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 .
Status of the Claims
Claims 21-43 are pending in the instant application and subject to examination herein.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. PCT/EP2021/081045, filed on 11/09/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/09/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
Compound structure images are faint and difficult to interpret on the following pages: 48, 49, 50, 51, 56, 57, 58, 61, 62, 63, 89, 90, 91, 92, 93, 114, 115, 116, 120, 121, 122, 123, 124, 125, 126;
Text associated to compound structure images (CAS registry numbers) is faint on the following pages: 116, 120.
Compound structures are overlapping with each other and/or with table cell boundary lines, and therefore difficult to interpret, on pages 63, 103, 104
Appropriate correction is required.
Claim Objections
Claims 22-27, 30, 32-33, 35 and 43 are objected to because of the following informalities: compound structure images are faint on the following pages:
Pages 8 and 9 (claim 22);
Pages 11, 12, 13, 14 and 15 (claim 23);
Pages 16, 17 and 18 (claim 24);
Pages 19, 20 and 21 (claim 25);
Pages 22 and 23 (claim 26);
Pages 23 and 24 (claim 27);
Pages 26, 27, 28, 29, 30, 31 and 32 (claim 30);
Pages 32 and 33 (claim 32);
Pages 34 and 35 (claim 33);
Page 37 (claim 35);
Pages 39 and 41 (claim 43).
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “thiofuran compound”, “an aromatic or heteroaromatic nitrogen compound” and “a coupling reaction”, in claim 31.
Claim 31 further limits claim 21 to “A process for preparing the compound as claimed in claim 21, which comprises reacting a thiofuran compound with an aromatic or heteroaromatic nitrogen compound by a coupling reaction,” but does not provide any structures or structural formulae for the “thiofuran compound” or “aromatic or heteroaromatic nitrogen compound”, and does not provide any reagent(s) and/or condition(s) for the “coupling reaction”. A review of the instant disclosure finds synthetic Schemes 1-5 on pages 66-69, included in which are found coupling reactions that comprise thiofuran compounds together with compounds that meet the limitation of being aromatic or heteroaromatic. Thus, claim 31 is understood to consist of the specific reaction Schemes 1-5, each of which represent a process for preparing a compound as claimed in claim 21.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
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 21-43 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “compound” in claims 21-27 is used by the claims to mean “one or more chemical substances,” while the accepted meaning is “a distinct chemical composition.” The term is indefinite because the specification does not clearly redefine the term. Claims 21-27 are each drawn to “A compound comprising at least one structure” of the formula or formulae given in each claim. The description of a compound having “at least one structure” allows for the possibility for a compound to have multiple structures, whereas the definition of a chemical compound is a substance having a distinct structure. See for example, Wikipedia, which provides the following in the page for “Chemical compound”: “Chemical compounds have a unique and defined chemical structure1 held together in a defined spatial arrangement by chemical bonds. Chemical compounds can be molecular compounds held together by covalent bonds, salts held together by ionic bonds, intermetallic compounds held together by metallic bonds, or the subset of chemical complexes that are held together by coordinate covalent bonds.”2 A person of ordinary skill in the art would not understand the metes and bounds of these claims regarding how many structures are intended to be grouped together as a single “compound” or by what similarity a group of structures would be associated together as a single “compound” in any of claims 21-27. The instant disclosure includes many instances of the words “compound” and “compounds” but does not anywhere provide a definition of these words that would redefine them differently from their commonly accepted meanings, wherein each compound has a “unique and defined chemical structure” and therefore should not be understood to allow for multiple structures to be grouped as a single compound.
Claims 22-43 depend directly or indirectly from claim 21 and do not resolve the indefiniteness of claim 21 with regard to the use of the term “compound” contrary to its ordinary meaning in claim 21.
Claims 21, 32 and 35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are listed below, along with an image of Formula (1) as shown in claim 21:
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(Formula (1), as shown in claim 1. Note that the moiety “L” is clearly bound to: (1) a 6-membered ring bearing “X” atoms that is directly fused to the central pyrrole, and (2) a 6-membered ring bearing “X1” atoms.)
Claim 21 includes the limitation of atom “Y” as being selected from a Markush group that includes “NL” and “C(L)(R2)”, wherein NL means that the L group binds to the nitrogen atom of the NL group, and C(L)(R2) means that the L group binds to the carbon atom of the C(L)(R2); however, these limitations do not comply with the drawn structure of Formula (1) as “L” does not bind to “Y” in the structure of Formula (1).
