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 without traverse of the following species (1-B), wherein each of R3 to R12 represents a halogen atom, in the reply filed on 21 September 2026 is acknowledged:
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Applicants allege that “at least claims 7-17 can read on the elected species”. However, the Examiner notes that claim 13 is limited to a compound of formula (1-A), claim 15 is limited to a compound of formula (1-C), claim 16 is limited to a compound of formula (1-D), and claim 17 is limited to a compound of formula (1-E). As such, claims 7-12 and 14 are presently under consideration in this application.
Claims 13 and 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 21 September 2026.
Drawings
The drawings are objected to because some of the substituents, the substituent subscript designations, and the single vs double bonds are not clearly distinguishable. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 7-11 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.
Claims 7 and 11 are rejected as being vague and indefinite when they recite “the adamantane compound represented by one of the following general formula (1), (1-A), (1-B), (1-C), (1-D), or (1-E)” (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, claims 7 and 11 each recite the broad recitation for an adamantane compound represented by (1), and the claim also recites the adamantane compounds represented by formulae (1-A), (1-B), (1-C), (1-D), or (1-E), which is the narrower statement 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. Claims 7 and 11 each fail to particularly point out and distinctly claim the adamantane compound contained in the respectively claimed organic thin film and electronic apparatus.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim Rejections - 35 USC § 102
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Jimenez et al. (U.S. Patent No. 7,947,680).
Jimenez et al. teaches an adamantane compound inclusive of the adamantane compound of the elected species of formula (1-B), as generally represented therein by
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(claims). While the inventive adamantane compound expressly illustrates said adamantane compound comprising a single halogen substituent, as represented therein by
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(Table 1, claims 43-44), or
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Table 1, columns 47-48), Jimenez et al. does not appear to expressly teach the elected species (1-B), characterized in that each of the substituents comparable to the present R3 to R12 represents a halogen atom. It would have been obvious to one of ordinary skill in the requisite art at the time the invention was filed to make and/or use the adamantane compounds inclusive of the elected species of the present formula (I-B) characterized in that each of the substituents comparable to the present R3 to R12 represents a halogen atom, as generally taught therein Jimenez et al., with reasonable expectations of achieving, absent object evidence to the contrary, the advantages taught therein, as well as those associated with their use thereof.
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. 2023/0365495, which is the pre-grant publication corresponding to the present application, and Chinese Patent No. CN 117843486 A, which is pertinent to the claimed adamantane compound.
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
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