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 August 14, 2026.
Claims 1, 5, and 7 have been amended and are hereby entered.
Claims 1 – 17 are currently pending and have been examined.
This action is made FINAL.
Response to Amendments
Applicant's amendments to the claims, filed August 14, 2026, caused the withdrawal of the rejection of claims 1 – 4, 14 and 15 under 35 U.S.C. 102(a)(1) as being anticipated by Zhou as set forth in the office action filed May 27, 2026.
Applicant’s amendments to the claims, filed August 14, 2026, caused the withdrawal of the rejection of claims 5, 7, 8, 10 – 12 and 17 under 35 U.S.C. 103 as being unpatentable over Zhou as set forth in the office action filed May 27, 2026.
Response to Arguments
Applicant's arguments filed August 14, 2026 have been fully considered but they are not persuasive.
Applicant argues that the organic compounds of the present invention are characterized by having a specific substituent (such as a branched alkyl group having 3 to carbon atoms on Ar1 or Ar2 in General Formula (G1)) and that Hildebrandt specifically directs a skilled artisan towards usage of C4 butyl chains and offers no motivation that would have led one to predictable advantages from longer straight chains or branched alkyl chains on Ar1 or Ar2. Examiner respectfully disagrees. Hildebrandt does not limit the length of the alkyl chains in the compound. Therefore, it is the Examiner’s position that it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to either extend the straight alkyl chain to a length, such as that claimed, or to provide the 4 carbon atoms in a branched alkyl configured, as claimed.
Applicant argues that as shown in Table 1 of Example 3, FT2TDMN, without a branched alkyl group has a solubility of 0% whereas EtHex-FT2TDMN exhibits good solubility and that this provides evidence of unexpected solubility enhancement. Examiner respectfully disagrees. The data in the table shows the solubility difference between an unsubstituted compound and a compound with a branched alkyl chain. The table does not show the effect of a shorter, unbranched alkyl chain or an unbranched alkyl chain of the claimed length. Therefore, the data is not seen as sufficient evidence for Applicant’s claim of unexpected solubility enhancement for substituents within the claimed group.
Applicant argues that Hildebrandt has not been shown to teach, suggest, or appreciate the advantageous dramatic improvement in solubility due to specific substituents. Examiner respectfully disagrees. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant’s remaining arguments with respect to claims 1 – 17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 – 28 of copending Application No. 18/269004 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because compounds of Formula (G1) in claim 1 of the instant Application overlap in scope with compounds of Formula (G1) in claim 6 of the ‘004 Application as evidenced by compound (102) in claim 12 of the ‘004 Application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hildebrandt (US20130167931A1).
As per claims 1, 3, and 4, Hildebrandt teaches:
An organic compound represented by General Formula (G1)
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(Hildebrandt teaches compound 1b
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([0093]), which reads on the claimed Formula wherein n1 represents an integer of 1 and D1 represents a substituted thiophene-containing heteroarylene group having 8 carbon atoms; Ar1 and Ar2 represent a substituted thiophene-diyl group; m1 and k1 are both 1; A1 and A2 represent a vinyl group having two substituents, represented by General Formula (g1-2) in claims 3. While the alkyl chains in compound 1b are 4 carbon atoms long, which is shorter than the claimed length, Hildebrandt does not limit the length of the alkyl chains in the compound. Therefore, it is the Examiner’s position that it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to either extend the straight alkyl chain to a length, such as that claimed, or to provide the 4 carbon atoms in a branched alkyl configured, as claimed.)
Hildebrandt includes each element claimed, with the only difference between the claimed invention and Hildebrandt being a lack of the aforementioned combination being explicitly stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of compounds improving efficiency when used in devices ([0037]), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
As per claims 2, 5, 14 and 15, another compound taught by Hildebrandt is Compound 1a
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, wherein a thienothiophene group is present as the central group instead of the dithienopyrrole group in compound 1b. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to replace the dithienopyrrole group in compound 1b with a thienothiophene group and arrive at the claimed compound wherein D1 is represented by General Formula (g1-1-2) in claim 2, wherein n12 is 0 and X4 and X7 are both sulfur, and the entire compound is represented by General Formula (G1-1) in claim 5, wherein n15 is 1, n14 is 0, n17 is 1 and n16 is 1 and X20, X16, X19, and X21 are all sulfur.