Claim 21 includes the limitation of atom “Y1” as being selected from a Markush group that includes NL, wherein NL means that the L group binds to the nitrogen atom of the NL group; however, this limitation does not comply with the drawn structure of Formula (1) as “L” does not bind to “Y1” in the structure of Formula (1).
Claim 21 includes the limitation of atom “Y2” as being selected from a Markush group that includes NL, wherein NL means that the L group binds to the nitrogen atom of the NL group; however, this limitation does not comply with the drawn structure of Formula (1) as “L” does not bind to “Y2” in the structure of Formula (1).
Claim 32 further limits claim 21 to a composition comprising a compound of Formula (1) along with at least one further matrix material selected from formulae (7), (8), (9) and (10), and provides structures and limitations for the specified formulae (7)-(10), including a limitation for structural element “s”; however, none of the formulae (7)-(10) include the structural element “s” in any part of the drawn structures shown in claim 32. Thus it is unknown how element “s” applies to these formulae. While a reader might interpret that the “s” element applies to a compound of Formula (1), this would not comply with Formula (1), wherein “s” is only zero (0) or 1, while in claim 32, “s” is any integer from zero (0) to 4. Additionally, the structural drawings of formulae (7)-(10) include a structural element “v”, which describes a quantity of “R6” substituents allowed in certain rings of the structures, and element “v” is not defined anywhere in claim 32. Refer, for example to the image below of formula 7:
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Claim 35 further limits claim 33, regarding a composition comprising a compound of claim 21 with at least one further matrix material selected from formulae (11), (12), (13), (14), (15), (16), (17) and (18), and provides formulae (7), (8), (9) and (10) with limitations/definitions of structural elements thereof, including a definition of structural element “s”; however, none of the provided structures of formulae (7)-(10) include any structural element “s”; additionally, formulae (7)-(10) do include a structural element “v” which describes a quantity of “R6” substituents allowed in certain rings of the structures, and element “v” is not defined anywhere in claim 32. Refer, for example to the image above of formula 7, which is the same in claim 35 as in claim 32 discussed above.
Claims 22-43 depend directly or indirectly from claim 21 and do not resolve the indefiniteness of claim 21 with regard to omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. Claims 34, 37 and 40 depend from claim 32 and do not resolve the indefiniteness of claim 32 with regard to omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections.
Claim Rejections - 35 USC § 112(d)
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.
Claims 22-27 are 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. Claims 22-27 depend from claim 21 and are drawn to genera of compounds described by Formulae (1a)-(1za), (2a)-(2za), (3a)-(3r), (4a)-(4r) and (5a)-(5i). Of the formulae disclosed in claims 22-27, only the following comply with the structural limitations of claim 21: (1g), (1h), (1i), (1p), (1q), (1r), (2g), (2h), (2i), (2p), (2q), (2r), (3e), (3f), (3k), (3l), (4j), (4k), (4l), (4m), (4n), (4o), (5g), (5h), (5i), (6d), (6e), (6f), (6g) and (6h). The remaining formulae do not comply with the structural limitations of claim 21 in regard to the attachment points of the “L” linker moiety. The structure of formula (1) as claimed in claim 21 is shown below:
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(Formula (1), as shown in claim 21. Note that the moiety “L” is clearly bound to: (1) a 6-membered ring bearing “X” atoms that is directly fused to the central pyrrole, and (2) a 6-membered ring bearing “X1” atoms.)
The structural representation of Formula (1a) is shown below, as a representative example of non-compliance with Formula (1):
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(Formula (1a), as shown in claim 1. Note that the moiety “L” is clearly bound to: (1) a 6-membered ring bearing “X” atoms that is not directly fused to the central pyrrole but rather bound to the pyrrole nitrogen, and (2) a 6-membered ring bearing “X1” atoms in the other ring system, at right in the structure.)
Claim 22 fails to include all the limitations of claim 21 because Formula (1a), shown above, does not comply with the structural limitations of Formula (1) in regard to the attachment points of the moiety designed as linker “L”. Additional formulae in claim 22 that do not comply with the structural limitations of Formula (1) are: (1b), (1c), (1d), (1e), (1f), (1j), (1k), (1l), (1m), (1n), (1o), (1s), (1t), (1u), (1v), (1w), (1x), (1y), (1z) and (1za).
Claim 23 fails to include all the limitations of claim 21 because the following formulae do not comply with the structural limitations of Formula (1) in regard to the attachment points of the moiety designed as linker “L”: (2b), (2c), (2d), (2e), (2f), (2j), (2k), (2l), (2m), (2n), (2o), (2s), (2t), (2u), (2v), (2w), (2x), (2y), (2z) and (2za).
