, Art Unit 1789
Prosecution Insights