Hildebrandt includes each element claimed, with the only difference between the claimed invention and Hildebrandt being a lack of the aforementioned combination being explicitly stated. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant invention to select any known substituent from each of the finite lists of possible combinations to arrive at the compound of the instant claim since the combination of elements would have yielded the predictable results of compounds improving efficiency when used in devices ([0037]), absent a showing of unexpected results commensurate in scope with the claimed invention. See Section 2143 of the MPEP, rationales (A) and (E).
As per claim 6, the only difference between the modified compound of Hildebrandt above and Structural Formula (100)
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is the bonding of the alkyl groups on the thiophene-diyl group. That is, when the alkyl chain of the compounds of Hildebrandt is selected to be a branched C8 group in the modified compound above, it is a structural isomer of Structural Formula (100).
The Office points out that sections 2144.09 I and II of the MPEP state “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities.” An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, paragraph II.A.4.(c). and “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
As per claims 7 and 8, Hildebrandt teaches:
A light-receiving device comprising a first electrode, a second electrode, and an organic compound layer, wherein the organic compound layer is positioned between the first electrode and the second electrode, wherein the organic compound layer comprises an organic compound represented by Formula (G1) (Abstract: “The present disclosure relates to an optoelectronic component having an electrode (2), a counter electrode (6) and at least one organic light-sensitive layer (4) between the electrode and counter electrode. The organic light-sensitive layer (4) contains at least one compound of the general formula EWG (electron withdrawing group)-D (donor block)-EWG with at least one substituent on the extended donor block D.” The organic-light sensitive layer is interpreted as the claimed active layer in claim 8.)
As per claim 9, Hildebrandt teaches:
Wherein the organic compound layer is an electron-transport layer ([0118]: “In a further working example, the inventive photoactive component in FIG. 7 has the following layer sequence: 1.) Glass substrate 1, 2.) ITO base contact 2, 3.) Electron transport layer (ETL) 3, 4.) Organic light-sensitive layer system (10-200 nm) 4, 5.) Hole transport layer (HTL) 5, 6.) Top contact (e.g. gold) 6.”)
As per claim 10, Hildebrandt teaches:
Further comprising a light-emitting layer ([0058]: “Preferably, the at least one organic light-sensitive layer of the inventive component is a light-absorbing or light-emitting layer.”)
As per claims 11, 16, and 17, Hildebrandt teaches:
A light-emitting and light-receiving apparatus comprising the light-receiving device and a light-emitting device ([0057]: “The inventive optoelectronic component may be an organic solar cell, an organic light-emitting diode, a transistor or a photodetector, and is more preferably an organic solar cell.”)
As per claim 12, Hildebrandt teaches:
Further comprising a substrate ([0118]: “In a further working example, the inventive photoactive component in FIG. 7 has the following layer sequence: 1.) Glass substrate 1, 2.) ITO base contact 2, 3.) Electron transport layer (ETL) 3, 4.) Organic light-sensitive layer system (10-200 nm) 4, 5.) Hole transport layer (HTL) 5, 6.) Top contact (e.g. gold) 6.”)
As per claim 13, Hildebrandt teaches:
An electronic device comprising the light emitting and light-receiving apparatus and at least … a connection terminal… ([0011]: “The free charge carriers thus generated can then be transported to the contacts. By connection of the contacts via a load, the electrical energy can be utilized. It is of particular significance that excitons which have been generated in the bulk of the organic material can diffuse to this photoactive interface.”)
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.
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/JENNA N CHANDHOK/Primary Examiner, Art Unit 1789
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