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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 2, 2026 has been entered.
Status of Claims
This action is in reply to the communication filed on September 2, 2026.
Claims 1, and 3 – 6, have been amended and are hereby entered.
Claim 2 has been canceled.
Claims 1 and 3 – 9 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed September 2, 2026 have been fully considered but they are not persuasive.
Applicant argues that the Office’s interpretation of claim 1 is inconsistent with how a PHOSITA would understand the claim language when reading the claim as a whole, as a PHOSITA would see that the dotted bonds may represent either single bond or a double bond and that the recited structural formula must be interpreted in a manner that gives effect to both alternatives and preserves chemically permissible valence. Applicant notes that the compounds encompassed by Formula A-1 in the instant specification would further support this conclusion. Examiner respectfully disagrees. The definitions for Y1 – Y3 are N-R1, CR2R3, O, S, Se and SiR4R5. This is a closed Markush group. A double bond would necessitate either a CR group or a N group. However, these are not listed as options for Y1 – Y3. There is no reason for a person of ordinary skill in the art to assume that a closed Markush group should be interpreted as containing additional, unrecited options. Therefore, the 112(a) enablement rejection is maintained below.
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-1
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, wherein Y1 to Y6 are defined as being selected from N-R1, CR2R3, O, S, Se, and SiR4R5. 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-1
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, wherein Y1 to Y6 are defined as being selected from N-R1, CR2R3, O, S, Se, and SiR4R5. However, compounds of claim 3, such as
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contain R groups that are CR groups, which are not 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
All claims are rejected.
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.
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/JENNA N CHANDHOK/Primary Examiner, Art Unit 1789
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