Claim 24 fails to include all the limitations of claim 21 because the following formulae do not comply with the structural limitations of Formula (1) in regard to the attachment points of the moiety designed as linker “L”: (3a), (3b), (3c), (3d), (3g), (3h), (3i), (3j), (3m), (3n), (3o), (3p) and (3r).
Claim 25 fails to include all the limitations of claim 21 because the following formulae do not comply with the structural limitations of Formula (1) in regard to the attachment points of the moiety designed as linker “L”: (4a), (4b), (4c), (4d), (4e), (4f), (4g), (4h), (4i), (4p), and (4r).
Claim 26 fails to include all the limitations of claim 21 because the following formulae do not comply with the structural limitations of Formula (1) in regard to the attachment points of the moiety designed as linker “L”: (5a), (5b), (5c), (5d), (5e) and (5f).
Claim 27 fails to include all the limitations of claim 21 because the following formulae do not comply with the structural limitations of Formula (1) in regard to the attachment points of the moiety designed as linker “L”: (6a), (6b) and (6c).
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
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 22-23 and 25 are anticipated by Yen.
Claims 22-23 and 25 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Yen (U.S. Patent No. 10,312,455 B2).3
Claim 22 depends from claim 21 and is drawn to genera of compounds described by Formulae (1a)-(1za). Formula (1za) describes a genus of polycyclic heteroaromatic compounds, as shown in the table below. Yen discloses fluorescent materials composed of polycyclic heteroaromatic compounds within a genus that includes multiple compounds that anticipate the instant genus of Formula (1za), including Yen’s compound 724, as shown in the table below (Col. 40, uppermost compound):
Claim Number(s) of Instant Application
Instant Application
Yen
22
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304
362
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wherein:
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356
438
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Thus, claim 22 is anticipated by the disclosure of Yen.
Claim 23 depends from claim 21 and is drawn to genera of compounds described by Formulae (2a)-(2za). Formula (2za) describes a genus of polycyclic heteroaromatic compounds and is anticipated by Yen’s compound 72, as shown in the table below:
Claim Number(s) of Instant Application
Instant Application
Yen
23
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312
346
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wherein:
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356
438
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Thus, claim 23 is anticipated by the disclosure of Yen.
Claim 25 depends from claim 21 and is drawn to genera of compounds described by Formulae (4a)-(4r). Formula (4r) describes a genus of polycyclic heteroaromatic compounds and is anticipated by Yen’s compound 72, as shown in the table below:
Claim Number(s) of Instant Application
Instant Application
Yen
25
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290
360
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wherein:
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356
438
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Thus, claim 25 is anticipated by the disclosure of Yen.
Claim 22 is anticipated by Ham.
Claim 22 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ham (KR-2015-0124924-A).5
Claim 22 depends from claim 21 and is drawn to genera of compounds described by Formulae (1a)-(1za). Formula (1u) describes a genus of polycyclic heteroaromatic compounds, as shown in the table below. Ham discloses a genus of novel polycyclic heteroaromatic compounds having hole transport and electron transport properties, including multiple compounds that anticipate the instant genus of Formula (1u), including a compound shown in the table below6, as shown in the table below (page 8, fifth row, rightmost compound):
Claim Number(s) of Instant Application
Instant Application
Ham
22
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376
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wherein:
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170
252
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Thus, claim 22 is anticipated by the disclosure of Ham.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to W. JUSTIN YOUNGBLOOD whose telephone number is (703)756-5979. The examiner can normally be reached on Monday-Thursday from 8am to 5pm. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey S. Lundgren, can be reached at telephone number (571) 272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/W.J.Y./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
1 Emphasis added by Examiner.
2 https://en.wikipedia.org/wiki/Chemical_compound; accessed by Examiner on 01/09/2026.
3 Examiner notes that claim 21 is not anticipated by the disclosure of Yen because the limitations of claims 22-23 and 25 that are anticipated by Yen are limitations that fail to comply with the limitations of claim 21 – see the 112(d) rejections above.
4 4-(9H-Carbazol-9-yl)-3′-thieno[3′,2′:4,5]pyrrolo[3,2,1-jk]carbazol-2-yl[1,1′-biphenyl]-2,5-dicarbonitrile
5 Examiner notes that claim 21 is not anticipated by the disclosure of Yen because the limitations of claim 22 that are anticipated by Yen are limitations that fail to comply with the limitations of claim 21 – see the 112(d) rejections above.
6 2-[3-(9H-Carbazol-9-yl)phenyl]-5,5-dimethyl-5H-benzo[b][1]benzothieno[3′,2′:4,5]pyrrolo[3,2,1-ij][1,7]naphthyridine